Bio-Piracy: An Usurpation Of Prior Art

Zenefer Zaman and Sandip Bhosale

Meaning of Bio-Piracy:

The concept of “Bio-piracy” is commonly construed as the misappropriation of the knowledge and genetic resources of the farmers and indigenous people by individuals or institutions seeking exclusive monopoly control over these resources and knowledge. Hence, Bio-Piracy takes place in the form of applying and granting of ‘wrong patents’ or granting patents on ‘Inventions’ derived from a ‘Community Traditional Knowledge’ in other words known as “Prior Art”.

As defined by an online Dictionary, the term Bio-piracy is referred to the commercial development of naturally occurring biological materials, such as plant substances or genetic cell lines, by a technologically advanced country or organization without fair compensation to the peoples or nations in whose territory the materials were originally discovered .

Bio-piracy is the theft or usurpation of genetic materials especially plants and other biological materials by the patent process. Biological diversity or biodiversity encompasses all species of plants, animals and micro organisms and the variations between them, and the eco-systems of which they form a part. Traditional Knowledge (TK) associated with such biological resources is an intangible component of the resource itself. Such knowledge has the potential of being translated into commercial benefits by providing leads for development of useful products and processes. The commercial potential involved in biological resources and the associated TK has assumed enormous magnitude in the last couple of decades with the tremendous proliferation of the biotechnology industry. Given that most of the world’s biodiversity rich countries are developing countries located in the tropics, these nations should have been in a strong position to benefit substantially by trading in such bio-resources and the associated TK. Unfortunately, this is far from the case. More often than not it is the giant MNCs of the developed world who are instrumental in appropriation of the precious bio-resources and the allied TK of the undeveloped nations, without the Prior Informed Consent (PIC) of the legitimate holders of such resources, thereby bypassing any benefit-sharing arrangement with them. The mounting profits emanating from the commercial exploitation of these prized resources accrue solely to the corporate giants of the developed world, courtesy the exclusive patent protection obtained by suppressing the true source of the relevant bio-resource or the TK. The country of origin of the concerned bio-resources or TK however remains deprived of its legitimate share of the profits generated out of them. Such unscrupulous business practices of the MNCs have come to be known as Bio-piracy.

Many of the indigenous communities are living on the basis of the knowledge they preserved for generations. The development of new technologies and the use of traditional knowledge are posing serious threat to the survival of these communities. The modern industries are now a day’s exploiting indigenous knowledge without permission or sharing of profit with these communities . TK is capable of providing valuable leads which may result in products of high commercial value. The protection of TK would be necessary to bring equity to such unjust and unequal relations.

Another factor that calls for protection of TK is to maintain the practices and knowledge derived from traditional life styles. Preservation of TK is intended to provide self identification to these indigenous communities and thereby provide continuous existence of indigenous people. If TK is having a high economic potential, then its prospects should be used for the general wellbeing of the communities which preserved them for generations. Besides this maintenance of the distinct knowledge systems that give rise to TK is vital for the future well being, development, cultural and intellectual vitality of indigenous communities.

LANDMARK CASES

1. The Case of Basmati Rice (Oryza sativa Linn)

Basmati rice, known for its aroma and long grains has its origins in the Indian subcontinent . On 2nd September 1997, Texas based Rice Tec Inc. was granted patent number 56663484, for the genetic lines of Basmati Rice, by the U.S patent and Trademark Office (USPTO). Immediately, Rice Tec began to develop hybrids using various blends of Basmati. Promoted as an,‘American type of Basmati rice’, Rice Tec developed a new plant variety cross between American long-grain and Basmati.

Criticism from Indian rice farmers logically ensued, as many were forced to pay royalties to the conglomerate. The production and cultivation of Basmati has with it a history dating back to centuries ago. In April of 2000 Indian officials publicly pleaded with the United States Patent and Trademark Office (PTO or USPTO) to review the RiceTec Basmati case, as Indian exports were beginning to be threatened .Government officials were armed with hundreds of pages of scientific data proving that the distinguishing characteristics of RiceTec’s rice were also found in Basmati . Moreover, the use of the name ‘Basmati’ itself was misleading for customers considering that the product was a hybrid grain .The name ‘Basmati’ carries with it a reputation of culinary excellence, and RiceTec was benefiting from it. Under Article 23 of the TRIPs agreement, using words such as “kind”, “type”, and “style” is illegal, and RiceTec had used such words numerous times in advertising schemes .

Moreover, considering the geographical indicators clause of TRIPs, the entire process of approval and acquisition of RiceTec’s Basmati patent can be deemed to be illegal. Article 22 of the TRIPs agreement, (the geographical indicator clause) prohibits the use of both direct and indirect uses of a goods geographical origin. In this respect, Basmati is to the India what Champagne is to France, part of the regional identity.

