Software Patent Guidelines

Patents
Rahul Dev
With the rise of software patents, engineers coding new stu - whether within a large software company
or as kids writing smartphone apps - are exposed to a claim that somewhere a prior patent is being
infringed.

SOFTWARE PATENT APPLICATION DRAFTING GUIDELINES
We are experiencing a paradigm shift in technology from the use of Software to Mobile Apps
(Applications) to integration with Cloud Computing, which has resulted in the emerging field of
IoT, or Internet of Things.
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 is 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:
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, 5th 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, 8th 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, 28th 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
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.
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.
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.
IoT Patent Lawyers and Patent Attorneys
Technology lawyers and patent attorneys working with clients in IoT sector have to understand
their scope of work to cover telecom and consumer protection regulations. A thorough
understanding of IoT based businesses is required to advise clients on multiple aspects,

including, operations and infrastructure, growth and finance, privacy and cybersecurity
regulations, IP disputes, payment systems, and related aspects of disruptive technologies.
IoT innovations are prone to raise ethical issues in collecting million devices, which can easily
expand to a billion. Apart from issues pertaining to patent infringement, related issues include
data security, data privacy, authentication, data and IP ownership, information governance,
product liability programs, confidentiality, industry standards, educational outreach, equipment
authorization, tax, custom compliance and legal strategy patent strategy, public policy,
government representation, audits, international commercial and technology contracts etc.
Industry wise, IoT is bound to grow multifold in autonomous and e-mobility sectors, thereby
requiring multi-tiered supply structure, application of telecom and media regulations,
opportunities for information technology (IT) and media companies, cybersecurity in vehicles,
payment models in cars, big data in automobiles, etc.
Enterprise and Industrial Aspects
Opportunities include connecting equipment and devices, building domain expertise and
customer relationships. Threats include security and shaping platform standards.
Network
Opportunities include new products and services via connected networks, edge analytics and
real-time services. For example, patient monitoring in hospitals, quality control in factories etc.
Challenges include long standing relationships with new equipment makers (Cisco, Ericsson,
Huawei, Nokia) and telecom service providers. Challenges include improvement in connections
and better services to locate, authenticate and connect remote devices. Additional challenges
include lifecycle management services to maintain, upgrade and secure complex devices and
sensor networks.
Data analytics
Opportunities exist for traditional analytics vendors (IBM, SAP), cloud service providers (AWS,
Alibaba), system integrators for strengthening external customer relationships and to offer
tailored products and services. Challenges include multiple data sources whereby selecting right

ones for insights and decisions becomes difficult. As custom solutions grow, it can result in
limited integration.
Opportunities include new products and services via connected networks, edge analytics and
real-time services. For example, patient monitoring in hospitals, quality control in factories etc.
Challenges include long standing relationships with new equipment makers (Cisco, Ericsson,
Huawei, Nokia) and telecom service providers. Challenges include improvement in connections
and better services to locate, authenticate and connect remote devices. Additional challenges
include lifecycle management services to maintain, upgrade and secure complex devices and
sensor networks.
Autonomous
Opportunities exist for latest technology sectors including robotics, drones and driverless cars, as
most sensor information is collected locally and processed on board, which results in lesser need
for remote data storage. Challenges include real-time capabilities and technologies, including
computer vision, machine learning etc.
IoT – Applications and Examples
Internet of things have penetrated across multiple industry sectors and IoT applications can be
seen in transportation finance, healthcare, retail, industrial automation and even the military.
Some of the IoT examples include iBeacon (retail), smart industrial machines by GE, drones
with powerful sensors for military applications, etc.
IoT Characteristics
Products embodying internet of things possess certain core characteristics, including, limited
user interface (UI), limited processing power, limited bandwidth and limited battery life. Such
characteristics provide a perfect combination for IoT applications that demand massive outreach
without burdening the infrastructure.
Internet of Things – Legal Aspects
IoT devices and applications cover a diverse range of innovations eligible for creation of
intellectual property rights by way of patents. Valuable Iot patent portfolios can be created by

