Software Patentability; A Paradox?




In this era, computer software, computer programs, codes (for the sake of brevity, referred to as “Software”) or computer related inventions are the most important intangible assets for a business.

Across jurisdictions, Software is protected as a copyright, or a patent in case it satisfies certain qualifying thresholds that will be discussed at length in this article.

Patentability Criteria

For a Software to be patentable, it has to fulfil all the qualifying criteria for it be an invention laid down in Section 2(j) of the Patent Act 1970 (“Act”) which states:
“invention” means a new product or process involving an inventive step and capable of industrial application
Hence, there are three ingredients for anything to qualify as an “invention” which are as follows:
1. Novelty,
2. Utility, and
3. Inventive Step.

1. What cannot be patented?

When the patentability of Software is being discussed, consideration of the above-mentioned 3 criteria is not enough due to Section 3(k) of the Act which states:

“What are not inventions: that a mathematical or business method or a computer program per se or algorithms”.

a. Meaning of the term “per se”

The words “per se” shall be interpreted to understand the true implication of this provision. The term “per se” is not defined in Indian statutes including the Patents Act, 1970 and hence, for interpretation of this term, the general dictionary meaning is being used. The general dictionary meaning of “per se” is “by itself” or “in itself” or “as such” or “intrinsically” – to show that you are referring to something on its own, rather than in connection with other things. Hence, a Software by itself may not be capable of being patented but if its in connection or a part of something else, it might qualify for protection as a patent. Also, it is to be noted that the term “per se” does not apply to algorithms at all, thus rejecting the patentability of algorithms altogether.

b. Legislative intent behind the term “per se”

The legislative intent to attach suffix per se to computer program is evident by the following view expressed by the Joint Parliamentary Committee while introducing Patents (Amendments) Act, 2002: ―

“In the new proposed clause (k) the words ”per se” have been inserted. This change has been proposed because sometimes the computer program may include certain other things, ancillary thereto or developed thereon. The intention here is not to reject them for grant of patent if they are inventions. However, the computer programs as such are not intended to be granted patent. This amendment has been proposed to clarify the purpose”.

The same has also been mentioned in the CRI Guidelines, 2017 where Section 3(k) has been elaborated. Thus, according to the meaning interpreted from these sources, if a computer program in itself is not attached or resulting into an invention or an inventory process but is merely a mathematical algorithm which provides results then it is excluded from patentability under Section 3(k). For the sake of an illustration, a Software by itself is not patentable but if the same Software is making a robot work, it might be patentable if it satisfies the three ingredients of patentability.

2. Judicial Precedents

There have been various judicial decisions that have evolved the patentability of Software in India. Some of the significant ones are-

a. Telefonktiebolaget LM Ericsson (PUBL) vs. Lava International Ltd.

The case involved the right of Ericsson’s standard essential patents (SEPs), which covered technologies that were essential for the implementation of a standard. These technologies included software-based inventions. In its decision, the Delhi High Court held that Ericsson’s patents were valid and that they were not excluded from patentability by Section 3(k) of the Indian Patents Act. The Court held that Ericsson’s patents did not simply automate existing business processes, but rather solved a technical problem in a new and improved way.
The Court held that Section 3(k) would come into force when an abstract formula such as an algorithm, which is purely theoretical in nature, is applied to be patented. However, when an algorithm is utilized by hardware components or creates a technological or practical effect to result in a physical realization, such an algorithm can be patented, and the bar under Section 3(k) would not apply. Moreover, the court also stated that the mere mention of an algorithm in a patent document should not be inferred to mean that the invention is nothing more than just that algorithm.

b. Ferid Allani vs. Assistant Controller of Patents

This case involved a patent application for a “method and device for accessing information sources and services of the web” which provided efficient access to required sources and services on the internet without wasting the said network resources. The application was objected based on the first examination and stated that it lacked the “inventive step” under Section 2(1)(j) of the Act and the following examination report also added technical objections of computer program non-patentability under Section 3(k) of the Act. Since there was no response to this examination report, the application was deemed to be abandoned. Eventually, the appellant ie. Ferid Allani challenged the refusal before the Intellectual Property Appeal Board (IPAB). The Delhi High Court observed that most of the inventions are based on computer programs, and it would be retrograde to argue that all such inventions would not be patentable.
Referring to the Delhi High Court’s direction that the Guidelines for grant of patents relating to the Computer Related Inventions are to be considered, along with the settled judicial precedents for granting the patent, the Court noted the fact that the present invention provides at least the aforesaid technical effects defined by CRI guidelines, thus the Patent ought to be granted.

Therefore, without appreciating the technical effect produced by the present invention, the mere fact that a computer program is used for effectuating a part of the present invention, does not provide a bar to patentability.

c. Microsoft Technology Licensing LLC vs. The Assistant Controller of Patents and Designs

This is the most recent Delhi High Court order that has discussed the patentability of software. Microsoft had filed for a patent for an invention relating to “Methods and Systems for Authentication of a User for Sub-Locations of a Network Location” was rejected by the controller on the ground that it was non-patentable under Section 3(k) of the Act. The invention involves a two-tier authentication by way of two different cookies The patent application outlined a method for securely authenticating a user’s identity when they access one or more sub-locations within a network address. This effective strategy thwarts potential efforts by malicious individuals to illegitimately access these network sub-locations by unlawfully acquiring cookies from other users.

The Delhi High Court, while commenting upon the computer program’s relation with a hardware, observed- “if the subject matter was implemented on a general-purpose computer, but resulted in a technical effect that improved the computer system’s functionality and effectiveness, the claimed invention could not be rejected on non-patentability as ‘computer programme per se’”.

Moreover, the bench opined that the Controller had failed to consider the true technical nature and advancements provided by the invention and had solely focused on the implementation of the invention using computer-executable instructions and algorithms on a general-purpose computing device.
This view of the Court was a refreshing take on patentability of software that does not depend on an external invention for its technical effect.


Whether a specific software invention can be patented depends on factors such as its novelty, non-obviousness, practical utility, and the jurisdiction in which the patent application is filed. The concept that computer programs should be protected as a patent has been recognised by Indian courts. In inference, if any other invention must satisfy the three ingredients of patentability mentioned in section 2(j) of the Act, a computer program has to also ensure that it does not fall under the objection criteria stated in section 3(k) of the Act.

Author: Deveesha Tudekar


Interns and Paralegals.


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