Here are 5 steps to draft patent claims and write patent applications for inventions and technologies belonging to the field of Software, Mobile Apps, Cloud Computing or Internet of Things (IoT):

1. Thoroughly understand the innovation as a problem-solution approach
2. Prepare flow diagrams (flowcharts) to cover all aspects of the processes disclosed by the innovation
3. Prepare system architecture (block diagrams) illustrating all hardware elements connected via network
4. Ensure proper sync between the flowcharts and block diagrams
5. Draft patent claims (system or apparatus) covering all elements of block diagrams along with process (method) claims

Software Patent Application Drafting Guidelines

Writing Software Patent Application

Writing Software Patent Application is an art. An experienced patent attorney or patent agent can draft software patent claims that may have broader scope of the invention. However, the purpose of this post is to provide inventors with a general idea how to draft a patent application for a software patent invention.

First and foremost, every software patent specification must be tailored for a particular invention solving one problem in the prior art domain. There is no “one single patent formula to be followed” to write a perfect software patent application. The most important aspect of software patent writing which should be kept in mind while writing the software patent application is the patent claims, which define the legal rights of the patent owner.

It is always advisable to get professional help for writing the software invention and prosecuting the patent application before the patent office. The software inventor should provide flowcharts and/or flow diagrams of different embodiments of the software based intelligent algorithm to the patent attorney.

Software Patentability / Prior Art Patent Search

Conduct a patentability search of the prior art available in the public domain is advisable before filing the software patent application. The software patent strategy includes the steps of reviewing non-patent literature documents like journal, newspaper articles,  magazine articles, books, conference materials, brochures, and research reports.

The online patent database (collection of granted patents and pending published patent applications available in public domain by the patent office) of USPTO, WIPO, EPO and the like should be searched to determine novelty of your software innovation. This can be done either by looking for keywords in the abstract text, specification, patent title, patent claims and by the International patent classification numbers, USPC and CPC assigned to each patent by the patent examiner.

Patentability Search Results / Patentability Opinion

The patentability search results of the invention will provide detailed insight to the inventor about how broadly one can claim the invention. Moreover, the patent language used by other patent attorneys to claim a similar invention provides a rough roadmap to describe your own software innovation.

Advantage of Patentability Search   

The main advantage of patentability search from the viewpoint of developing a strong patent claim strategy is that the identified close prior art patent claims should be avoided. Particularly, the patent claims should be written in a manner to avoid the prior art.

Software Patents in India – Laws, Cases, Granted Patent Examples – Copyright Protection

How to get Software Patents in India

Grant of Software Patents in India is possible. Patents filed for innovations relating to computer programs, software and mobile applications protect the novel and inventive features of such innovations from being copied by the competitors. Software Patents in India are granted for embedded software in a mobile application, and/or software plus hardware combination. However, patent law in India does not allow patent protection for software per se, whereby patenting a computer program is prohibited. This provision is stated in Section 3 of the Indian Patents Act, which related to Non-Patentable Inventions.

Why are Software Patents not available in India?  

When the set of patent claims are written for web based software just stating various method steps and without disclosing what apparatus and/or structural component are carried out by the said steps in that case the invention falls within scope of clause (m) of section (3) of the Patents Act, 1970 (as amended).

There should be structural limitations to the patent claims otherwise the subject matter of these claims is mere scheme and/or mental act and hence falls within scope of clause (m) of section (3) of the Patents Act, 1970 (as amended). Therefore web software invention claimed in said claims is not patentable.

When the patent claims do not define any structural features of the claimed product rather they define computer instructions and logic in that case the instructions and/or logics are nothing but computer program per se. Hence subject matter of said claims falls within scope of clause (k) of section (3) of the Patents Act, 1970 (as amended). Therefore web software invention claimed in said claims is not patentable.

Frequently Asked Questions (FAQs) on Software Patents in India

Are software inventions patentable in India?

Yes, innovations in the field of software and mobile applications can be patented in India. The Indian patent office defines software inventions under the category of Computer Related Inventions, one or more features of which are embodied wholly or partially by means of a computer program(s). Such inventions have been described in the guidelines published by the patent office for examination of computer related inventions, or CRIs.

