Patent Protections when Outsourcing Software Development to India

Software Development

India professionals exhibit high levels of technical competency, high-level proficiency in the English language, and serve at cost-effective price points when compared to their American counterparts.  Still, there is a level of risk and uncertainty when dealing with any contractors outside of your local jurisdiction, which is amplified significantly when dealing with foreign vendors.

You are sharing your company’s competitive advantage, and while you may trust your vendors and have had a good standing relationship with them — you must ask, “Have you secured or have you lost your Intellectual Property Rights in their jurisdiction?”

It is essential to understand how to protect your intellectual property in the US and internationally. With the increased outsourcing of software development to Eastern Europe and Asia, consider securing your intellectual property rights with patents in software-friendly jurisdictions. This article explores India as an excellent consideration.

Founder Legal’s preferred Indian IP Counsel, Y. J. Trivedi & Co., sheds some light on the topic in their recent post, “Patentability Guidelines for Software in India.”

“The answer to this question may be found by analyzing the facts surrounding the section of the Indian Patent Act that addresses software inventions – Section 3(k), which was first introduced in Indian patent law by the Patent (Amendment) Act, 2002.”

Y. J. Trividia continues, “The Indian Patents Act specifies ‘patent as granted to an invention’ wherein new product or process involving an inventive step and capable of industrial application.

Like any invention including the software inventions mandatorily need to meet with these patentability criteria:

1

Novel: When that invention or technology has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application.

2

Inventive: An Invention should be inclusive of a feature that involves technical advance as compared to the existing knowledge or having economic significance or both to comply with being inventive. It should not be obvious to a person skilled in the art.

3

Industrially applicable: An invention has to be advantageous and utilized in the society. Further, the exclusions to patentability, inclusive of Software related inventions are listed in section 3 of the Patents act.

Section 3(k) states that, a mathematical equation or business method or a computer program per se or algorithms shall not be considered as inventions and hence not patentable. When we say computer program per se the claims of the inventions include Computer programs, set of instructions, Routines and subroutines, Computer program products, Storage Medium having instructions, Database, Computer Memory with the instructions stored in a computer-readable medium.

The Indian Patent Office has issued Guidelines which brought in further lucidity towards clarifications of the criteria of section 3k elaborating on ‘what kind of computer-related inventions can be granted a patent and what cannot be granted’. In its essence, the CRI (computer-related Inventions) guidelines, 2017 clarifies the scope for patentability of an invention in view of exclusions to patentability and the patentability criteria defined under the act.

Software can be protected, only when, the software falls within the purview of computer program and not within the purview of Computer program per se as per the recently implemented guidelines. When the subject matter of the software program, for which the protection is sought transcends the per se status then it may become patentable.

It is well-established that, in patentability cases, the focus should be on the underlying substance of the invention, not the particular form in which it is claimed.

Example for the same is computer software in combination with a novel hardware is patentable.

So, as the Patents Act clearly excludes computer programs per se and the exclusion should not be allowed to be avoided merely by camouflaging the substance of the claim by its wording.

Hence, the patentability of the Computer program in view of the CRI guidelines thus covers, those computer programs to be patentable which have got inventiveness, inventive step i.e. which solves the problems associated with earlier know programs and software. This brings the invention in a computer program outside from the ambit of COMPUTER PROGRAM per se as mentioned in section 3(k) – non-patentable inventions. These Guidelines have been drafted taking into account various recommendations by stakeholders and SFLC.”

Businesses of all sizes need smart and effective solutions to protect what, in many cases, is their most valuable asset, their intellectual property. The best legal advice begins with an understanding of your goals and objectives.

At Founders Legal, we work closely with our clients and inventors to protect innovations across a wide spectrum of industries, including computer software, electrical, biotechnology, chemical, pharmaceutical, medical, mechanical, consumer products, and more. In addition to patent prosecution, we provide comprehensive patent services ranging from patentability searches and assessments to advice on validity and infringement.

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