5 notable cases of recent years
In previous articles on Habre, we wrote about how USA and Great Britain sued the programmers. They were no less remarkable in India. We will talk about them in our material.
Patent for a computer program
Process: Ferid Allani vs. Union of India and Ors, 2019 SCC
The applicant, a citizen of Tunisia, applied for patent No. IN/PCT/2002/00705/DEL on July 17, 2002. The Indian application related to a “method and device for accessing information sources and services on the Internet.” The Indian Patent Office rejected the application on the grounds of Section 3(k) of the Patents Act 1970 (computer programs and algorithms cannot be inventions per se) and lack of inventive step and novelty. The case went to the Intellectual Property Appellate Board (IPAB), which upheld the refusal, and then to the Delhi High Court.
In this matter, the court sided with the applicant, providing detailed explanations for the controversial provision of the law. Thus, he noted that the ban on patenting applies to “computer programs as such”, and not to all inventions based on and including computer programs – otherwise it would be impossible to obtain a patent for ordinary modern household appliances, which, of course, include computers. Thus, it is the technical result, the achievement of which is facilitated by the use of computer programs, that is decisive for the examination of patentability.
Patent to Microsoft
Process: Microsoft Technology Licensing, LLC vs. Assistant Controller of Patents and Designs 2023 Livelaw (Del) 402
The same conclusion was reached during the appeal against the refusal of the Indian Department of Intellectual Property to issue a patent under application No. 1373/DEL/2003 “Methods and Systems for Authentication of a User for Sub-Locations of a Network Location”. The applicant argued that the expert had misinterpreted section 3(k) of the Act by wrongly concluding that the claim referred to an algorithm implemented by a computer program as such. It has been stated that the legislature’s intent in adding the words “per se” did not mean that patents for computer programs should not be issued at all, but rather that the intent was to deny patent protection to computer programs. It was argued that the technical result of the claimed invention is not only in the excluded object, but rather in the combination of software with devices that function with it.
The court, referring to the above-mentioned decision, fully supported the position of the plaintiff, if the use of a computer program contributes to the technical result of the operation of the device, then such a program is not a program “per se”, but may well receive protection as an invention.
Design patent protection of the program interface
Process: UST Global (Singapore) Pte Ltd vs. Controller of Patents and Designs and Anr AID NO. 2 OF 2019
This case was devoted to the possibility of registering a graphic interface as an industrial model (design). The agency rejected the application because it decided that the GUI was more related to the software than the appearance of the product: it is only visible when the product is “ON” or in the operating mode, so there can be no design when the product is in “OFF” “. Therefore, the graphical user interface can be considered as the design of any product.
The court noted that the basis for refusal to register an industrial design, based on the claim that the production of the graphical user interface does not correspond to the industrial production process, but was created using only the “software development process”, is fundamentally wrong.
From the point of view of the court, it will be more correct to describe this process as follows: the source code created by programmers is embedded in microcontrollers and microprocessors and displayed on the screen by illuminating pixels using electronic means. Thus, the industrial design is applied to the product. Finally, the court noted that the Office did not even take into account the fact that this industrial design was registered in the United States and the European Union – interesting to note that this information also turned out to be important. As a result, the decision was made in favor of the plaintiff, and the application was returned to the defendant for reconsideration within three months from the date of publication of the decision.
The process of Microsoft Corporation & Anr Vs. Rupesh Waidande & Anr 2022 SCC OnLine Del 4432
This dispute concerned injunctive relief and damages for the unlawful use of software developed by the plaintiff, Microsoft Corporation and its subsidiary in India.
In 2010, the defendants most recently became aware that their programs, including Microsoft Windows, Microsoft Office, and Windows Server, were being illegally used. The plaintiffs conducted an investigation, during which it was found that the defendants had 130 computer systems, and most of them had the plaintiff’s programs installed, and the terms of the license did not correspond to their use. Microsoft Corporation repeatedly sent requests to the defendants, but they simply did not get in touch. Thus, the unauthorized reproduction and use by the defendants of the plaintiff’s copyrighted software constitutes copyright infringement under section 51 of the Copyright Act 1957.
The plaintiff company argued that the computer program was protected as a literary work and because the computer software was created by its employees in the course of work, the plaintiff was the first copyright owner under section 17(c) of the Act.
As a result, 12 years after the discovery of the infringement, the court issued an injunction in favor of Microsoft, agreeing with their arguments that they had exclusive rights and proof of the fact of infringement.
Process: Dassault Systemes Solidworks Corporation & Anr Vs. Spartan Engineering Industries Private Limited & Anr., High Court of Delhi, CS (Comm) 34/2021
In this case, the Delhi Court dealt with the copyright infringement of a 3D modeling software called Solidworks. The plaintiffs claim that the software was developed by their employees and therefore they own the copyright in it. They also claim that the software and its instructions constitute a literary work under the Copyright Act 1957.
In 2018, Dassault Systemes learned that Spartan Engineering was using a pirated version of their software, and efforts to reach an amicable settlement proved futile as the defendants denied infringement and continued to use Solidworks, according to the plaintiffs.
The plaintiffs then applied to the court for an injunction to stop the copyright infringement under section 51 of the Act. The Delhi court sided with Dassault Systemes and enjoined Spartan Engineering from using, reproducing and distributing any of the plaintiffs’ pirated/unlicensed/unauthorized programs and from formatting its computer systems and/or erasing any data related to assisting others persons in violation of the copyright of the plaintiffs.
Useful from Online Patent:
→ What is the Register of domestic software?
→ Free online search of Rospatent and Madrid System databases (available after registration).
→ Can a foreign company enter its program into the Register of domestic software?
→ How IT companies can maintain zero VAT and enter the Register of domestic software
→ How to patent a technology?