Generally, patent applications covering subject matter related to software inventions have been divided into different categories by the patent office, including, (i) Method / Process, (ii) Apparatus / System, (iii) Computer readable medium, and, (iv) Computer Program Product.

In case of patent claims claiming a method or a process, the patent office excludes business methods, mathematical formulae, algorithms, and computer programs per se. Specifically, if method claims or process claims relate to computer related innovations having novel and inventive aspects, such method claims are patentable in accordance with Indian patent laws.

In case of patent claims claiming an apparatus or a system, the patent office has stated that patents can be granted to computer related inventions wherein novelty, inventive step, and industrial applicability is found by way of hardware combined with software applications. In use, such claims may be patented in “means plus function” format.

While drafting software patents and writing patent claims, use of means-plus-function claim is common. Specifically, while drafting patent claims, means-plus-function claims can be used to express technical and functional terms of the invention to describe multiple aspects of the invention.

In case of patent claims claiming Computer readable medium, or, Computer Program Products, the Indian patent office categorizes such patent claims as computer programs per se, and hence such claims may not be patented in accordance with Indian patent laws.

Software Patents Granted in India

Patent applications claiming computer related innovations, software and mobile applications can be patented in India if patent claims are drafted to protect the innovative aspects of such inventions. Specifically, the innovative aspects can include inventive process / methods along with inventive apparatus / system (hardware components).

Some examples of software patents granted in India are listed below:

Software Patents Examples

1. Indian patent application number 3803/CHENP/2008 titled “DISAGGREGATED SECURE EXECUTION ENVIRONMENT” has been granted by the Indian patent office on 19th Sept., 2016. This patent claims priority from US patent US11/353,675 with PCT International Application Number as PCT/US2007/002322. The subject matter of this patent relates to, an electronic device, such as, a computer, which may be adapted for self-monitoring for compliance to an operating policy. The operating policy may specify a pay-per-use or subscription business model and measurements associated with compliant usage. A secure execution environment may measure usage in accordance with the business model as well as monitor and enforce compliance to the operating policy To increase the difficulty of attacking or otherwise disabling the secure execution environment, elements of the secure execution environment may be distributed. The distribution points may include other functional elements of the computer, such as interface circuits, or may even be remotely located over a network. An implementation method for disaggregating the secure execution environment is also disclosed.
2. Indian patent application number 5992/DELNP/2005 titled “A SYSTEM FACILITATING A COMPUTER OBJECT ACCESS CONTROL” has been granted as Indian patent number 247539 on 18th April, 2011 by the Indian patent office. This patent claims priority from US patent US10/609,104 having PCT International Application number as PCT/US2004/019987. The subject matter of this patent relates to a system facilitating a computer object access control for controlling access to the computer objects, comprising: a computer display screen, a graphical user interface (100), a name field (102) indicating a name for the computer object; and one or more access control fields (110) rendered together and indicating plural selectable computer spaces (112C-112E) for the computer object, at least one of the computer spaces corresponding to a computer location and at least one of the computer spaces (112A, 112B, 112F) corresponding to access to the computer object for one or more computer users.

How To Apply For Software Patents in India

In light of the Indian patent laws and guidelines published by the Indian patent office for examination of software patents / computer related inventions (CRIs), software patents can be applied in India by way of combination of hardware and software features, which are novel, inventive and possess industrial applications.

More specifically, the software patent applications filed in India shall claim innovative methods including all the steps of flow diagram of the software applications along with novel hardware (apparatus / system claims) claims including elements of the system architecture embodying the corresponding methods / processes.

Software Patent Cases In India

Among multiple patent cases in India, few can be put in the category of software patent cases in India, wherein issues pertaining to software patenting in India have been discussed. Some of the important software patent cases are discussed herein below.

1. Electronic Navigation Research Institute Vs Controller General of Patents

IPAB, OA/26/2009/PT/DEL, 5^th July, 2013

In this case relating to patent application no. 3624/DELNP/2005 for the invention titled “A CHAOS THEROETICAL EXPONENT VALUE CALCULATION SYSTEM”, the Indian patent office denied the patent on the grounds that said invention falls under the category of mathematical formulae even if it produces a technical effect. The invention in this case claimed a mathematical method for evaluating time series signals.

