INTRODUCTION
Much has been written on the importance of Intellectual Property Rights (IPR). Their significance in in reconciling two competing social goods: the private incentive to innovate, and the public interest in wide dissemination and culmination of knowledge, has occupied a central place in modern legal and economic policy. Within the legal landscape, the question of what should be granted protection, how, and to what extent, has evolved as IPR has expanded. Over time, new subject-matters have been brought within protection, the contours of eligibility have been refined, and the balance between exclusivity and access has been repeatedly recalibrated in response to technological change, market structure, and public policy concerns. Questions that once could be treated as settled: what sorts of creations merit legal protection, by what mechanisms, and for how long, now invite renewed scrutiny as digital technologies and networks reshape how innovation is produced and used.
Patents are one of the principal mechanism by which states protect technological innovation. Unlike copyright, which protects expressive forms, or trademarks, which protect source identifiers, a patent confers a time-bound right to exclude others from making, using, selling or, importing a claimed invention. A patent system essentially confers monopoly rights, reasoned on the familiar utilitarian ground. By rewarding inventors with a temporary exclusivity and requiring disclosure of the invention in return, the patent system aims to promote investment in research and the public availability of technical knowledge. However, there are certain well-defined criteria requiring the invention (either, product or a process) to be something novel, involve an inventive step, and be capable of industrial application.
The advent and rapid diffusion of computing technologies, has created an immediate challenge for traditional patent frameworks. Software, broadly understood as computer programs, algorithms, and computer-implemented methods, exhibits a hybrid character – it is at once an expression (source and object code) and a set of functional instruction that produce effects when executed on a machine. This raises two fundamental questions. First, which form of protection (copyright or patent) is more appropriate for different aspects of software? Second, how should law identify the threshold at which software’s functional features cross over from being abstract ideas or mathematical methods (often considered non-patentable) to being technical inventions meriting patent protection?
This paper compares the law and practice in two influential jurisdictions: United States, which has had a long and complex body of case laws and administrative guidance on software patenting, and India, whose statute expressly excludes some computer subject-matter as non-patentable but whose practice has evolved.
Software has become patentable in most jurisdictions in recent years and their numbers has risen rapidly. Given the rise of complex software programmes and growing penetration of algorithm-based mechanism in governance, the need to establish appropriate legal boundaries for its protection is of crucial importance.
SOFTWARE, COPYRIGHT AND PATENT: OVERLAP
Prior to engagement with doctrinal and comparative analysis of software patents, it is pertinent to clarify the conceptual and legal nature of ‘software’, and the legal protections potentially applicable to it.
A. Conceptualising Software and Computer Programs
Despite its economic and technological significance, the term ‘software’ has rarely been defined with precision in concerned statutes. Instead, most legal systems rely on the concept of ‘computer program’. The World Intellectual Property Organisation (WIPO) defines a ‘computer program’ as, “a set of instructions capable, when incorporated in a machine–readable medium, of causing a machine having information-processing capabilities to indicate, perform or achieve a particular function, task or result”.1 A similar definition is found in the Copyright Act, 1957, which defines it as, “a set of instructions expressed in words, codes, schemes or in any other form, including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result”.2 In other words, a computer program is a series of instructions to control processing unit.3 At a functional level, therefore, it consists of a sequence of logical instructions that direct the operation of a computer device. However, unlike traditional mechanical inventions, software is intangible, modular, and infinitely replicable at negligible marginal cost. These features distinguish software from conventional patentable subject-matter and complicate its legal treatment.
Scholars have noted that, software has distinct characteristics among protected intellectual works.4 “Software is a complicated product that has spawned rise to an entirely different kind of industry in where intangibles make up both, the input and the output.5 It is a hybrid artefact, simultaneously embodying creative expression (in form of source code and object code) and functional logic (in form of algorithms, data structures, and process flows). This dual nature has given rise to sustained debate over the appropriate mode of legal protection.
B. Copyright Protection of Software: Scope and Limitations
Historically, copyright law was the first intellectual property regime to be extended to computer programs. This was largely due to the perception that software resembled literary or artistic work a lot more closely. It was thought that computer programs were more like books or compilations of data (literary works) than other technological subject matter.6 Since copyright protects expression of ideas (not the ideas themselves), for software, it meant that copyright protection extended to the literal code (both source and object code) as well as certain non-literal elements such as structure, sequence, and organisation (subject to jurisdictional variation).