On 14 August 2001 USPTO overturned a large amount of claims held under Patent No.5663484. Amidst great public scrutiny and criticism, RiceTec lost the right to use the ‘Basmati like’ advertising slogan. At the discretion of USPTO, out of 20 Basmati patent claims, 15 were withdrawn. RiceTec was able to keep their Indian-American hybrids Texmati, Jasmati and Kasmati .To the dismay and outrage of citizens and farmers, after the patent withdrawals, the Indian government publicly stated they were very satisfied and wished to drop all other charges.

The Case of Neem Tree (Azadirachta Indica)

DURING 1994, Indian farmers staged one mass demonstration after another against the proposed GATT Uruguay Round agreement. In March about 200,000 gathered in Delhi demanding, among other things, that the draft treaty known colloquailly as ‘the Dunkel draft’ after chief negotiator, Arthur Dunkel should be translated into all Indian languages. On 2 October, about half a million converged upon Bangalore to voice their fears about the impending legislation, aware of the threat that GATT poses to their livelihoods, by allowing multinational organizations to enter Third World markets at their expense .In particular, many of them began to question the Dunkel Draft’s call for an international harmonisation of property rights legislation.

The Case of Turmeric (Curcuma longa Linn)

In 1995, two expatriate Indians at the University of Mississippi Medical Centre (Suman K. Das and Hari Har P. Cohly) were granted a US patent no.5, 401,504 on use of turmeric in wound healing. The Council of Scientific & Industrial Research (CSIR), India, New Delhi filed a re-examination case with the US PTO challenging the patent on the grounds of existing of prior art. CSIR argued that turmeric has been used for thousands of years for healing wounds and rashes and therefore its medicinal use was not a novel invention. Their claim was supported by documentary evidence of traditional knowledge, including ancient Sanskrit text and a paper published in 1953 in the Journal of the Indian Medical Association. Despite an appeal by the patent holders, the US PTO upheld the CSIR objections and cancelled the patent. The turmeric case was a landmark judgment case as it was for the first time that a patent based on the traditional knowledge of a developing country was successfully challenged . The US Patent Office revoked this patent in 1997, after ascertaining that there was no novelty; the findings by innovators having been known in India for centuries.

The patenting of neem, haldi or amla underscores the urgent need to evolve legal systems to protect our indigenous biodiversity in order to prevent such piracy through patents. The trouble is India still does not allow patents on plants . Under the rules of World Trade Organisation, every nation is free to evolve its own method (sui generis) of plant protection. The US is the only country which grants patents on plants .

The Case of Bt Cotton

Prior to colonization, cotton was traded in the Indus Valley as mainly a Luxury good. It was only in the 19th century, after colonization that cotton cultivation followed a more mass production like structure.

Cotton production is a staple of the Indian agricultural economy. Some 7 million farmers depend on the crop for sustainable living, and overall 21% of all cotton produced globally comes from India. However, cotton is a very expensive crop to cultivate. Over half of India’s total pesticides (40,000 tonnes) are used in the upkeep of cotton cropland .

In 1998 Monsanto began a series of Bt cotton trial tests in India, albeit illegally. Monsanto did not apply for trial testing clearance, and was not given any sort of formal approval to conduct studies on rural land. After going public with the results of their trial tests, Monsanto promoted Bt cotton as the perfect cost-cutting crop for rural India. It was claimed that yield output would increase to 3,300 pounds per acre. Moreover, Bt cotton would need to be sprayed approximately 2.6 times less then both organic and hybrid cotton. Even though inputs were more expensive, the genetically engineered seed would be sprayed sparingly, ultimately reducing the cost of cultivation by 30% to 40% at least. With promises of higher yields and lower costs, the Indian government officially approved three Bt cotton hybrids (MECH 12, MECH 162, MECH 184) for clearance in 2002. This clearance was given to Monsanto in conjunction with the Maharashtra Hybrid Seed Company (Mahyco), which conveniently enough, Monsanto has a 26% stake in. Bt cotton was the first GM seed to be given clearance by the Indian government and is now viewed as the example of how agro-business conglomerates impact vulnerable rural communities .

Farmer suicides in Andhra Pradesh and Maharashtra have increased after Bt cotton was both approved and promoted by governing officials. The financial stress associated with Bt cotton, has indeed been grave. Moreover, with the adoption of such GM seeds and subsequent failure, many rural farmers have increasingly felt deep remorse. This sentiment of loss is a result of much regret associated with leaving cultural farming techniques, which carried with a sense of community and family. The loss of control over crop in both the indebted and sovereign sense is simply too much for many farmers.

The Case of Kava (Piper methysticum Forster)

Kava is an important cash crop in the Pacific, where it is highly valued as the source of the ceremonial beverage of the same name. Over 100 varieties of Kava are grown in the Pacific, especially in Fiji and Vanuatu, where it was first domesticated thousands of years ago. In North America and Europe, Kava is now promoted for a variety of uses. French company L’Oreal – a global giant with US $10 billion a year in sales – has patented the use of Kava to reduce hair loss and stimulate hair growth .

