The increasing innovation in the IT, ITeS, and software industries has outpaced the regulatory and legislative framework governing these sectors. Stemming from the absence of a comprehensive legal framework for protecting such inventions and inconsistent judicial interpretations,1 one of the prevailing debates pertains to whether software-based inventions should qualify for patent protection or remain categorised as abstract.
Under Section 2(1)(j) of the Indian Patents Act, 1970 (Act), patent protection is granted only if the invention is new, non-obvious, and industrially applicable. While patents offer stronger protection for the underlying concept than copyrights or trade secrets, such protection typically does not extend to software. This is reinforced by the statutory bar under Section 3(k) of the Act, which excludes inventions falling under the categories of mathematical or business methods, algorithms, or computer programs 'per se'2, which signifies that patent protection may be granted in cases where the computer programme may include certain other things, ancillary thereto or developed thereon, which together constitute an invention.3
It is worthwhile to note that unlike copyright or trademark law, which can bar protection for similar expressions or marks, Indian patent law does not prohibit the use of similar algorithms or functionalities unless the software demonstrates a novel technical solution involving an inventive step (technical advancement). This poses a particular challenge for the software industry, since core algorithms across different programs may be functionally similar and, without adequate protection, could be reverse-engineered or imitated by competitors, undermining innovation and commercial advantage.
In contrast to the rather rigid framework outlined under the Act, a more flexible approach is visible in the 2017 Guidelines for Examination of Computer Related Inventions (Guidelines) issued by the Controller General of Patents, Designs and Trademarks (CGPDTM), which recognise patentability where the claimed software-based invention demonstrates a tangible improvement in process efficiency or system performance (technical effect/solution), overcoming a limitation in prior systems (technical problem), and shows a degree of technological progress (technical advancement/inventive step). The Guidelines also prescribe that while granting or refusing patent protection, the emphasis must be on the substance of the invention rather than its form, irrespective of whether it is claimed as a method/process, apparatus/system/device, or computer-readable medium. Claims that merely disguise excluded subject matter through clever wording are not considered patentable.
In 2019, the CGPDTM released the Manual of Patent Office Practice and Procedure (Manual), which reaffirms the 2017 Guidelines and promotes transparency and uniformity across all four patent offices and seeks alignment with international practices. It provides procedural clarity for filing and examination, reinforcing that applications for computer-related inventions must demonstrate patent-eligible subject matter through genuine inventive features.
Given the ambiguity in the legislative framework, Indian courts have played a key role in shaping the approach to software patentability. Some of the landmark judgments which have illuminated this discourse are as follows:
- 2009 | Apple's patent application:4 Apple sought protection for 'a method for browsing data items with respect to a display screen associated with a computing device and an electronic device', a media-management program which allowed the user to browse through and select a particular media track on electronic devices, including cell phones, and purchase new media through an online media store. The claim was initially objected to as being software per se. Apple argued that the method, while implemented through software, constituted a practical application that produced a useful result and delivered an improved technical effect. The Kolkata Patent Office accepted the argument and granted the patent, recognising the invention's technical contribution over existing techniques.
- 2012 | Accenture Global Service Gmbh v. The Assistant Controller of Patents:5 The applicant sought a patent for a method to generate a data mapping document. The invention addressed a technical problem related to data migration in database systems. Though the Patent Office initially objected to the lack of technical effect, the patent was granted upon recognising that the invention was not a stand-alone computer program.
- 2015 | Telefonaktiebolaget LM Ericsson v. Intex Technologies (India) Ltd:6 In this case, Ericsson sued Intex for infringement of its patents related to mobile technology, which included software-based components. The Delhi High Court ruled in favour of Ericsson, holding that the patents involved technical advancements and made a significant technical contribution. The Court reiterated that software-related inventions are not per se excluded from patentability under Indian law, provided they offer a technical solution to a technical problem and go beyond the mere application of software programmes.