Internationally, Article 10(1) of the TRIPS Agreement provides protection of computer programs, in both, source or object code, as literary works under the Berne Convention.7 While this provision effectively provides a baseline copyright protection to software across WTO member-states, copyright protection for software has well-recognised limitations. It does not protect underlying functionality, logic or technical idea embodied in a program. As a result, competitors may lawfully replicate the functional aspects of software so long as they independently write the code and avoid literal copying. This phenomenon, often described as ‘clean-room implementation’, allows circumvention of the copyright protection while achieving nearly identical functional outcomes.
Consequently, while software can, traditionally, be protected as copyright but with the growth of industry and advancement in applications it can also be protected under patent system.8 Software developers increasingly invest significant resources in developing novel computational methods, optimisations, and integration that may be easily replicated. Given the limitations in the scope of protection within copyright framework, patent protection seems as a more prudent alternative.
C. Patent Protection and the Problem of Abstraction
Patent law, in contrast to copyright, protects both functional and technical aspects of an invention. The World Trade Organisation (WTO) defines patent as an exclusive right granted for an invention, whether product or a process that offers a new way of doing something, or a new technical solution to a problem.9
The term ‘software patent’ has no standardised definition yet, so any attempt to define it will rely on individual conjecture.10 In other words, the term lacks a universal meaning. One reason for this is the ubiquitous nature of software; it is used in diverse industries and is not just confined to computers and internet servers. Every type of software consists of multiple elements that may fit into different categories of IP protection.11. The European Patent Office (EPO) uses the term, ‘computer-implemented inventions’, considering it to be more accurate. It describes it as, something in which one or more features are implemented entirely or partially through the use of a computer, computer network other programmable apparatus.12
Beyond definition, the difficulty lies in the longstanding exclusion of abstract ideas, mathematical methods, and algorithms from patent protection. Many software creations are, in essence, algorithmic. If claimed too broadly, they can monopolise fundamental concepts, encroaching public domain – an outcome, that patent law actively seeks to avoid.
This is reflected under Article 27(1) of TRIPS which states that, any invention, whether product or process, in all fields of technology shall be eligible for patent protection, provided it meets other criteria for patentability including, novelty, inventive step, and industrial application.13 It leaves it up to the member states to define what is included in ‘field of technology’. The coexistence of this provision alongside Article 10, which protects literary and artistic works,14 raises dispute on whether software protection should remain confined to copyright protection or they should completely qualify as patentable inventions.
D. Software Patents in the Absence of Uniform Definition: The Core Doctrinal Tension
At the core of this debate surrounding software patents is a fundamental policy dilemma. On one side, denying patent protection to all software risks de-incentivising innovation in this sector where functional advancements or inventions are largely algorithmic. On the other side, overly broad protections to software risks stifling competition enabling rent seeking, and granting exclusive rights over abstract ideas or business practices. Legal responses to this dilemma have been varied. Statutory exclusions, judicially crafted tests, and guidelines have been formulated to distinguish between patent-eligible computer-related inventions from un-patentable abstractions. The nature and strictness of these filters vary significantly across jurisdictions, resulting in divergent outcomes for similarly situated inventions.
It is against this conceptual backdrop that the approaches of the United States and India to the question of patentability of software must be studied. The following sections examine how each jurisdiction has attempted to strike a balance between incentivising software-driven innovation and preserving the public domain from monopolisation.
SOFTWARE PATENTS IN USA
The first software patent was issued in the United States and it is home to one of the largest number of software patents. The question of IP protection to computer software has emerged in parallel with the Digital revolution, particularly, with the invention of integrated circuit. At this stage the question of copyright protection to computers was contentious, and was settled by the Computer Software Copyright Act, 1980 that authorise copyright protection to software.
The legal foundation for patent protection stems from Article I, Section 8, Clause 8 of the U.S. Constitution which empowers the Congress to promote the progress of science and useful arts by granting authors and inventors exclusive rights over their works and discoveries for a limited time period.15 Pursuant to this authority, Section 101 of the title 35 of the U.S. Code stipulates that, subject to the conditions and requirements of the title, anyone who invents or discovers any new and useful process, machine, manufacture, or composition of matter, or improvement thereof, may be granted a patent for it.16 The ‘conditions’ as stated, enlist exceptions to patent eligible subject-matter viz. laws of nature, natural phenomena and abstract ideas. On the surface, Section 101 uses expansive terms, indicating no express exclusion of software or computer programmes. Indeed, early judicial interpretations reflect this expansive approach as well, declaring patent-eligible subject-matter to included anything under the sun that is made by man.17 Additionally, the criteria of ‘process’ as defined under Section 100(b) of the U.S. Patents Act, is often interpreted to be broad enough to incorporate software patent within its ambits.