focusing on patentable IoT patent inventions, which get approved after preliminary prior art
searches and patentability analysis.
Freedom to Operate – Joint Patent Infringement
Innovations can be launched after ensuring that there exists freedom to operate and any third
party patent rights will not be infringed. In case of IoT based innovations, scenarios of joint
patent infringement may be possible considering the interactive and collaborative nature of the
Internet of Things.
While drafting patent claims and writing patent applications for IoT based inventions, quality of
IoT patent is crucial for highlighting the inventiveness and novelty of the technology. In use,
majority of innovations belong to the field of consumer devices and software. Secondly, IoT
patents protecting next generation technological innovations may set industry standards or utilize
existing ones, such as, BLE, 6LoWPAN, etc. Since most of inventions in this space are
collaborative and interactive, patent owners may face patent enforcement issues.
Valuable IP and Patent Portfolios can be developed to include Internet of Things based
innovations, which can be commercialized and monetized by exploiting the evolving nature of
IoT.
Data Privacy in IoT applications
Owing to the big data generated by IoT applications and devices, drafting a data collection policy
to suit the needs of the business is crucial. Across all stages of IoT, including manufacturing, use,
generation and utilization of data, legal issues can arise. Key is to have strong understanding of
core products and to engage in strategic counselling for creation and enhancement of IoT.
FinTech – Financial Technology Patents, Blockchain Technology
and Bitcoin
Mobile based payments using smartphone applications and handheld devices has resulted in
a striving competition between financial institutions (banks), technology corporations (Apple,
Google, Samsung) and startups (PayPal, PayTM, MobiKwik). Consequently, number of patents
filed in FinTech sector have increased exponentially across the globe indicating
strong propagation of innovative FinTech solutions worldwide.

As per views of FinTech patent experts, patent attorneys, corporate law firms and technology
lawyers, extensive investment has been done in the research and development (R&D) to bring
new technology and products to the market across the globe. FinTech patents have been filed in
aplenty by both tech startups and conventional financial institutions (financial service firms,
banks etc.).
Launch of new and innovative smartphone applications (mobile apps) in financial technology
sector indicates a dynamic shift in consumer behavior while availing financial services across
broad range of sectors, such as, for example, banking, investment management,
insurance, lending, digital and mobile payments, capital markets, credit risk assessment, financial
advisory, accounting, taxation etc.
Analysis of FinTech patent landscape reveals that major patent filers are from US, China, UK
and Europe, while leading patent players include traditional financial institutions like Visa,
Mastercard, Bank of America, Barclays, Vodafone etc, and technology companies like
Facebook, Apple and Google.
After reviewing relevant patent classifications, it can be determined that most of the innovations
for which FinTech patents are filed include customer identity verification, biometrics, digital
currencies, cryptocurrency, mobile applications, mobile apps, mobile platform, cloud
computing, blockchain, Internet of things (IoT), artificial intelligence (AI), big data, P2P
transfer, mobile wallets, and the like.
What are Blockchain and Bitcoin?
Blockchain is world’s leading software platform for digital assets that includes a decentralized
digital database to facilitate secure online transactions. Multiple legal issues can impact the
Blockchain technology at present and in near future. With regards to cryptocurrencies like
bitcoins, Blockchain provides a safe digital ledger for the bitcoin network. Hence, bitcoin can be
termed as a digital currency (cryptocurrency) experiment resulting from Blockchain
innovation. In May 2017, bitcoin surged to record high of $2900.
In coming years, majority of banks and financial institutions will use Blockchain technology for
commercial contracts and transactions. For example, Dubai Blockchain Strategy aims to
establish a roadmap for issuing all government documents on Blockchain by 2020.