The Case of Ayahuasca (Banisteriopsis Caapi)

Shamans the indigenous tribals of Amazon basin were using the bark of B.Caapi to produce a ceremonial drink known as “ayahuasca” for generations. “Ayahuasca” means wine of soul and is used in religious and healing ceremonies to diagnose and treat illness. An American national Loren Miller obtained a US plant patent, Patent no 5751, issued in 1986, granting him rights over an alleged variety of B.Caapi which he had collected from a domestic garden in Amazon and was named as “Dä Vine”, which was peculiar for its medicinal properties. But in this case “Da Vine” represented a new and distinct variety of B.caapi because of its flower colour.

The coordinating Body of Indigenous Organizations of Amazon basin which represents more than 400 indigenous tribes in the Amazon region, along with others protested against granting of wrong patent for B.Caapi. They made argument that ayahuasca that had been known to the natives of Amazon basin for its medicinal uses. This argument was accepted and on re examination USPTO revoked this patent on 17th April 2001

The Case of Hoodia Cactus

Hoodia (and the similar Trichocaulon) are two succulent plants indigenous to southern Africa. For long, they have been used by San and Khoi shepherds of the harsh arid environments of southern Africa to reduce hunger and thirst. The South African Army also uses it to suppress appetite.

CSIR, one of Africa’s largest scientific and technological research institutions and the UK Company Phytopharm have entered into an agreement to develop an appetite suppressant, which has been named P57derived from Hoodia . As we all know, obesity is one of the main public health problems in developed countries, so the market potential is huge.

The international patent application WO 9846243 claims monopoly use of the P57 appetite suppressant agent of the extracts of Hoodia or Trichocaulon and its use in pharmaceutical appetite suppressants.

The Jamun Case

It is a plant; known for its anti-diabetic properties. It is common knowledge and everyday practice in India. Their use in the treatment of diabetes is documented in authoritative treatises such as the “Wealth of India”, and the “Treatise on Indian Medicinal Plants”. A US patent was granted in 1999 to Cromak Research Inc., based in New Jersey, USA. The assignees are three non-resident Indians .

The indigenous knowledge and use of the Jamun consist of prior art, that is, no patent should be given where prior art exists, since patents are supposed to be granted only for new inventions on the basis of novelty and non-obviousness. As Article 102 of the US Patent Law, which defines prior art does not recognise technologies and methods in use in other countries as prior art. Because of this, the Jamun could be patented in the USA.

LEGAL ASPECTS

The Convention on Biological Diversity

A big step was made in 1994 when the Convention on Biological Diversity (the CBD) came into force. This convention gave sovereign national rights over biological resources . One of the advantages of it is that it enables developing countries to better benefit from their result of traditional knowledge.

The objectives of the CBD are:

• to protect biodiversity

• to promote its sustainable use

• to share the benefits of such use equitably between providers and users.

The convention on biological diversity (CBD) was the result of discussion concluded at Rio de Janerio on United nations conference on earth and development (Earth Summit), 1992.The convention provides for protection of environment without compromising with the ongoing economic development17.The convention provides for recognition of knowledge of local and indigenous communities in genetic materials and sharing of benefit derived from it.

CBD can be regarded as the first international initiative to recognize the contribution of indigenous and local communities in conservation of biodiversity. In its preamble CBD recognizes the dependence of many indigenous communities on biological resources and stress on the desirability of benefit sharing.

Trade Related Aspects of Intellectual Property Rights (TRIPS agreement)

TRIPS agreement also has some provision which can be applied in a limited way for protection of traditional knowledge. Article 1 of TRIPS Agreement provides that members may but shall not be obliged to implement in their domestic laws more extensive protection than that is required by the agreement, provided that such protection does not contravene the provisions of this agreement. Many Jurists have opined that this provision can be invoked for protection of TK. They argue that absence of term TK in the agreement does not prevent any member from enacting any provision for protection of TK .

But under TRIPS it is not possible to protect TK under patent law. TRIPS requires member state to grant patent only to that inventions which are new, involving an inventive step and are capable of industrial application. But these attributes cannot be applied in the field of TK, as it is not new and is incapable of industrial application as such. But it is to be noted here that the same provision can be invoked to prevent bio-piracy. Besides this there are authors who argue that obligation to protect geographical indications provided by TRIPS agreement can be used to protect TK. TRIPS agreement by itself does create any measures for protection of traditional knowledge and innovations of indigenous people instead it creates measures for establishing alternative measures for its protection.

Traditional Knowledge Digital Library

Traditional Knowledge Digital Library (TKDL) is an innovative application of Information and Communication Technology for inventorisation of Traditional Knowledge (TK) in particular Traditional Medicine (TM) and Intangible Cultural Heritage, to preserve, safeguard, protect and get recognized Traditional Knowledge and Cultural heritage at National and International level .

