Advancement in current technologies and innovation are essential for a company offering digital products or services even for their survival. We have seen number of examples where an innovative product or a service makes start up do a blockbuster entry into the business, however, the fuzz soon dies down in case the company is not able to protect its innovation or keep innovating. Admittedly, much of their 'out of the box' innovation and its implementation lies in the software. Most of the Tech-based Startups are the ones preparing Apps and/or other soft-solutions, enterprise management systems, fuzzy logic based devices, etc. Therefore, it is imperative for such companies to seek protection over their innovation so as to retain the exclusivity, or may we say USP, of their products/services.

With "innovation", we automatically tag "patents" as the mode of protection. Patents have proven to be an effective tool for setting exclusivity for an Innovator, permitting him to exclude others from utilizing his invention without the Innovator's consent. However, with companies that offer digital products or services, the path towards patenting their innovation is not that smooth or direct.

A software by itself or computer program per se is not considered as an invention as per Section 3(k) of the Patents Act, 1970. Section 3(k) stipulates that a mathematical or business method or a computer programe per se or algorithm are not invention within the meaning of this Act.

Therefore, a digital service or digital product provider needs to be extra careful while considering their innovation(s) for patenting in India. Does that mean that no invention in the field of digital or software technology can be patented in India? The answer, thankfully, is no. There can be invention in the field of digital or software technology that can be patented if they fulfill certain conditions.

Computer Programe - Upon close reading of Section 3(k), one can see that Section 3(k) prohibits "a computer programe per se" from being patented. Which means that Section 3(k) prohibition is not applicable in case the applicant can show that the subject matter of the invention cannot be regarded as a computer programe per se. To exemplify, an App providing fitness solutions/regime to its users by a certain innovative process along with few hardware components that enable the said process or define the essential parameters of the said innovative fitness process for the User, may stand a good change in overcoming objections under Section 3(k). The Applicant can argue that the innovative process, although implemented through a software, is enabled by hardware components, therefore, the subject matter of the claimed invention is not merely a software or computer programe per se and same shall be considered as outside the purview of Section 3(k) of the Act.

Accordingly, to avoid the "computer program per se" exclusion, the applicant needs to show that the software or a programe that is claimed is enabled by certain hardware component(s) that actually results in said software achieving a technical advance over the known art/technologies.

Coming to other two exclusions of Section 3(k), that is, an invention being "a mathematical" or "business method" are not considered as inventions, hence, are not patentable under the Act. A company offering digital services needs to be careful of these exclusions, as digital product would not be a "method", and hence, products are primarily outside the purview of said exclusions. While offering services, the applicant company shall be cautious in drafting of claims to ensure that the same do not project only a mathematical or business process. On case-to-case basis and considering the technology involved or the problem to be solved by the invention, the claims should be constructed not to place undue emphasis on the mathematical equations or a business model/theory. Such safeguards right at the time of drafting saves much of time and effort in defending the invention during prosecution of the application for patent.

Based on the above discussions, it can be said that comparatively it is difficult to draft and register patents for companies offering digital products or services, however, given that a technical advance in the invention primarily lies in the working of software and hardware in-tandem, the claims can be drafted to tactfully steer clear of the patentability exceptions as discussed above.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.