Nevertheless, judicial interpretation has long recognised implicit, judicially created exceptions to patent eligibility. Laws of nature, natural phenomena, and abstract ideas are excluded from patentability on the grounds that, monopolising such fundamental tools would impede innovation. The central difficulty with software patents arises from the tendency of software claims to implicate abstract ideas, mathematical algorithms, or mental processes – categories traditionally treated with suspicion under patent framework.
A. Early Caution to Software and Algorithms
Prior to the 1970s, it was quite rare for a software patent to be granted, and judicial attitudes were largely sceptical. The traditional view was that patent can only be granted for the application of abstract concept to industrial process, and not abstract ideas by themselves,18 and algorithms used on computers were mere abstract ideas in disguise. Thus, granting patents over them would foreclose future innovation. Naturally, inventions that utilized computer programs were deemed non-patentable.19 In O’Reilly v. Morse20 the court denied claim over use of electromagnetism for printing at a distance, establishing that abstract ideas or general principles cannot be patented even if applied to a specific new technology. The court observed that the abstract claims were so broad that they could act as an impediment to future inventions.
In Gottschalk v. Benson21 the US Supreme Court rejected patent application for a method of converting binary-coded decimal into pure binary numerals using a digital computer, on the grounds that the idea was too abstract, and invention did not qualify as a ‘process’ because it did not result in the transformation of anything to a different state or thing. Similar conclusion was reached in Parker v. Flook22 where the Court denied protection to a method for updating alarm limits in a catalytic conversion process. Although, the claim involved an industrial setting, the Court found that the only novel aspect lay in a mathematical formula, while the remaining steps were conventional. Merely limiting an abstract idea to a particular technological environment was held insufficient to confer patent eligibility. These decisions reinforced the claim that software and algorithms, when claimed in isolation or without substantive technical application, were outside the scope of patentability.
B. The Emergence of “As a Whole” Approach
A significant shift, however, occurred in the case of, Diamond v. Diehr23. In this case, the patent concerned a method for curing synthetic rubber using a computer programme to calculate optimal temperature and timing based on the Arrhenius equation. wherein the court referred to the definition of ‘process’ as, an act, or a series of acts, carried out on the subject-matter to be changed and reduced to a different state or thing. It is just as patentable as is a piece of machinery if it is new and useful. The machinery suitable to perform the process, in itself, may or may not be new or patentable.24 The claimed invention relied on a computer program to calculate the precise heating temperature and time for vulcanisation of rubber by using a known formula. The court observed that taken ‘as a whole’, the claimed invention also included other steps which otherwise would be patentable. Mere presence of mathematical formula or computer program does not render an invention un-patentable. Since, the patent was claimed on the entire technical process involving computer programmes as one component, that resulted in physical transformation of raw rubber into cured product, it was held to be patent-eligible. Diehr thus established that, a statutory subject-matter would not become non-statutory because it includes a mathematical algorithm. This marked the end of categorical exclusion of software and laid the groundwork for further expansion of software patentability.
C. Expansion During the Federal Circuit Era: State Street and Business Methods
In the following decades, The Court of Appeals for the Federal Circuit (CAFC) played a significant role in shaping software patent-eligibility. In the case, In Re Alappat25, the CAFC held that a novel algorithm when used on a computing device to produce ‘useful, concrete and tangible result’ was patentable even if the result was just on a computer screen.
This reasoning was taken further in State Street Bank & Trust Co. v. Signature Financial Group26, where protection was claimed for a computer programmed using a ‘hub-and-spoke’ software for managing mutual funds. Its patentability was challenged on the round that claimed invention was merely a mathematical algorithm, or business method. The CAFCC held that, business methods or software that form useful, concrete and tangible result and has practical application, are patentable. Thus, business method exception was rejected, and use of computer software as business method was held patentable. This decision dramatically lowered the threshold for software and business-method patents, leading to a surge in patent filings and grants in the late 1990s and early 2000s. However, this expansion also attracted criticism for enabling overly broad and abstract patents, particularly in the financial and e-commerce sectors.
D. Retrenchment by the U.S. Supreme Court
In Bilski v. Kappos27, the U.S. Supreme Court was concerned with a claim over a method of hedging risks using fixed bill system. The Court declared the patent invalid, holding that, transformations or manipulations of business risks or other such abstractions cannot meet the test because they are not tangible objects or substances. Mere computer screen result, involving a known economic concept was not sufficient. The Court rejected the Federal Circuit’s view that ‘machine-or-transformation’ test was the sole test for patent eligibility, though, it recognised that it remained a useful analytical tool.
A decisive turning point was Alice Corp. v. CLS Bank (2014). The patent in issue related to a software designed to facilitate exchange of financial obligation between two parties using computer system. The court held that the claim was an abstract idea ineligible for patent protection.
The Court also laid down two-step test to determine patent eligibility of software:
(i) Is the claimed invention directed to a patent-ineligible concept?