The traditional knowledge information available in public domain is in local languages and in a format, which is not understandable to patent examiners. For example, books on Ayurveda containing drug formulations are in Sanskrit, for Unani system these are in Urdu, Arabic or Persian, and for Siddha in Tamil.

TKDL targets Indian Systems of Medicine, viz., Ayurveda, Unani, Siddha and Yoga available in public domain. This is being documented by sifting and collating the information on traditional knowledge from the existing literature existing in local languages such as Sanskrit, Urdu, Arabic, Persian and Tamil in digitized format, which will be available in five international languages which are English, German, Spanish, French and Japanese.

TKDL acts as a bridge between formulations existing in local languages and a Patent Examiner at a global level, since the database will provide information on modern as well as local names in a language and format understandable to Patent Examiners. It is expected that the issue of the gap on lack of access to prior art traditional knowledge shall get addressed.

World Intellectual Property Organization

In 2000 the WIPO General assembly established the IGC as a forum for discussion of intellectual property issues in relation to access to genetic resources, benefit sharing and protection of traditional knowledge and expressions of folklore. It acts as an international forum for international policy debate, development of legal mechanisms and for creating practical tools for protection of traditional knowledge and traditional cultural expressions against misappropriation and misuse. IGC work has produced large number of discussion papers on the subject of protection of TK.IGC has produced a number of practical outcomes which include, a toolkit for the management of IP in the context of documenting TK and genetic resources, a practical guide for protection of traditional cultural expressions, proposal for revision of international patent classification to contain categories of TK.

The committee has made substantial progress in addressing the practical linkages between the current intellectual property system and the custodians of TK. Committee is trying to bring about an international understanding regarding the principles that should guide the protection of traditional knowledge.

Besides all these international initiatives, last decade has witnessed many regional initiatives for laying down measures for protection of TK. African countries under Organisation of African Union prepared a model law on community rights and access to biological resources. The African Model Legislation for the Protection of Rights of Local Communities, Farmers, Breeders, and for Regulation of Access to Biological Resources aims at establishing a framework of national laws to regulate access to genetic resources and associated TK. Its provisions on access to biological resources make it clear that the recipients of biological resources or related knowledge cannot apply for any IP rights of exclusive nature. Besides this they provide for community rights over their biological resources and their right to collectively benefit from their use, rights to their innovations, practices, knowledge and technology and the right to collectively benefit from their utilization .Thus, in practice this model legislation intends to create a system which allow the community, right to prohibit access to their valuable resources and knowledge.

The World Trade Organizations (WTO)

The Ministerial Declaration of the WTO’s fourth Ministerial Conference (Doha- 9-14 November 2001) emphasized the importance of TK. It instructed the Council for Trade-Related Aspects of Intellectual Property Rights to examine, inter alia, the relationship between the TRIPS Agreement and the Convention on Biological Diversity, the protection of traditional knowledge and folklore, and other relevant new developments raised by Members pursuant to Article 71(1) In addition, it instructed the Committee on Trade and Environment in pursuing its work on all items on its agenda give particular attention to three issues, including the relevant provisions of the TRIPS Agreement. Moreover, it “recognized the importance of technical assistance and capacity building in the field of trade and environment to developing countries, in particular the least- developed among them.”

INDIA- COMBATING BIO-PIRACY

The Patent (Amendment) Act, 2005

India has amended the Patents Act in 1999 and 2002 to comply with the obligations of Trade-related Aspects of Intellectual Property Rights (TRIPS). The TRIPS agreement signed along with WTO agreement in 1995 provides for making certain changes in domestic patent laws, for reaching a uniform system of legislations relating to patent throughout the world. In order to fulfill this obligation under TRIPS patent act was duly amended in 2005. This amendment introduced into Indian IP system certain new measures for protection of TK.

Another provision is inclusion of new provision for opposition of patent, on specific grounds under section 25(1) of the Act. It provides after publication of patent application any person can in writing make an opposition to the controller of patents on the ground of lack of novelty or inventive step, or non disclosure or wrongful disclosure of source or geographical origin used in the invention and anticipation of invention by the knowledge, oral or otherwise available within any local or indigenous groups in the complete specification. Also now we can oppose a complete patent specification which was publicly known or publicly used in India before the date of claim40.

All the above provisions are defensive in nature which can help to oppose any patent granted to an invention which is based on the knowledge available within the indigenous groups of this nation. But these provisions are also not capable of covering the entire area covered by TK, which necessitates the need for a sui generis system for protection of TK.

CONCLUSION

Around the world, various local communities possess knowledge and practices gained by them through experience of centuries and transferred from generation to generation. TK is the result of intellectual activities in diverse traditional contexts. One of the challenges posed by the modern age is to find ways for strengthening and nurturing the roots of traditional knowledge so that its fruits can be enjoyed by future generation and so that the traditional communities can develop and sustain in ways consistent with their own values and interests .