2. Yahoo v Controller of Patents & Rediffcom India Limited

IPAB, OA/22/2010/PT/CH, 8^th December 2011

Section 3(k) of the Indian Patents Act was discussed in this case before the Intellectual Property Appellate Board (IPAB), wherein it the concerned patent application was held non-patentable as being the business method embodied via technology. The order passed by the IPAB in instant case stated that where technical advances are only a manifestation of a core business method, such advances shall not accord any advantage to the patentee in the allowance of the patent. In simple words, business methods disguised as technical subject matter without any innovative aspects cannot be patented in India.

In the case of Yahoo, the patent claims included features of a software tool targeting search terms relevant to Yahoo’s business. Accordingly, the IPAB concluded that the technical advance proposed by Yahoo was simply a method of doing business, even if it was a technically smarter way of doing business and, therefore, cannot be patented in accordance with provisions of Section 3(k) of the patents act.

3. ACCENTURE GLOBAL SERVICE GMBH Vs. THE ASSISTANT CONTROLLER OF PATENTS & DESIGNS

IPAB, OA/22/2009/PT/DEL, 28^th December, 2012

This case relates to Indian patent application number 1398/DELNP/2003, which is now a granted patent as patent number 256171, whose present legal status at the patent office database is, “Inforce with Due date of next renewal as 21/02/2017”. This patent application was initially refused for patent registration by patent office under the provisions of Section 3(k) of the Indian patents act.

However, the patent applicant appealed before the IPAB and as per the Controller’s decision, it was held that the instant invention as claimed is not software per se but, a system is claimed which is having the improvement in web services and software. Accordingly, it was held that the invention since not falling in the category of section 3(K), viz software per se, corresponding objection was waived and the patent was granted.

Software Copyright In India

What is meant by software copyright?

In addition to software patents, copyright protection can also be used to protect the Intellectual Property Rights associated with the software. Essentially, copyright for software is employed by software companies to reduce and prevent unauthorized copying of the software, which is also referred to as software piracy or software infringement. In case of software offered under free and open source licenses, software owners depend upon the copyright law to enforce their legal rights.

Overview of Indian Copyright Laws for Software Protection

In accordance with Indian copyright laws, computer software can be protected as literary works, wherein a “computer program” is defined as a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.

Software Copyright In India

Effectively, copyright protection for computer programs prohibits unauthorised copying and infringement of the computer program, including the structure and the design of the computer program.

In addition to the source code, additional aspects of the computer program and the software can be protected by filing appropriate copyrights for the graphics, sounds, and appearance of a computer program. Consequently, by filing multiple copyright applications to protect different aspects of the software / computer program, legal proceedings for intellectual property infringement can be initiated and IP rights can be enforced even if the source code of the software is not copied by the offending party / infringer.

In addition, it is also advisable to protect future modifications and improvements of the software and the computer program by way of multiple copyrights and patent applications, which can provide strong protection of various technical features and different aspects of the software.

End User License Agreement – EULA

An EULA is a legal contract between the author or publisher of a software program / mobile application and the user of such application. The EULA is crucial document relating to intellectual property rights associated with the software and the computer program and it is generally executed digitally wherein the users are required to click-through and accept the terms of the software license agreement. Various provisions of the license agreement are drafted to ensure the source code and other aspects of the software / computer program are not copied and / or reverse engineered by the users illegally, which may amount to intellectual property rights infringement of the author / publisher / owner of the software program.

Drafting End User License Agreement – EULA

Generally, a software license agreement is termed as EULA or End User License Agreement. EULA is aimed at defining the relationship between the software company and its customers or clients that primarily govern the rights and usage associated with the software purchased by the clients from the software development company.