(ii) if yes, does the claimed invention include and additional element or combination of elements, sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept itself?28
While it can be argued that distinguishing between claims of patent-eligible invention and claims adding little to patent-ineligible is difficult, the general interpretation of the decision has led to the belief that the Court has virtually made all software ineligible for patent protection.29 The proponents argue that it is a necessary corrective measure to overboard patenting.
E. Later Developments and Evidentiary Nuance
Subsequent decisions have further nuanced the Alice framework. In Intellectual Ventures v. Symantec, Inc30 the court interpreted the Alice case in a manner that would completely restrict grant of software patents. In buySAFE Inc. v. Google Inc31, the Federal Circuit Court invalidated the patent for a computerised surety systems for online transactions stating that, the claim was invalid under section 101. But, if enough extra is included in a claim, it passes muster under section 101. Though, ‘enough extra’ has not been defined. DRR Holdings v. Hotels.com32 is one among few cases where patent was held valid on grounds of it being inventive.
In Berkheimer v. HP Inc.,33 the Federal Circuit held that whether a claim element is ‘well understood, routine and conventional’ can be a question of fact, thereby limiting the automatic invalidation of patents at early procedural stages. This introduced a measure of evidentiary nuance into Section 101 analyses, though uncertainty persists.
Lower courts have continued to invalidate many software patents, particularly those involving financial services, data processing, and business logic. At the same time, patents that clearly improve computer functionality, data security, or network performance have bene more likely to survive eligibility challenges.
In response, the U.S. Patent and Trademark Office (USPTO) issued the 2019 Revised Patent Subject Matter Eligibility Guidance (PEG). The PEG categorises abstract ideas into defined groupings such as, mathematical concepts, methods of organising human creativity, and mental processes, and instructs examiners to assess whether a claim integrates such an idea into a practical application. While the PEG has improved consistency during patent examination, it does not bind courts or the Patent Trial and Appeal Board (PTAB). Consequently, patents granted under the PEG may still face invalidation in post-grant proceedings or litigation.
The Leahy-Smith America Invents Act (AIA) introduced administrative mechanism such as inter-partes review (IPR) and post-grant review (PGR), adjudicated the PTAB. These proceedings have become a central feature of the U.S patent ecosystem, particularly for software patents. PTAB reviews offer a faster and often less expensive avenue to challenge patent validity, and software patents have faced high invalidation rates.34 As a result, the practical value of software patents in the United States today depends not only on eligibility under Section 101 but also on their resilience in post-grant proceedings. This can also potentially increase the quality of patent applications.35
SOFTWARE PATENTS IN INDIA
In India, patents and related aspects are governed by the Patents Act, 1970. As per section 2(m), patent means, a patent for any invention granted under the Act36 and ‘invention’ has been defined as, new product or process that involves an inventive step and is capable of industrial application37 While this definition is technology-neutral, the scope of patentable subject-matter is significantly curtailed by Section 3, which enumerates categories of subject-matters that are not patentable.
Of particular relevance to software patents is Section 3(k), which specifically states that, a mathematical or business method, a computer programme per se, or algorithm38 are not patentable. Unlike the U.S. law, which contains no specific reference to software, the Indian legislation has explicitly excluded computer programs. This textual distinction has shaped the trajectory of software patentability in India, and has often been cited as evidence of a legislative intent to deny patents for software-based inventions. However, the inclusion of the term ‘per se’ added after Patents (Amendment) Act, 2002, has proven decisive. As some scholars have pointed out, it does not allow software patents without hardware applicability.39
A. Legislative Intent, Significance of ‘Per Se’ and Patent Office Guidelines
Parliamentary debates and committee reports surrounding the 2002 amendment indicate that the legislature did not intend to impose a blanked prohibition on all inventions involving computer programs. Rather, the exclusion was designed to prevent monopolisation of abstract software logic, business methods, and algorithms divorced from any technical application. The expression ‘per se’ has generally been understood to mean ‘by itself’ or ‘as such’ or ‘intrinsically’, which shows that it implies something on its own, rather than in connection with other things.40 . In 2011, Controller General of Patents, Designs and Trademarks remarked that, claims directed at ‘computer program products’ are computer programs per se stored in a computer readable medium and as such are not allowable.41 Accordingly, a computer program claimed in isolation, without any technical contribution beyond its code or logic, is excluded from protection. Conversely, a claim that integrates a computer program with a technical system, produces a technical effect, or solves a technical problem may fall outside the exclusion.