There has been a growing interest in the International communities in the present times regarding these old and obsolete sources of knowledge which are highly adaptive and creative when transformed into commercially valued products. Knowledge, both modern and traditional, is under peril in the age of Globalisation. The most unfortunate part of the unfair acts of bio-piracy is that the actual holders of the TK are, most often, not aware of the unfair exploitations of their knowledge being taking place. Hence, the chances that these victims of illegal patenting would ever complaint about the infringement of their rights are meager. The International community has long ago realised that national initiatives alone are incapable for TK protection and hence the World nations are currently engaged in extensive discussion on preservation of traditional knowledge under various International Institutions.

Patent of Inventions, Innovation in Softwares: Patinformatics

A comparative analysis of Global players

Ankit Kumar Singh

A. Background:

The practice of granting monopolies by patent has a long history of over 600 years. The term patent can be traced to the term Letters Patent, a grant in the form of a document rolled up with the King’s or Queen’s seal appended at the bottom, conferring certain rights and privileges on an individual. The grant was not sealed or closed but it was open to public. Though letters patent were granted for various purposes, they were most often granted to inventors, and hence the word ‘patent’ was eventually used to describe the inventor’s monopoly. It only excludes others from practising his invention without his permission. The patent system achieves this goal by granting limited exclusive rights to inventors in return for public disclosure of inventions that would encourage scientific and technological advancement. An invention is the creation of a new technical idea and of the physical means to accomplish or embody it. Thus, there must be a concept and a way of putting the concept into some practical form. An unimplemented idea is not patentable. Software is a set of interacting programmes. Each programme is a sequence of instructions written in a well-defined language, encoding operations, processes or algorithms applied to data in the broadest sense. The programme is initially written in a programming language understandable to professionals. At this stage, it is in the form of ʺsource codeʺ, which permits the development and production of a software product. Once written, this sequence of instructions can be compiled, which means translated and transformed into a binary sequence (of 1s and 0s) signalling the presence or absence of an electric impulse, comprehensible for a machine, but no longer to a human mind. It is then in the form of an ʺobject codeʺ or binary code. In simple words, a computer program, or software, is a “set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.” A software-related patent is a “patent that claims as all or substantially all of its invention some feature, function or process embodied in a computer program that is executed on a computer.” A major subject of debate is whether software alone, not in combination with other physical elements or steps, should be, or is, patentable.

B. Arguments in Favour of Patenting:

Although software exists as written text, both as source and object codes, unlike other copyrightable subject matters, its primary purpose is not that they be read by human beings. Rather, software, at least in object code form, is written for the purpose of performing functional tasks. Computer software, in conjunction with the computer, carries out the particular task or set of tasks itself. In short, software is a functional work of technology. Historically, patent protection has always been available for functional subject matters. Patent protection of computer software is that a patent can protect a concept underlying the computer program, and thus would promote the development of the software industry and computer-related industry. Software provides a set of instructions that allow a machine to indicate, perform or achieve a particular function, task or result. In that sense, both hardware and software exhibit technical behaviour.

Since software invention requires considerable investment of time and money, it should be protected. Given the limited ability of copyright to protect the valuable functional aspects of software such as behaviour and structure, sequence, or organization, second comers could simply copy these aspects either directly from the source code or by decompiling the object code. These kinds of practices diminish the real value software and deprive the original developers of the ability to recoup their development costs and from earning money from their inventions. Therefore, the prospect of obtaining an exclusive right to practice and/or license an invention under patent protection gives inventors important financial incentives to invest time and resources in developing new inventions.

The reward in the shape of a patent serves as an incentive to innovators, as it can be argued that developers need means to recuperate their investment. In other areas of innovation, patents have encouraged substantial investment in research and development and have generally promoted innovation. Software development is a vibrant area of innovation, despite the uncertain nature of its legal protection. The success of open source software also serves to diminish the claim, as there is a field of endeavour where thousands of developers innovate without the incentive of patent protection. If a computer program contains elements that meet patentability requirements, it should be awarded software protection. Since software development is a technical field like any other its results should be patentable. Effective protection of the software industry is an economic necessity. Over the few past decades, the software industry has achieved a substantial growth rate which continues to grow unabated. Countries that want to increase or at least to sustain investments in this sector should provide effective protection mechanisms for these technologies.

C. Arguments against Patenting:

Computer programs are already protected by copyright, and thus it is not necessary to provide any other titles of protection. Smaller software developers would not be able to enjoy expensive patent protection, and would be put in a position to pay royalties to patents owned by big corporations. Computer software is actually an algorithm or a mathematical formula. An algorithm is a series of steps to solve a problem and computer program is an implementation of that algorithm, which is like an implementation of mathematical equation. Granting patents for mathematical algorithms would preclude others from performing the same process. So like mathematical algorithms, computer programs should not be patented.