This has led to inception of another term, “Internet of Agreements”, which implies use of
technology to deliver machine-to-machine handling of agreements for international business
transactions. Accordingly, Blockchain is bound to impact technology solutions for banks,
insurance companies and financial corporations.
Bitcoin Laws – Role of Bitcoin Lawyer
Bitcoin’s evolution from Blockchain technology has resulted in certain laws and regulations,
however, case laws and regulations for virtual currency (digital currency) are emerging with time
as no fixed laws exist at present. Consequently, entrepreneurs, fintech startups and businesses
have to focus on compliance, money laundering regulations, etc.
Blockchain Laws – Role of Blockchain Lawyer
Applications can be used to determine ownership, chain of transactions, authentication, identity
validation, digital evidence and discovery. Accordingly, multiple legal issues can arise pertaining
to data security, criminal activity, prevention of theft, black marketing, malware, money
laundering, data privacy, protection and infringement of intellectual property rights, including,
software patents, mobile app patents, hardware patents, bitcoin patents, fintech patents,
Blockchain patents, copyrights, trademarks and design patents.
Artificial Intelligence (AI) Patents
Artificial Intelligence or AI is subject-matter of various patents based on inventions in the field
of machine learning, data analytics, natural language processing (NLP) and natural language
search (NLS) and machine learning. AI is used to automate existing resources, including human
resources and data to generate ROI for enterprises.
Data scientists are employed by companies to achieve data driven enterprise goals to capitalize
upon the machine learning revolution. In past, companies like Google and innovators like Elon
Musk have opened up their AI platform for public while Uber has launched their AI lab and
Apple has announced that they will publish their AI research publicly.
AI technology is inter-connected with other upcoming technology areas, such as, robotics, 3D
printing, Blockchain, bitcoins, virtual reality, autonomous vehicles (driverless cars) and internet
of things (IoT). The strength of AI lies in its potential to mimic human learning and problem

solving skills, and further improve upon such potential to solve problems in areas like medicine,
traffic management, smart city solutions, big data analytics etc.
AI patents have been filed across the US patent office (USPTO), European Patent Office (EPO)
and WIPO (PCT applications) since long in the patent classifications covering neural networks
and deep learning. IBM, Qualcomm, Siemens, Microsoft, Google, Fujitsu etc. comprise of major
industry players who have actively filed patents in the field of AI, machine learning and neural
networks.
With the latest developments in AI and machine learning, patent activity in this category is set to
influence different industry verticals, including, advertising, healthcare, finance, business
intelligence, security, wearable devices, education, Internet of Things (IoT), e-Commerce,
Robotics, customer relationship management (CRM) etc.
5G Technology Patents – Enabling Internet of Things (IoT) and High
Speed Data Transmission
Future of connectivity relies heavily upon 5G technology and companies including Nokia,
Huawei and Ericsson are getting ready to prepare themselves for next generation mobile
technology.
While essential technologies are covered under SEPs (Standard Essential Patents) and FRAND
(Fair, Reasonable and Non Discriminatory Licensing Terms), there’s still big rewards
for original patent holders who own core technology that will power next generation
mobile connectivity.
Recently Apple and Ericsson signed a collaborative agreement to work together and develop
5G technology, which included understanding to end lawsuits across US and Europe. As per
deal, Ericsson will allow Apple to use its standard essential patents. The collaboration will
expand to various technology areas, including 5G development, wireless network optimization
and network traffic management.
Qualcomm has already released its 5G vision to expand mobile technology by 2020.
Qualcomm envisions 5G as disruptive mobile technology that can enable new services, connect
new industries and empower new user experiences. the fifth generation mobile technology, i.e.
5G and corresponding patents are aimed at providing a new kind of network along with a unified

platform to connect consumer devices, smart homes, connected cars, medical innovations, health
tech, wearable devices, fitness gadgets, automated manufacturing devices, and the like, which
can collectively be termed as Internet of Things (IoT).
Along with massive network of IoT, enhanced mobile broadband will power the next generation
of mobile technology to provide immersive experience and hyper connectivity. at the same time,
IoT innovations will enable users to connect virtually anything, anywhere using efficient low-
cost communication innovations.
However, companies working on 5G technology innovations by filing multiple patents will
also leverage upon 4G and Wi-Fi investments simultaneously. Seamless integration of 5G shall
require significant improvements over 4G and full exploitation of 4G to its maximum potential.
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. Single 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
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
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.
Global Patent & Trademark Filing Strategy for Cloud Telephony
Company – Case Study
This case study is about IP services provided to a client in the domain of cloud telephony.
Specifically, the cloud telephony company developed an innovative technology product and this