Given the lack of definitive judicial guidance in early years, the Indian Patent Office (IPO) has played a significant role in shaping the practical aspects of software patents in the Computer Related Inventions (CRI) Guidelines. The first set of CRI guidelines issued in 2015 marked the first systemic attempt to clarify Section 3(k). It states that,
A computer program, when running on or loaded into a computer, going beyond the normal physical interactions between the software and the hardware on which it is run, and is capable of bringing further technical effect may not be considered as exclusion under these provisions.42
What constitutes ‘further technical effect’ in this context, is left to the judgement of the patent examiner. Fresh guidelines were issued in 2016 which introduced a de facto novel hardware requirement, stating that,
If the contribution lies in the field of computer programme, check whether it is claimed in conjunction with a novel hardware and proceed to other steps to determine patentability with respect to the invention. The computer programme in itself is never patentable. If the contribution lies solely in the computer programme, deny the claim. If the contribution lies in both the computer programme as well as hardware, proceed to other steps of patentability.43
The 2017 CRI Guidelines reversed this approach, explicitly removing the ‘novel hardware’ requirement and emphasising that claims should be assessed based on ‘substance over form’. The Guidelines instructed examiners to examine the underlying contribution of the invention and to focus on whether it demonstrated a technical effect or technical contribution.
A similar evolution continues in judicial decisions as they have yet not come to any definite consensus upon the patentability criteria of software programs.44
B. Judicial Interpretation
Judicial engagement with software patents in India has been limited but influential. Early decisions tended to adopt a cautious approach, often deferring to the statutory exclusion in Section 3(k). In Yahoo Inc. v. Controller of Patents and Rediff.com India Ltd.45, the Intellectual Property Appellate Board (IPAB) rejected a patent application for a method of generating search term associations, holding that the invention was essentially a computer program embodied in software. The Board took a narrow view of technical effect, emphasising that the claimed invention did not transcend software logic.
A more nuanced approach emerged in patent infringement litigation involving telecommunications technology. In Telefonaktiebolaget LM Ericsson v. Intex Technologies46, the court observed that, any invention which has a technical contribution or a technical effect and cannot be considered as just a computer program per se.47 Similar observation was made in Ericsson v. Lava48 that, Section 3(k) excludes abstract concept (such as computer programs and algorithm) but does not bar an invention if it is used in combination with hardware, creating a technical effect. Mere mention of algorithm does not invalidate the entirety of the claim. In Accenture Global Services v. The Asstt. Controller of Patents and Designs49 case the court held that, for a patent, software need not demonstrate a special adoption of hardware to be patentable.
Most significantly, in Ferid Allani v. Union of India50, the court observed that, in today’s digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable.51 The Court held that inventions demonstrating a technical effect or technical contribution are patentable even if they are implemented through software. Importantly, the Court directed patent authorities to assess applications in light of evolving technological realities rather than adhering to outdated formalistic distinctions.
Indian jurisprudence has consistently emphasises the requirement of technical effect or technical contribution, though the precise contours of this requirement remain underdeveloped. Unlike the U.S. Alice framework, India does not employ a structured two-step eligibility test. Instead, patent eligibility assessments rely on a contextual evaluation of the claimed invention’s contribution. Courts have indicated that mere automation of known business processes, implementation of abstract rules, or execution of algorithms on generic computing hardware does not satisfy the technical effect requirement. At the same time, there is judicial recognition that modern hardware-software integration makes it artificial to insist on novel hardware in all cases. This balancing approach seeks to prevent the monopolisation of abstract ideas while leaving room for protection of genuine technological advances.
COMPARATIVE PESPECTIVE ON SOFTWARE PATENT REGIMES
A comprehensive analysis of software patentability in India and the United States reveals significant differences in conceptual development, institutional design, and enforcement mechanisms. While both jurisdictions grapple with the same conceptual difficulty i.e., distinguishing patent-eligible technological innovation from un-patentable abstract ideas, their legal responses reflect divergent legislative choices.
A. Eligibility Tests: Conceptual and Practical Differences
In the United States, patent eligibility is governed by the broadly-worded Section 101 of the Patent Act, 1952 which does not expressly exclude software or computer programs. Instead, limitations to patent eligibility have emerged via judicial interpretations. The Supreme Court has progressively formulated tests to prevent monopolisation over abstract ideas, culminating into two-step test formulated by Alice framework. Under this approach, the courts first assess whether the claim is directed to a patent-ineligible concept such as an abstract idea, and if so, examine whether the claim contains an ‘inventive concept’ that transforms the abstract idea into a patent-eligible application. This model places substantial emphasis on claimdrafting and the manner in which the claimed invention is characterised. Software claims framed as improving computer functionality or solving a technical problem are more likely to survive scrutiny, whereas claims that merely automate economic or organisation practices on generic computers are frequently invalidated. The U.S. approach is therefore functional and effects-oriented, but is also criticised as the line between abstract idea and a patent-eligible application remains difficult to define with precision.