Exclusive rights granted by patents diminish competition by creating monopolies in the market. On the other hand, exclusive rights conferred by a patent owned by small and medium enterprises would strengthen their market position and negotiation power with the possibility to license or assign patents. Patent protection of computer programs would inhibit competition in this field due to the characteristics of software innovation. It is said that software innovation typically involves cumulative, sequential innovation and re-use of others’ work. To a certain extent, this is an inevitable and permitted consequence of the patent system. However, the fact that the software industry has a natural tendency towards monopolies as a consequence of the need for standardization, allows software patents to have a further effect on monopolization in the sector.

Software patents encourage the creation of the so-called ‘patent thickets’: a dense undergrowth of interrelated patents that researchers have to navigate in order to develop new technologies. There are two different types of thickets. The first one is a single technological innovation that may be protected by several patent holders. This situation would require anyone interested in developing software in that area to obtain separate licences from numerous owners. The second type of thicket occurs when a product is covered by a large number of patents, not just one. Patent thickets increase the cost of innovation, they encourage inefficiency through the creation of complex cross-licensing relations between companies, and they may even stop newcomers entering the market if they fail to penetrate the thicket. However, at least one commentator takes issue with critics of patent thickets: even where thickets exist, they have no effect on innovation through research and development spending.

D. Protection of Softwares:

  a) International Perspective:

The most common systems for protecting computer software are: Copyright, Patents, and Trademarks. Copyright protects the expression of an idea in a tangible (material) form. The recent Copyright Treaty by the World Intellectual Property Organization confirms that computer software is to be protected by copyright as a literary work throughout the world. Literary works, such as books and poems, have traditionally been expressed in a written form which is readable to humans. With regards to software, both the source code (human readable form) and object code (machine readable form) qualify for copyright protection. Patents protect the underlying ideas of a product which has commercial value in industry. Computer software incorporates ideas in the form of algorithms and data structures. These ideas can be protected by patents if proven to be innovative enough and of commercial value. Trademarks protect the name that uniquely distinguishes a company or product from the rest. Trademarks are available in regards to computer software in software names and software company names.

In particular, prior to the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement, the status of computer program protection was undefined under the Paris Convention, which regulates global patent rights, and was controversial under the Berne Convention, which regulates the worldwide copyright regime. The TRIPS Agreement places computer programs under the copyright section by stating that “computer programs, whether in source or object code, shall be protected as literary works under the Berne Convention.” Furthermore, TRIPS mandates that all member states create an adequate judicial and administrative enforcement mechanism and provide a dispute resolution mechanism not only for the protection of computer programs but all intellectual property rights.

Despite the TRIPS Agreement, the question of whether or not computer programs can be patented has not been solved. Article 27 of the agreement states that “… patents shall be available for any inventions…in all fields of technology, provided they are … capable of industrial application.” While the second and third paragraphs of the same article allow member states to exclude from patentability some categories such as medical treatment, or inventions dangerous to health or environment, it makes no mention of computer programs. By not commenting on the viability of software patents, TRIPS leaves this decision to the individual signatories. However, even the developed countries differ as to whether computer programs should be patentable, and if so, which limitations should apply.

b) United States:

The U.S. Code defines inventions that are the proper subject matter of U.S. patents as follows: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” Not all “inventions” are patentable in the U.S. because neither a mathematical formula nor an algorithm for making mathematical computations or conversions can be patented. Nevertheless, the U.S. Supreme Court also excluded “laws of nature, natural phenomena, and abstract ideas” from patent protection. Before 1981, the United States Patent and Trademark Office (USPTO) treated computer programs and inventions relating to computer programs as mathematical algorithms or abstract ideas and did not grant patents. Attitudes towards software patents have changed significantly following Diamond v. Diehr, in which the Supreme Court stated that a patent claim could not be denied solely because the invention uses “…a mathematical formula, computer program, or digital computer.” An idea in and of itself is also not patentable. The implication is that any mathematical procedure is akin or identical to a law of nature, which leaves doubt as to whether any computer-implemented inventions are patentable.

Following the decision in In re Freeman, the U.S. Patent and Trademark Office (“USPTO”) applies a two-step test—which was further refined in In re Walter and in In re Abele —to determine whether a particular invention is patentable. The first step is a determination of whether the patent claim describing the invention recites elements or steps that are themselves mathematical algorithms. If a mathematical algorithm is not present, patent protection may be the proper vehicle of protection if the other statutory requirements are met. If a mathematical algorithm is present, a second step attempts to determine whether the claim reciting the mathematical algorithm relates or applies, in a non-trivial fashion, the algorithm to physical elements or process steps, so that the claim as a whole must be analyzed.