- 2017 | Google's patent application:7 Google filed an application for 'phrase identification in an information retrieval system' which uses important multi-word phrases and their related phrases, based on how often they appear together, to improve how documents are indexed, searched, ranked, personalised, and filtered for duplicates or summaries in a large scale corpus such as the Internet. It faced objections on the grounds that it used a basic mathematical algorithm comprising logical steps. Google argued that the technical advancement (inventive step) lay in an innovative index stored in memory containing related valid phrases, not the algorithm alone. The invention was eventually recognised as a technical solution automatically detecting phrases within a collection of documents, and the patent was granted in 2017.
- 2019 | Ferid Allani v. Union of India:8 While reiterating the patent eligibility criteria of technical effect, the Delhi High Court adopted a progressive view in holding that patent protection cannot be denied merely because it is based on a computer program. The term 'per se' was included to make sure that genuine inventions developed through computer programs are not unfairly denied patent protection.
- 2023 | Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents and Designs:9 The Supreme Court affirmed that software may qualify for patent protection if it solves a technical problem or provides a technical effect. Importantly, relying on Clause 4.4.4 of the Guidelines, the Court directed examiners to assess the genuine technical contribution made by the invention, rather than just its structure or form.
- 2024 | AB Initio Technology LLC v. Controller of Patents & Designs:10 The Delhi High Court held that software embedded in hardware could be patented, highlighting the importance of technical integration between software and physical components.
As Indian courts and patent authorities strive to bring greater uniformity in the treatment of software-related inventions, there has been a distinct attempt to align the domestic patent framework with global standards under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). In this context, the recent Patents (Amendment) Rules, 2024 aim to harmonise Indian patent law with international standards and foster greater legal certainty in the application process. Some of the key highlights of these Rules are:
- The timeline for filing a Request for Examination (RFE) (the initial step in a patent application) is now reduced from 48 months to 31 months from the priority date or application filing date, whichever is earlier.
- A divisional application (a separate patent application derived from a parent application) can be filed in respect of an invention disclosed in a patent application.
- The working statement, detailing the commercial utilisation of the patent application, must be filed once every 3 years, rather than every year.
- The inventors may now seek a 'declaration of Inventorship' to formally acknowledge and recognise their contribution to the invention
- As per the amended Form 27, the patentees must state whether the patent is available for licensing, and indicate if they wish to receive communications in this regard.
Given the prevalent uncertainty, the following recommendations may assist software inventors seeking patent protection in India:
- Present the invention as a practical solution to a specific technical or operational problem, rather than merely as a software algorithm or business method.
- Focus on the tangible benefits of the invention, such as improvements in speed, efficiency, or functionality, when describing the innovation in supporting documents.
- Where applicable, highlight how the software interacts with or is integrated into a larger system or device, as this may strengthen its chances of being considered patentable under Indian law.
While the Indian patent framework for software-related inventions remains complex, it is gradually evolving through judicial interpretation, administrative guidance, and procedural reforms. Courts have begun interpreting Section 3(k) of the Act more progressively, recognising that not all software is automatically excluded from patent protection, particularly where a technical effect or inventive contribution is evident. Supporting patent availability across different fields of technology through a comprehensive framework is the need of the hour for India, as one of the world's fastest-growing IT hubs, to ensure robust and consistent protection for software-driven inventions, which is vital to fostering domestic innovation and safeguarding the country's competitive edge in the global digital landscape.
Footnotes
1. Yahoo Inc (formerly Overture Service Inc) v. Assistant Controller of Patents and Designs, 2011 SCC OnLine IPAB 106
2. The phrase 'per se' 'by itself'/'standalone'
3. Report of the Joint Committee on the Patent (Second Amendment) Bill, 1999
4. Application No. 461 of 2009 (Kolkata NP)
5. 2012 SCC OnLine IPAB 192
6. Telefonaktiebolaget LM Ericsson v. Intex Technologies (India) Limited, 2015 SCC OnLine Del 8229
7. Conventional Application No. 647 of 2005 (Kolkata), Patent No. 283286 (May 2017)
8. 2019 SCC OnLine Del 11867
9. 2023 SCC OnLine Del 2772
10. 2024 SCC OnLine Del 5185
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