In contrast, India adopts a statute-centric model. Section 3(k) of the Patents Act, 1970 expressly excludes ‘a computer programme per se’ from patentability. At the first glance, this appears to impose a far stricter limitation that the U.S. law. However, the inclusion of the phrase, ‘per se’ introduces interpretive flexibility, allowing patentability where the claimed invention demonstrates a technical effect or technical contribution beyond software alone. While there is no standardised multi-step eligibility test, courts engage with such disputes in a holistic manner. Although, the inquiry shares conceptual similarity with the United States’ emphasis on ‘practical application’, it operates within a framework of explicit statutory exclusion. In sum, while the U.S. system relies heavily on judge-made doctrine to restrict patentability, India embeds the restriction in the statute itself but mitigates its rigidity through interpretive flexibility.
B. Examination Practice
Both jurisdictions exhibit a significant degree of uncertainty at the examination stage, which affects predictability and consistency in patent prosecution. In the U.S., the aftermath of the Alice decision led to a marked increase in Section 101 rejections, particularly for software and business-method patents. To address inconsistency in examination, the USPTO issued the 2019 Revised Patent Eligibility Guidance, which categorises abstract ideas and instructs examiners to assess whether claims integrate such ideas into practical application.52 While the guidance has improved uniformity within the patent office, it does not bind the courts. Consequently, patents granted by the USPTO may still be invalidated in litigation or post-grant review. The Federal Circuit’s decision in Berkheimer v. HP Inc.53 added a further layer of complexity by recognising that whether a claim element is ‘well understood, routine and conventional’ can involve factual questions. While this has prevented automatic invalidation at early stages in some cases, overall uncertainty persists, and outcomes remain highly sensitive to claim drafting and evidentiary context.
In India, examination uncertainty stems primarily from the discretionary application of the CRI guidelines. The concept of ‘technical effect’ is inherently open-ended, and examiners enjoy considerable latitude in determining whether a claimed invention transcends software per se. Although the 2017 CRI Guidelines clarified that novel hardware is not mandatory and emphasised substance over form, their non-binding nature means that outcomes may vary across patent offices and examiners.
Judicial intervention has provided some corrective guidance, particularly in Ferid Allani case, where the Delhi High Court urged authorities to adopt a technologically informed approach – but systematic consistency remains elusive. The abolition of the IPAB and transfer of appellate jurisdiction to High Courts has further implications for doctrinal coherence, as multiple courts now interpret Section 3(k) without a specialised appellate body to harmonise standards.
C. Enforcement, Post-Grant Review and Institutional Design
In the United States, the ‘America Invents Act’ fundamentally altered the enforcement landscape by introducing Patent Trial and Appeal Board (PTAB) proceedings such as inter partes review (IPR) and post-grant review (PGR). These mechanisms provide a relatively fast and cost-effective avenue to challenge patent validity, and software patents have been particularly vulnerable to PTAB scrutiny. High invalidation rates have influenced litigation strategy, licensing negotiations, and patent valuation, effectively subjecting software patents to a second, rigorous filter beyond initial examination. As a result, the practical strength of a U.S. software patent today depends not only on surviving Section 101 challenges but also on withstanding administrative review. This has curtailed the enforcement power of overly broad software patents while preserving protection for inventions with demonstrable technical merit.
India lacks an equivalent administrative review system. Patent validity challenges are pursued through revocation petitions or as counterclaims in infringement suits before High Courts. The absence of a specialised, fast-track post-grant review mechanism means that challenges can be slower and more resource-intensive. At the same time, courts have shown willingness to engage deeply with technical issues, particularly in standard-essential patent disputes involving software-driven telecommunications technologies. Cases such as, Ericsson v. Intex illustrate that Indian courts are prepared to enforce software-implemented patents where they satisfy patentability criteria and where enforcement is balanced against competition law and FRAND obligations.
The scope of software patent protection in the United States has evolved54 via court decisions. In the USA, software developed for one customer and one very specific type of machine has given way to packaged software. In this context, programmes are being used on an ever-growing number of computer.55 This has resulted in the general acceptability and grant of software patents albeit with several tests including machine or transformation test in In Re Bilski case or tangible result test as emphasised in State Street Bank case.
In India, the standards relating to software patents have largely been framed by the guidelines issued by the Patent Office. The concept of ‘technical effect’ and later, novel hardware requirement test, were given via guidelines. Though, the novel hardware requirement has been removed and has given more free-hand to patent examiners. It can be said that the approach by USA has been relatively conducive, India has been restrictive to software patents. Though, with recent developments, it may seem that arguments for and against grant of software patents would find ground in both the jurisdictions.