In 1981, the U.S. Supreme Court clarified that computer technology should not be treated differently from other technologies under the patent law and that inventions involving a computer program can be the proper subject matter for protection by U.S. patents. Furthermore, the Federal Circuit in In re Alappat held that software has the power to convert a general purpose computer into a special purpose machine, which constitutes patentable subject matter. Today, the U.S. grants patents for a wide range of computer software-related inventions provided that they produce “concrete, useful and tangible” results.

c) Europe:

Traditionally, software has been protected by copyright and excluded from patent protection in Europe. Article 52(2) of the European Patent Convention excludes “schemes, rules and methods for performing mental acts, playing games or doing business, and programming computers” from patentability. These exclusions are made for abstract and intellectual mechanisms, as opposed to useful tangible products or processes. Despite this language, however, patents covering computer software have been granted pursuant to decisions of the European Patent Office Board of Appeal. The panels in those cases interpreted Article 52(2) in light of other provisions of the Convention, including Article 52(3), and concluded that while computer software and business methods cannot be patented as such, they can be patented on the basis of the technical effects produced by the software or method. Over the last fifteen years the Technical Board of Appeal of the European Patent Office (“EPO”) has tried to get over this obstacle, almost even to the point of undermining the clear intent of the entire European patent system, but it is still shackled by its current provisions.

On Aug. 31, 2001, the European Patent Office issued new guidelines with respect to the patenting of computer programs and business methods. The purpose of these amendments was to confirm the guidelines to the aforementioned European Patent Office Board of Appeal decisions concerning the patentability of business methods and computer-related inventions and with current European Patent Office practice on examining such subject matter. Under the 2001 amendments, the European Patent Office, as it had in the past, relied on language in Article 52(3) of the Convention and language in Rules 27 and 29 of the Convention’s Implementing Regulations to issue computer software patents. Under the revised, current guidelines, the European Patent Office may, assuming all other requirements are met, grant a computer software patent provided it is of a “‘technical character’ to the extent that it must relate to a technical field, concern a technical problem, and have technical features in terms of which the matter for which protection is sought can be defined in the claim.” Accordingly, although computer programs per se are not patentable, under the guidelines, “if a computer program is capable of bringing about, when running on a computer, a further technical effect going beyond … normal physical effects, it is not excluded from patentability, irrespective of whether it is claimed by itself or as a record on a carrier.” It is clear that the existing procedure is well established in favour of some limited patentability of software, even after the defeat of the Directive. European Commissioner Benita Ferrero-Waldner has pointed out that, despite the vote, ‘patents for computerimplemented inventions will continue to be issued by national patent offices and the European Patent Office under existing law’.

d) Japan:

Under Article 2(1) of the Japanese Patent Law, computer software, like all other inventions, is patentable if it is a highly advanced creation of technical ideas by which a law of nature is utilized. In February 1997 the Japanese Patent Office issued its Implementing Guidelines for Computer Software-Related Inventions, published, in part, to “adequately protect software related inventions by clarifying that ‘computer-readable media recording computer programs’ ” may constitute statutory subject matter. Just three years later, in 2000, the Japanese Patent Office issued revised Examination Guidelines for Patent and Utility Model in Japan, which included Computer Software-Related Inventions. Under these lengthy guidelines, the Patent Office sought to address the issues raised concerning the patentability of software-related inventions that are not necessarily recorded on computer-readable media (i.e., Internet-related inventions), as well as the patentability of business methods. Its purpose was to, among other things, achieve consistent decisions among patent office examiners and efficient implementation of the patent and utility model laws.

e) India:

Under the Indian law, computer programmes are protected under the Copyright Act, 1957; they are not entitled to protection through patents. The law relating to patents in India is governed by Indian Patents Act, 1970 as amended by Patents (Amendment) Act, 1999 and Patents (Amendment) Act, 2002, which came into force with effect from May 2, 2003. Section 3(k) of Patent Act, 1970“A mathematical or business method or a computer programme per se or algorithms are not patentable.” According to the Draft manual of practice and procedure :

4.11.1 A computer implemented invention mean any invention, the performance of which involves the use of computer, computer network or other programmable apparatus, or an invention one or more features which are realized wholly or partially by means of a computer programme/ programmes.

4.11.2 Computer programmes are a set of instructions for controlling a sequence of operations of a data processing system. It closely resembles a mathematical method. It may be expressed in various forms e.g., a series of verbal statements, a flowchart, an algorithm, or other coded form and maybe presented in a form suitable for direct entry into a particular computer, or may require transcription into a different format (computer language). It may merely be written on paper or recorded on some machine readable medium such as magnetic tape or disc or optically scanned record, or it may be permanently recorded in a control store forming part of a computer.

4.11.3 If the patent application relates only to a machine i.e., hardware based invention, the best mode of operation may be described along with the suitable illustrations. However, in the case of a process related inventions, the necessary sequence of steps should clearly be described so as to distinguish the invention from the prior art with the help of the flowcharts. The source/pseudo/object codes may be incorporated in the description optionally.