case study provides a reference for patent attorneys and intellectual property law firms
worldwide.
Cloud Telephony Product – Innovative Technology
The innovative technology product is aimed at offering cloud telephony solutions to users for
performing secure transactions via mobile devices.
Task – IP Protection
Client wanted to protect overall intellectual property (IP) associated with the innovative product,
including the technology powering the product, corresponding product and / or service
embodiments, and related aspects of intellectual property rights (IPR).
Patent Portfolio – Creation and Development
The first step executed was to create a patent portfolio by drafting and filing multiple patent
applications covering different embodiments of the innovative product. The aim of creating
patent portfolio was to add value to the company’s intangible assets by developing the patent
portfolio into an asset with global execution potential by way of patent licensing and patent
assignment.
The patent portfolio included patent applications having claims protecting broad level scope to
cover overall technology and corresponding aspects embodied over the wireless network. For
example, the parent patent application claimed features to connect users of the product in a
secure environment.
Patent Filing vs. Product Launch
Considering the fact that the innovative technology could be applied across multiple industry
sectors, parent patent application was filed well ahead of the product launch date and subsequent
patent applications were filed in a timely manner in-sync with the subsequent versions and
features of the technology product.
Patent Strategy
An accelerated patent strategy was formulated for the client with a view to achieve timely and
enforceable patent protection across multiple jurisdictions based on the business interests of the
client. Consequently, a strong patent portfolio was created and developed across different

countries by way of international patent filings (PCT International Phase Patent Filing, PCT
National Phase Patent Filing, Paris Convention). By taking advantage of the patent cooperation
treaty (PCT) as per the WIPO (World Intellectual Property Organisation), patent filing procedure
across different patent offices was streamlined by bringing together a strong network of
international patent attorneys to work on the project.
Brand Protection – Trademark Registrations
In addition to patent protection, multiple brands associated with the product were protected by
filing applications for domestic and international trademark trademark registrations. International
brand protection was achieved by way of Madrid system, which includes Madrid Protocol, which
is related to Madrid Agreement, an international treaty to facilitate international registration of
trademarks and management of trademark applications.
Conclusion
Therefore, as may be seen, different aspects of intellectual property rights can be protected by
collectively filing multiple patent and trademark applications, both domestically and
internationally.
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.

Most important sections in a software patent application:
Patent claims (independent patent claims and dependent patent claims)
 Writing about one or more embodiments, and
 Flow diagram and/ flow chart providing details of the algorithm
Software program is not a tangible object and they may not be patentable under the definition
that a new, useful, and non-obvious process or product is a patentable subject matter under 35
U.S.C. (United States Constitution) §101.
Therefore the patent writer should be expert in patent application drafting techniques that include
strong patent claims to define the boundary of the invention, details about one or more
embodiments, and drawing sections of patent applications.
As discussed earlier, software program is not a tangible object and to make software programs
patentable, inventors must propose and create a tangible product which contains the invented
software program. For example, when an inventor puts his sensor program, which starts the car
engine with one touch finger, into a general purpose computer, this computer is not merely “a
general purpose computer” anymore. This is a sensor machine, making it a patentable product
even though the sensor software program itself is not patentable.
Best Practices to follow while writing Patent Claims:
While writing the patent claims, use of specialized language expressions provide better
protection from patent infringers. For example, when an invention contains a particular
component, patent writers need to describe it not as one component but “at least” one
component.
“At least one” refers to “one or more” components and therefore if a granted patent claims
contains” one” or “at least one” will make a lot of difference if an infringer infringes upon the
patented product. This example illustrates a need for language manipulation in patent claim
writing.
How to get Patent for my Invention & Idea Globally?
How to patent guide for startups: Individual inventors’ and startups’ who think and dream big
often come up with patentable ideas for which they wish to file international patents. The