CONCLUSION
The comparative examination of software patentability across jurisdictions reveals not merely divergent doctrinal rules, but fundamentally different conceptions of innovation, public interest, and the role of intellectual property law in regulating technological change. While all patent regimes grapple with the same foundational question such as, how to incentivise innovation without unduly monopolising abstract ideas, the answers they provide reflect distinct legal traditions, economic priorities, and policy anxieties.
Jurisdictions such as the United States have gradually recalibrated their patent frameworks to accommodate software-related inventions, albeit through carefully constructed doctrinal filters. The U.S. trajectory, marked by judicial interventions such as Alice Corp. v. CLS Bank International, illustrates an ongoing struggle to prevent the enclosure of abstract ideas while preserving space for genuine technological innovation. Despite doctrinal differences, U.S. systems reflect a conditional acceptance of software patents, mediated through judicial gatekeeping rather than outright legislative exclusion.
India, by contrast, represents a deliberate and normatively distinct model. Section 3(k) of the Patents Act, 1970, coupled with evolving Patent Office Guidelines and judicial interpretation, signals a conscious policy choice to resist the expansive patenting of software. Rather than treating software as a marginally acceptable subject matter requiring doctrinal containment, the Indian regime positions software-related inventions as presumptively non-patentable unless they are inseparably linked to novel hardware or demonstrate a tangible technical effect. This approach is not merely doctrinally conservative; it is development-oriented, reflecting concerns about access, competition, domestic technological capacity, and the risk of rent-seeking behaviour by dominant global actors.
The comparative analysis thus, underscores that the debate over software patents is not a binary question of permissibility but a contest over regulatory philosophy. Jurisdictions that permit software patents seek to fine-tune eligibility standards to avoid over-breadth, while India prioritises systemic safeguards against monopolisation at the threshold itself. Neither model is without shortcomings. Over-restrictiveness risks dis-incentivising innovation and foreign investment, while over-permissiveness threatens to stifle downstream creativity, particularly in an industry driven by cumulative and incremental development.
Ultimately, the evolving contours of software patentability reflect a broader truth about intellectual property law: it is not static but responsive, contested, and deeply embedded in socio-economic context. As technologies such as artificial intelligence, machine learning, and algorithmic systems further blur the boundaries between abstract ideas and technical applications, existing patent doctrines will face renewed strain. In this landscape, India’s cautious approach offers an important counter-narrative, one that foregrounds public interest and developmental equity, while comparative experiences from the U.S. provides valuable lessons on doctrinal adaptability. The challenge going forward lies in crafting patent regimes that are technologically informed, normatively balanced, and institutionally equipped to regulate innovation without foreclosing the very creativity they seek to promote.
*****
Footnotes
1. World Intellectual Prop. Org. [WIPO], Model Provisions on the Protection of Computer Software § 1(i), WIPO Pub. No. 814(E) (1978).
2. The Copyright Act, 1957, § 2(ffc), No. 14, Acts of Parliament, 1957 (India).
3. GERALD PETERSON, THE EUROPEAN PATENT SYSTEM: THE LAW AND PRACTICE OF THE EUROPEAN PATENT CONVENTION 418 (Sweet and Maxwell 2001).
4. A. G. Gonzalez, The software patent debate, 1 JOURNAL OF INTELLECTUAL PROPERTY LAW & PRACTICE 196 (2006).
5. Yogesh Suman and V K Gupta, Patenting Issues in Software Industry, 7 JOURNAL OF INTELLECTUAL PROPERTY RIGHTS 516, 517 (2002).
6. Chris de Villiers and Tumelo Tshaya, Software and Business Method Patents, 2 JOUNRAL OF INFORMATION LAW AND TECHNOLOGY 4 (2008).
7. Agreement on Trade-Related Aspects of Intellectual Property Rights art. 10, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994).
8. Ravindra Chingale and S D Rao, Software Patent in India: A Comparative Judicial and Empirical Overview, 2 JOURNAL OF INTELLECTUAL PROPERTY RIGHTS 210 (2015).
9. Patents, WORLD INTELLECTUAL PROPERTY ORGANISATION, https://www.wipo.int/patents/en/ (last visited Dec. 2, 2025).
10. Meer Jayakumar and Harsha Vardhan, Software Patents in the Indian Framework: An Economic of Problems and Prospects, 20 NATIONAL LAW SCHOOL OF INDIA REVIEW 220 (2008).
11. DW Carstens, Legal Protection of Computer Software Patents, Copyrights, and Trade Secrets, 20 JOURNAL OF CONTEMPORARY LAW 13 (1994).
