Educational importance for post graduate students

1. Patentability of
Computer Programmes
J. Sai Deepak
Senior Associate, Saikrishna & Associates

2. Section 3(k) of the Patents Act and TRIPS
 Exclusion of patentability of computer programmes per se exercising
flexibilities in Article 27 of TRIPS
 Interpretation of “computer programmes per se” in Section 3(k) of the
Patents Act, 1970
 No guidance from the IPAB and Courts thus far
 Guidance from provisions in foreign legislations necessary

3. Position in the EU
 Article 52 of the European Patent Convention similar to Section 3(k)
 VICOM Systems Inc case- Mere use of computer programmes does not render a
patent application ineligible for protection
 Pension Benefits System Partnership case- Subject-matter of patent application
must necessarily possess technical character
 Microsoft- Clipboard Formats case- method of operating a computer using a
computer programme could be patented

4. Position in the UK
 Section 1 of the UK Patents Act of 1977 prohibits “computer programmes as
such”
 Interpretation of the provision by UK Courts has been similar to Article 52 of
the EPC
 Four-step test of the Aerotel case
 Technical effects test of the Symbian case
 Nature of task performed is another factor according to the Halliburton case
 Halliburton reiterated in HTC v. Apple

5. Position in the USA
 No negative definition comparable to Section 3(k)
 Guidance from decisions of Courts
 Diamond v. Diehr (450 U.S. 175)- Every new and useful invention is patentable
 State Street v. Signature Financial Group (149 F.3d. 1368)- Need for a useful,
concrete and tangible result
 Bilski v.Kappos (561U.S.593) on Business methods- Must satisfy the
machine/transformation test or have a practical application
 Alice Corp v. CLS Bank International (June 2014)- Subject-matter must add
significantly to the underlying abstract idea