inventive concept has to be protected legally before any other party can copy it. Before
beginning the process and steps to file an international patent one should ask the question when
is the right time to file or apply for international patent? As a business owner if you are thinking
about expanding your business in one or more foreign countries, getting an international patent
under Patent Cooperation Treaty (PCT) system is a good option.
International Patent Attorney & Patent Registration
Our team of international patent attorneys is based in Asia. We would like to explain with you
about international patents & how to patent innovative systems. How do you get worldwide
protection for your invention? Many foreign inventors think and have a point of view that
filing international patents gives and grants them protection in 140+ countries across the globe.
However, this is not TRUE. The advantage of filing international patent for your invention is
entering the member countries of the Patent Cooperation Treaty (PCT) system in 30 or 31
months from the first patent filing date in the home country.
Ultimate Cheat Sheet for Drafting Software Patents – Patent Application
Writing Guide
Drafting Software Patents
Writing a patent application for software or mobile applications and drafting corresponding
patent claims are highly technical jobs. Drafting various sections of a patent application is really
challenging, as these have to be in accordance with formats specified by the patent office.
Specifically, writing patent claims is most crucial part of patent drafting process.
Drafting Software Patents: Drafting Patent Claims
Accordingly, it is not uncommon for patent drafters or patent attorneys to begin the drafting of
patent applications by writing claims. The patent claims form the core of the patent application
and are aimed at defining the periphery (boundary) of the claimed invention. The most difficult,
challenging and technical aspect of drafting patent claims is defining the proposed invention in
broadest possible terms focusing on novel (new) and non-obvious (unique & inventive) features,
while ensuring that it is not too broad to dilute the core focus.

Generally patent claims are categorised as independent and dependent claims. A patent
application generally contains one or more independent claims on which remaining claims
depend, which are known as dependent claims. The independent claim defines core structure of
the claimed invention by claiming novel aspects.
Software Patents – Mobile Applications Patents
Software patents are highly debatable among all stakeholders and there have been various
developments in US questioning the eligibility of abstract ideasthat are generally filed under the
category of software patents.
Alice v. CLS Bank
After United States Supreme Court’s June 2014 decision in Alice v. CLS Bank, patent eligibility
cases have amplified multifold across various district courts, the Federal Circuit, and the U.S.
Patent and Trademark Office (USPTO).
As patent attorneys and industry experts will agree, all such cases possess the capability to
redefine patent eligibility case law and some of these important post-Alice patent eligibility
decisions along with the court’s rationale for each key finding can provide significant insights for
patent practitioners.
Patent Strategy Post-Alice
After the Alice judgment, in-house patent counsels and general counsels across multiple
technology corporations have formulated or fine-tuned their patent strategy accordingly.
In accordance with US Patent Laws, 35 U.S.C. § 101, or Section 101, defines patentable
invention.
§ 101 – Inventions Patentable: 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 therefor, subject to the conditions and requirements of this title.
Therefore, for software patents, all the patent eligibility concerns relate to this section. In light of
Alice, and guidelines issued by multiple patent offices worldwide, including, USPTO, European
Patent Office (EPO), Chinese Patent Office, the Japanese Patent Office, Indian Patent Office

(IPO), and the like, patent practitioners are amending their approach as to how the patent is
drafted and how the innovation is captured.
Guide to Draft Software Patent Applications Post-Alice
1. While writing patent application, patent claims should be categorically aimed at solving
a specific problem instead of generic ones.
2. Include specific hardware claims instead of describing a general computer.
3. Describe in details as to how the claimed method improves upon existing computers (in
case of software) and / or handheld devices (smartphones, in case of mobile applications).
For example, how method embodiments result in faster computers, better performance of
handheld devices (tablets, smartphones) etc.
4. Describe improvements over existing technology or technical fields in detail.
5. Include multiple hardware architectural drawings to illustrate detailed explanation and
embodiments of flowcharts pertaining to method claims.
6. Describe the claimed subject matter in detail that can be characterised as necessarily
rooted in computer technology to overcome a specific problem.
7. Don’t use the specific phrase “means” to avoid the requirements of means-plus-
function claiming under Section 112(6).
Additional Intellectual Property (IP) Protection Beyond Patents
Although patent owners are trying hard to keep pace with latest developments pertaining to
software patents, it is an effective strategy to employ holistic approach for protecting IP in case
of software and mobile applications without relying 100% on patent protection.
1. Protection of user interface (UI) and user experience (UX) by way of design patents. For
example, in Apple v. Samsung patent dispute, Apple’s lawsuit relied heavily upon design
patent protection as Apple alleged that Samsung infringed a number of patents, including
a design patent (U.S. Patent No. D627,790 or the ‘D790 Patent) that protected the look
of Apple’s iOS user interface on an iPhone.
2. Copyright protection for API or action layer, which allows the outside world to
communicate with the software. In Oracle v. Google dispute, it was confirmed that APIs
can be protected by copyright law. This lawsuit related to Java APIs.

