Section 3(k) of the Patents Act excludes the following inventions from patentability: mathematical or business method; computer programs per se (by itself); or algorithm. What is confusing about the patentability of computer programs under section 3(k) is the use of the phrase ‘per se’. Until 2015, there was no uniformity among the four patent offices (Kolkata, Mumbai, Delhi and Chennai) in India on the issue of grant of software patents (a fact which was also noted by the Intellectual Property Appellate Board (IPAB) in the case, Yahoo v. Controller, and Rediff). In the absence of any guidelines on the issue of patents on computer related inventions (CRI), it was found that while some patent offices refused to grant software patents, others were inclined to grant patents on software. In order to remove inconsistencies related to grant of software patents in India , the Controller of Patents issued guidelines related to CRI first in 2015 (known as CRI Guidelines 2015). Under the 2015 guidelines, patent offices in India were prohibited from issuing business method patents while computer programs could be patentable on the fulfilment of certain conditions.

Business method patents granted to Facebook

Facebook was granted a patent (Application No. 830/CHENP/2009) in February 2017 on a method “for generating dynamic relationship-based content, personalised for members of the web-based social network”. Facebook claimed that section 3(k) was not applicable in this case because the invention “implements a technical process and has a technical effect.” On 25th April, 2017 Facebook was granted another patent (Application No. 6799/CHENP/2009) on a method to share its user-profile data with third party applications on Facebook. Facebook in its patent application stated that its invention was not merely a computer program as the said invention “includes hardware limitation and provides technical improvements and benefits like checking privacy setting associated with the user profile”. The Chennai Patent Office accepted this submission and accordingly granted Facebook a patent for its invention.

Apple’s patent on media management program

In May 2017, the Kolkata Patent Office granted a patent (Application No. 461/KOLNP/2009) to Apple on a ‘method for browsing data items with respect to a display screen associated with a computing device and an electronic device’. Notably, one of the issues raised during the examination of the patent application was whether the invention fulfilled the novel hardware requirement. Apple argued that its invention brings about an “improved technical effect” and therefore, should be patentable. Surprisingly, Apple’s argument was accepted by the patent office which accordingly granted Apple a patent on the said invention.
Patent granted on Google’s information retrieval system
Most recently, Google was granted a patent on an invention titled, ‘phrase identification in an information retrieval system’. In this case too, Google argued that its invention is not an algorithm or a computer program per se, “but provides a technical solution to a technical problem of how to automatically identify phrases in a document collection”.

Problem associated

The trouble with the grant of the aforementioned patents is that the subject-matter of these inventions in all the cases was business methods. The internet companies argued that their inventions included a ‘novel hardware’ and therefore, did not fall afoul of section 3(k). Even though ‘novel hardware’ is not defined in the CRI Guidelines (leaving patent examiners free to interpret the meaning of the phrase), it is worth noting that business methods are absolutely prohibited under Indian law and the ‘novel hardware’ requirement is applicable only when the invention is a computer program. Such patents indicate that while software/business methods are prohibited under Indian patent laws, patent offices in the country show a proclivity towards granting such patents.