4.11.4 In order to distinguish the invention from the prior art, relevant prior art is also required to be given in the specification. It is always essential to analyze the invention in the light of what is described and the prior art, in order to identify the contribution to the art and hence determine whether this advancement resides in, or necessarily includes, technological features and technical application or is solely intellectual in its content. A hardware implementation performing a novel function is not patentable if that particular hardware system is known or is obvious irrespective of the function performed.

4.11.5 Applications related to computer inventions may broadly fall under the following categories:

(a) Method/process:

(b) Apparatus/system:

(c) Computer program product.

The following aspects should be looked into while dealing with such applications.

4.11.6 The method claim should clearly define the steps involved in carrying out the invention. It should have a technical character. In other words, it should solve a technical problem. The claims should incorporate the details regarding the mode of the implementation of the invention via. hardware or software, for better clarity. The claim orienting towards a “process/method” should contain a hardware or machine limitation. Technical applicability of the software claimed as a process or method claim, is required to be defined in relation with the particular hardware components. Thus, the “software per se” is differentiated from the software having its technical application in the industry. A claim directed to a technical process which process is carried out under the control of a programme (whether by means of hardware or software), cannot be regarded as relating to a computer programme as such.

For example, “a method for processing seismic data, comprising the steps of collecting the time varying seismic detector output signals for a plurality of seismic sensors placed in a cable.” Here the signals are collected from a definite recited structure and hence allowable.

4.11.7 The apparatus claim should clearly define the inventive constructional hardware features. The claim for an apparatus should incorporate a “process limitation” for an apparatus, where “limitation” means defining the specific application and not the general application. As a general rule, a novel solution to a problem relating to the internal operations of a computer, although comprising a program or subroutine, will necessarily involve technological features of the computer hardware or the manner in which it operates and hence may be patentable. For example, in a computer comprising means for storing signal data and a first resistor for storing data, the clause starting with “for” describes the function or process carried out by the apparatus, and form the part of “process limitation” here.

4.11.8 The claims relating to software programme product are nothing but computer programme per se simply expressed on a computer readable storage medium and as such are not allowable. For example, if the new feature comprises a set of instructions (programme) designed to control a known computer to cause it to perform desired operations, without special adoption or modification of its hardware or organization, then no matter whether claimed as “a computer arranged to operate etc” or as “a method of operating a computer”, etc., is not patentable and hence excluded from patentability. The claim might stipulate that the instructions were encoded in a particular way on a particular known medium but this would not affect the issue. e.g., A program to evaluate the value of PI or to find the square root of a number are held not allowable. An invention consisting of hardware along with software or computer program in order to perform the function of the hardware may be considered patentable. e.g. embedded systems.

4.11.10 A mathematical method is one which is carried out on numbers and provides a result in numerical form (the mathematical method or algorithm therefore being merely an abstract concept prescribing how to operate on the numbers) and not patentable.

However, its application may well be patentable, for example, in Vicom/Computer-related invention [1987] 1 OJEPO 14 (T208/84) the invention concerned a mathematical method for manipulating data representing an image, leading to an enhanced digital image. Claims to a method of digitally filtering data performed on a conventional general purpose computer were rejected, since those claims were held to define an abstract concept not distinguished from a mathematical method. However, claims to a method of image processing which used the mathematical method to operate on numbers representing an image can be allowed. The reasoning was that the image processing performed was a technical (i.e. non- excluded) process which related to technical quality of the image and that a claim directed to a technical process in which the method used does not seek protection for the mathematical method as such. Therefore the allowable claims as such went beyond a mathematical method.

4.11.11 The patent application No.558/DELNP/2005 related to method of operating the credential management processor. This was refused as it was found to be attracting the provisions of section 3(k) as the alleged method was relating to ‘receiving ‘, ‘de-referencing’ and ‘storing’ being purely a computer implemented software application. As well as the enhancement of security as claimed in method claims was already disclosed in the cited document and is obvious to a person skilled in the art.

E. Conclusion:

Economists view patent protection as a trade-off between the need to encourage innovation and the necessary evil of allowing a temporary monopoly to the innovator. Although it is controversial, no one can deny the importance of software. There are those who argue that software is so fundamental that our society should not allow anyone to own it to the exclusion of others. Some are content to treat software as copyrightable literature, affording protection only to its expressive, but not its functional aspects. Some argue strenuously that the patent system, which has existed since the late eighteenth century, is outdated and cannot handle this new technology and that some different, sui generis, form of protection should be created for software technology. Others argue that the current patent system is working fine and that it will adapt to this new technology, just as it has done many times before. Failure of TRIPS Agreement to determine whether computer programs can be patentable or not and if so which limitations should apply, creates different application among the member states. The U.S. provides for the patent of computer software and even European Union provides for the patent in the Computer programmes if it has “Technical Effect”. On the lines of US, Japan also provides for the patent to the computer software. India too provides for the Patent of the Computer Program in the Hardware form, in spite of its express negation in Patent Act, 1970.