3. Trade secret protection for all confidential and proprietary information by way of
executing NDAs (non-disclosure or confidentiality agreements), employment
agreements, vendor contracts, IP Ownership (Assignment) Agreements, and the like.
How to Patent: Cost for Filing International Patents
The cost of applying international patents will depend on many parameters. The first
important consideration is whether the patent applicant is an individual or filing international
patent as business entity. The cost and fee structure of PCT before WIPO is almost four times the
individual fees for the business entity.
Another very important factor is selection of international searching authority (ISA) by the
patent applicant. If you have already filed and applied for patent for your invention in home
country you can file a complete patent application with patent claims as international patent
before WIPO, Geneva. Filing a PCT patent application will cost approximately $1500-USD 2500
depending upon the patent applicant status and selection of international searching authority
(ISA). The PCT international patent provides the inventor with the legal right to
enter international patent application in other countries under national phase for example in
India: National Phase Patent Filling in India. So filing international patent in individual capacity
can save cost for the international patent application.
Patent Research Attorney for Protecting Business Methods
Business method patent attorney will assist you understand how to protect business method by
combining it with software application. A business method patent attorney is a technology
lawyer & patent attorney manages the intellectual property practice at the law firm by focusing
on strategic patent prosecution, drafting enforceable patent claims, writing local and international
patent applications, patent counselling, patent portfolio management, and patent litigation, in the
field of computer engineering, communications, and software technologies.
The patent projects begin by conducting patent prior art search, analysing patent eligibility by
performing patentability analysis, drafting of the patent application, filing of parent patent
application, filing PCT applications under International Phase and National Phase, responding to
objections raised by patent offices, conducting patent hearings and drafting legal agreements and
contracts in the business industry.

Computer Hardware and Software Inventions
Computer related Inventions (CRIs) Protection by filing Patents
Computer Hardware and Software Inventions can be patented subject to certain
conditions. Among all intellectual property (IP) services in India, patent filing in India is most
sought after especially in the case of technologies and innovations pertaining to computer
hardware, software and other computer related inventions (CRIs). As per Indian Patent Office,
patents are filed in India for innovations involving multiple aspects, such as, computers,
computer systems, computer networks, computer related inventions (CRIs), computer hardware
and software inventions, data processing systems, data processing methods, information
technology, database creation, database processing, database management, software, functions,
computer programs, firmware, embedded systems, technical effects and technical advancements.
After performing patent search and analyzing patent search results related to computer hardware
and software inventions, it can be seen that most patents filed with patent claims defining
computer hardware and software inventions can be categorized into method claims or process
claims, apparatus or system claims, computer readable medium claims, or patent claims that are
drafted to define a computer program product.
Indian Patent Office Procedure
What is a patent?
Patent is a legal right granted by government for an invention. The patent rights are granted to
inventors and applicants for 20 years from the date of the filing of first patent application. The
right granted to patent owners is a negative right, which implies that the patent owner has the
exclusive right to prevent patent infringement, i.e. to stop third parties from making, using,
selling, offering for sale and/or importing any product or technology protected by the claims of
the patent.
What are patent claims?
A patent application includes multiple elements, and patent claims form the heart of the patent
invention as legal protection is granted for features included in the patent claims. Generally,
patent claims are drafted by experienced patent attorney to describe the invention being