12. Patents for Software? Law and Practice at the European Patent Office, EUROPEAN PATENT OFFICE, (2012) http://www.epo.org/service-support/publications/issues/patents-for-software.html (last visited Dec. 11 2025).
13. Agreement on Trade-Related Aspects of Intellectual Property Rights art. 27, Apr. 15, 1994, 1869 U.N.T.S. 299.
14. Berne Convention for the Protection of Literary and Artistic Works art. 2, Sept. 9, 1886, 1161 U.N.T.S. 3.
15. U.S. Const. art. I, § 8, cl. 8.
16. 35 U.S.C. § 101.
17. Diamond v. Chakrabarty, 447 U.S. 303 (1980).
18. James Bessen, An Empirical Look at Software Patents, 16 JOURNAL OF ECONOMICS AND MANAGEMENT STRATEGY 157 (2007).
19. Sheryl Elizabeth Abraham, Software patents in the United States: A Balanced approach, 25 COMPUTER LAW AND SECURITY REVIEW 554, 555 (2009).
20. O’Reilly v. Morse, 56 U.S. (15 How.) 62 (1854).
21. Gottschalk v. Benson, 409 U.S. 63, 72 (1972).
22. Parker v. Flook, 437 U.S. 584 (1978).
23. Diamond v. Diehr, 450 U.S. 175 (1981).
24. Cochrane v. Deener, 94 U.S. 780 (1876).
25. In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994).
26. State St. Bank & Tr. Co. v. Signature Fin. Grp., Inc., 149 F.3d 1368 (Fed. Cir. 1998).
27. In re Bilski, 545 F.3d 943 (Fed. Cir. 2008).
28. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014).
29. Patent eligibility after Alice, WORLD IP REVIEW (2017), https://www.worldipreview.com/jurisdiction-reports/patent-eligibility-after-alice (last visited Dec. 12, 2025).
30. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016).
31. buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014).
32. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
33. Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
34. Stephen Schreiner, RECENT STATISTICS SHOW PTAB INVALIDATION RATES CONTINUE TO CLIMB, IPWATCHDOG (2024), https://ipwatchdog.com/2024/06/25/recent-statistics-show-ptab-invalidation-rates-continue-climb/ (last visited Dec. 2, 2025).
35. Arianna Martinelli and Julia Mazzei, Death squad or quality improvement? The impact of introducting post-grant review on U.S. patent quality (LEM Working Paper Series, No. 2022/34, 2022).
36. The Patents Act, 1970, § 2(m) (India).
37. Id. § 2(i)(j).
38. Id. at § 3(k).
39. Software Patents in India: Can we get software patents in India?, INTEPAT IP SERVICES (2025), https://www.intepat.com/blog/patent/software-patent-in-india (last visited Dec. 15, 2025).
40. IPO, Guidelines for Examination of Computer Related Inventions (CRIs) (2017) 8.
41. Guido Noto La Diega, Patents on Computer-Related Inventions in India, 4 INTELLECTUAL PROPERTY RIGHTS 3 (2016).
42. OFFICE OF THE CONTROLLER GEN. OF PATS., DESIGNS AND TRADE MARKS, GUIDELINES FOR EXAMINATION OF COMPUTER RELATED INVENTIONS (CRI) (2015) (India).
43. OFFICE OF THE CONTROLLER GEN. OF PATS., DESIGNS AND TRADE MARKS, REVISED GUIDELINES FOR EXAMINATION OF COMPUTER RELATED (CRI) (2016) (India).
44. Noyonika Borah, Software Patents in India – The Missing Link, 20 SUPREMO AMICUS 421, 422 (2020).
45. Yahoo Inc. v. Assistant Controller of Patents & Designs, (2012) 49 PTC 502 (IPAB) (India).
46. Telefonaktiebolaget LM Ericsson v. Intex Technologies (India) Ltd., (2015) 219 D.L.T. 65 (Del.) (India).
47. Id.
48. Telefonaktiebolaget LM Ericsson v. Lava International Ltd., 2016 SCC OnLine Del 2978 (India).
49. Accenture Global Services GmbH v. Assistant Controller of Patents and Designs, (2012) SCC OnLine IPAB 192 (India).
50. Ferid Allani v. Union of India, 2019 SCC OnLine Del 11867 (India).
51. Id.
52. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019).
53. Berkheimer, 881 F.3d 1360.
54. Yu-Kai Lin, The Scope of Software Patent Protection in the Digital Age: Evidence from Alice, 35 INFORMS 657 (2023).
55. Isabelle Liotard, Software and business method patents: Case law evolution and market strategies, DIME CONFERENCE 3 (2006).