Types of Software License Agreements

Various types of software license agreements include:

1. Singe User Software License Agreement
2. Multi User Software License Agreement
3. Local Reseller Software License Agreement
4. International Reseller Software License Agreement
5. Enterprise Software License Agreement
6. Non-profit Software License Agreement
7. Privacy Policy for Data Protection

EULA Clauses

Content of EULA includes important legal provisions, such as, for example, but not limited to:

1. General Information of Parties
2. Software License Details – Term, Duration, Date etc.
3. Price of Software License
4. Ownership of Software Code
5. Intellectual Property Rights and Copyright Ownership
6. Prevention of Software Abuse
7. Prevention of Copying, Modification, Redistribution and Reselling of Software
8. Definition of Software License, which may not amount to selling of software ownership
9. Legal Disclaimers and Warranties
10. Limitation of Liability
11. Right to Terminate Software License
12. Exclusive or Non-Exclusive Software License
13. Non transferable license
14. Breach of terms and termination provision
15. Governing Laws and Jurisdictions
16. Technical and Customer Support
17. Software Restriction Clauses
18. Contact Information

Assignment of Software Copyright

In accordance with Indian laws and the Delhi High Court judgement in the case of Pine Labs Private Limited vs Gemalto Terminals India Private Limited, the author of the source code owns the original copyright of the software program and the same is required to be assigned to the owner / publisher of the software by way of Software (Intellectual Property) Assignment Contract. Furthermore, while drafting software assignment contracts, the term of assignment and jurisdiction should be clearly specified to ensure perpetual ownership of the software worldwide.

Frequently Asked Questions (FAQs) on Software Copyright in India

Whether computer Software or Computer Programme can be registered under copyright law?

As specified by the Indian Copyright Office, copyrights pertaining to software and computer program can be registered by way of one or more copyright applications to protect corresponding intellectual property rights (IPRs). In accordance with the Indian Copyright laws, Computer Software or programme can be registered as a ‘literary work’. As per Section 2 (o) of the Copyright Act, 1957 “literary work” includes computer programmes, tables and compilations, including computer databases. ‘Source Code’ has also to be supplied along with the application for registration of copyright for software products.

How do you get a copyright for software?

The first step to obtain copyright protection for a software / computer program is to determine if the subject matter of said software / computer program is eligible for copyright protection. An experienced copyright attorney or intellectual property law firm can assist in determining whether one or more aspects of the computer program / software are protectable by a copyright. As per copyright laws across multiple jurisdictions, a copyright protects “original works of authorship” that are in a tangible form or expression.

Manual of Patent Office Practice and Procedure of Software Patents in India

The Indian patent office has published a manual of patent office practice and procedure, which explains the functioning of the patent office by describing multiple steps of the patent registration process in India, including, patent application filing, patent prosecution, patent examination, issuance of patent examination report, patent hearings, patent grant, issuance of patent certificate, pre-grant patent opposition, post-grant patent opposition, and renewal of granted patents in India.

Software Patent in India – Indian Patent Office Manual

After going through the patent office manual, it can be concluded that although Indian patent laws excludes business methods, mathematical formulae and computer programs per se from patent protection, software patents can be granted in India for innovations that are able to stand the test of patentability.

Writing a Provisional Software Patent Specification to be filed before USPTO

Writing Software Patent Application

Essentially, a provisional patent application based for software innovation includes:

• Title of the invention
• A short abstract (150 words maximum)
• Background of the invention and related Prior arts
• Detailed description/Specification describing how to make and use the invention. Flowcharts and/ flow diagram to execute the software algorithm
• Patent Claims not required for a provisional patent specification

Tips For Writing Non-Provisional Software Patent Application

Step 1: Prepare rough flow diagram illustrating main steps of executing the algorithm.

Step 2: Prepare detailed flowcharts illustrating detailed steps along with determination steps as to what will happen if a particular transition step takes place.

Step 3: Software based block diagrams can be prepared to show more details for particular steps.

Once, the above mentioned diagram are handy write the patent application detailed description section describing what is done at each step of the algorithm and how to do it. As required under Section 112 of US Patent Laws, describe both the best way to perform the best mode or preferred embodiment of the invention and all the possible other embodiments that you can think of to execute the software based codes to solve the problem.

Mobile Application Patent Drafting

Guide to Software Patenting

Strong patent claim drafting skills can make the difference for a grant of software patent application by the patent examiner. However, writing a patent specification for information technology domain, software business app or mobile applications, cloud computing or IoT (Internet of Things), and subsequently drafting the required patent claims are highly technical in nature.

As a patent drafter, the real skill is to write about all the different sections of a patent application in detail and at the same time it has to be precise, as these have to be in accordance with proper formats specified by the respective patent office. Specifically, writing patent claims is most important part of patent drafting process.