protected. To ensure that patents are registered after passing the legal eligibility test of
patentability, patent attorneys ensure that the claims are drafted in a manner such as to describe
an invention that is new, useful and non-obvious in view of the “prior art”, wherein prior art
refers to all the public knowledge and inventions that existed before the filing date of the patent
application.
What does a patent protect?
A patent protects the functionality of an invention, which is extremely crucial in case of
technology solutions embodied over Internet by way of handheld devices, such as, smartphones
and tablets. In case of mobile app patents, execution of novel applications across the
communication network can be protected by way of patents by focusing on a combination of
software and hardware implemented aspects of the invention, which are written in the requisite
details in the patent description along with a strong set of patent claims drafted thoroughly by the
patent lawyer.
Why are patents important for technology companies?
Patents form a valuable component of a company’s intangible assets and investors consider
patents as true strength of innovative technology companies. Patents signify that companies have
strong and defensible business model that cannot be easily replicated by the competitors. A
proactive and well formulated patent strategy results in robust investment prospects for early
stage technology companies and tech startups.
Patent Examination Request in India
After filing a patent in India for computer related inventions (CRIs), computer hardware, and
computer software, the provisions of Indian Patents Act requires the patent applicant to file a
request for patent examination, following which the patent will be examined by the Indian Patent
Office. The request for patent examination in India can be filed via Form 18 under e-filing mode
or physical filing mode. The official fee to file Form 18 for patent examination request under
patent e-filing mode is INR 4000, INR 10,000 and INR 20,000 for a natural person (individual
patent applicant), a small entity and a legal entity respectively. For physical filing mode, official
fee to file examination request vide Form 18 with the Indian patent office, the official fee is INR
4400, INR 11,000 and INR 22,000 respectively.

Patent Examination Procedure in India
After filing of patent examination request for patent applications relating to computer hardware,
computer software and computer related inventions (CRIs), computer hardware and software
inventions, the patent office examines the patent claims for patent eligibility or patentability,
including novelty, inventive step (non-obviousness), and industrial application.
Non-Patentable Subject Matter in India
Section 3 of Indian Patents Act
In addition, the patent examiner also examines the patent claims under the subject matter of non-
patentable inventions, specifically section 3(k) of the Indian Patents Act, wherein business
methods and software per se are not patentable under the Indian patent laws. This implies that
source code of software cannot be patented in India, and the patent laws only allow innovations
satisfying the criteria of patentability to be registered as patents in India.
Software Patents in India – Best Practices
Software patent attorneys in India having expertise in patent searching, patent drafting and patent
filing generally follow best practices for handling computer related patent matters, and
computer hardware and software inventions in India. Patent lawyers and patent law firms in
India handle all stages of patent process efficiently, including patent filing and registration, PCT
National Phase Application Filing, and Patent Prosecution before the Indian patent office.
The following 5 steps can be followed in India to obtain and register patents in five steps:
1. Conduct a patent prior art search to see if the invention has potential to withstand the test of
patent eligibility.
2. Draft a strong patent application with comprehensive and enforceable patent claims
3. File patent application in India, PCT international phase patent application with WIPO and
PCT National Phase Application in multiple countries.
4. Track patent examination process and understand objections raised by the patent examiner
while issuing patent examination report, or first examination report (FER).
5. Respond to objections properly and ensure timely compliance to proceed the patent towards
registration stage and obtain patent registration certificate from the Indian patent office.

What is a business method patent?
Role of business method patent attorney
In the recent technology scenario, business method patents is a buzz word. Although, the word
“business method patents” is not defined but in normal day use “business method patents” relates
to a patent relating to a method of doing business. Examples for any kind of business method
patent will include DATA PROCESSING SYSTEMS OR METHODS, SPECIALLY
ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL,
SUPERVISORY OR FORECASTING PURPOSES; SYSTEMS OR METHODS SPECIALLY
ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL,
SUPERVISORY OR FORECASTING PURPOSES, NOT OTHERWISE PROVIDED FOR.
Business Method Patents: IPC G06Q
Most business method patents fall under IPC Class G06Q. The Patent Offices worldwide use IPC
patent classification to classify patents that claim a system or apparatus and corresponding
methods for performing data processing operations uniquely designed for processing data
between servers, & handheld devices.
- IPC G06Q 10/00 - Administration; Management
- G06Q 20/00 - Payment architectures, schemes or protocols (apparatus for performing or
posting payment transactions
- G06Q 30/00 - Commerce, e.g. shopping or e-commerce
- G06Q 40/00 - Finance; Insurance; Tax strategies; Processing of corporate or income
taxes
- G06Q 50/00 - Systems or methods specially adapted for a specific business sector, e.g.
utilities or tourism
- G06Q 90/00 - Systems or methods specially adapted for administrative, commercial,
financial, managerial, supervisory or forecasting purposes, not involving significant data
processing

Is Your Business Method Invention Patent Worthy?
Over the years, the Patent Office have made very clear that a business method can be patented if
it meets the standard requirements for patentability. The patentee of a business method patent
can patent the business method if it is original, useful, and not obvious.
Examples of Business Method Patents drafted by business method patent attorney
Business method patents relates to a way of doing business which generates revenue for the
company and at the same time provides user experience via user interface of the handheld
device. Some recent examples of business method patents are:
United States Patent 9514462 granted to Google for content purchasing on a computing
device. In one implementation, a computer-implemented method includes receiving, at a
computing device and from a computer server system, digital content that is for sale and that is
received without having yet been purchased by a user of the computing device; storing the digital
content locally on the computing device in a manner that prohibits user access to the digital
content; after storing the digital content: receiving user input that indicates the user is purchasing
at least a portion of the stored digital content; and in response to the received user input, storing
information that indicates the user purchased the portion of the digital content and providing the
user with access to the purchased portion of the digital content; and in response to detecting that
the computing device is communicatively connected to the computer server system over a
network, providing the stored information to the computer server system.
United States Patent 8856922 granted to Facebook for management of reports related to imposter
accounts in a social network system. In use, imposter account reports received by a social
networking system are put into a report management process that routes the reports into other
handling processes based upon the comparison of the probability of fraud in an alleged imposter
account versus the probability of fraud in an alleged authentic account. The account determined
to be most probably fraudulent is enrolled in an account verification process. In the account
verification process, the account-holder is asked to verify their identity automatically. If the
automatic verification fails to verify the identity of the account-holder, a manual process for
verification is initiated.

Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing
Technology, Intellectual Property & Corporate Laws. He is reachable
at rd@patentbusinesslawyer.com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost,
SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard,
Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital
News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech)
Regularly invited to speak at international & national platforms (conferences, TV channels,
seminars, corporate trainings, government workshops) on technology, patents, business strategy,
legal developments, leadership & management
Working closely with patent attorneys along with international law firms with significant
experience with lawyers in Asia Pacific providing services to clients in US and Europe.
Flagship services include international patent and trademark filings, patent services in
India and global patent consulting services.
Law office of Rahul Dev is a niche technology and research based law firm focusing on next
generation business and legal issues faced in India and outside India during international
business and cross-border technology transactions. We assist our clients in close collaboration
with our associates and counsels within India and outside by providing custom engagement
models to address our client’s needs.
Practice areas include drafting and filing patent applications, patent prior art searches, patent
prosecution, patent filing in India, PCT national phase entry in India, PCT international
applications with WIPO, freedom to operate searches, patentability analysis and patent strategy
to create a valuable patent portfolio.
Patent attorney Rahul Dev works with clients providing expert legal services in the field of
innovative pharmaceutical products, branded drugs, generic drugs, molecular biology,
immunology, cell biology, regenerative medicine including ESCs, iPSCs, pSCs, diagnostics,
therapeutics, theranostics, drug delivery systems, host-vector systems, high throughput
screening, bioinformatics, diagnostic imaging, ancillary services (PET, CT, MRI, ultrasound,

greenlight, lithotripsy, radiation therapy, cyber-knife, nuclear camera, clinical lab, pathology,
physical therapy and dispensing prescriptions).
Patent attorney and technology lawyer Rahul Dev works closely with USPTO licensed patent
attorneys to assist clients with patent reexaminations, patent prosecution, drafting USPTO office
action responses, patent infringement litigation, patent claim mapping and patent licensing. For
international patent filings, we have an established network of global patent attorneys to provide
reliable and cost effective services to our clients.

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