THE NATIONAL LAW INSTITUTE UNIVERSITY, BHOPAL

Intellectual property in cyberspace

PROJECT ASSIGNMENT
On

Software Protection in Intellectual Property Law: Issues and

Challenges

Submitted by
ARCHI CHOUHAN
2022LLM13
LLM
2nd Semester

Submitted to
Mr Vijay Kumar Singh

Contents
Chapter I.....................................................................................................................................4
Introduction............................................................................................................................4
Literature review....................................................................................................................5
Statement of Problem.............................................................................................................7
Hypothesis..............................................................................................................................7
Research Questions................................................................................................................7
Research Objective.................................................................................................................7
Research Methodology...........................................................................................................7
Scope and Limitation.............................................................................................................8
Chapter II: Current IPR Framework and Challenges faced in Software Protection..................9
Introduction............................................................................................................................9
Software Protection under copyright law...............................................................................9
Software Protection under Patent Law.................................................................................10
Software Protection under Trade Secret...............................................................................11
Conclusion............................................................................................................................12
Chapter III: Dual Protection for Software?..............................................................................12
Introduction..........................................................................................................................12
Copyright Protection v Patent Protection.............................................................................12
Possible Solution..................................................................................................................13
Conclusion................................................................................................................................15
Bibliography.............................................................................................................................16
 Software Protection in Intellectual Property Law: Issues and
Challenges
Chapter I
Introduction
Software have become essential component of daily lives, nearly every task that previously
occupied individuals time has been cut down to minimal due to technological development. A
software is basically a set of intangible instructions which directs the system for performance
of a specific work or achieve a specific result. 1 Given the significance and effectiveness
of the software, it is now necessary to ascertain the Software's possible protections. The
fundamental objective of a computer programme is to make the whole mechanism smooth,
thus it is essential to appropriately ascertain the value of the innovation and safeguard such
computer programmes in the owner’s name.

Creators of software have consistently lobbied for grant of appropriate protection with respect
to their intellectual property. The fundamentals of the computer programme sector are linked
with intellectual property rights including patent, copyright, trademark, etc. All of these rights
do grant protection to software but in distinct manner. It is the patent and copyright regime
that safeguards the technology of software, while trademark protects the name and symbol
related to computer programme. With India developing its software industry at a fast pace,
the computer programme industry may become comparatively complex. The software
companies will be required to protect their work at all cost.

Software in India is protected under both Copyright and Patent legislations. While the former
protects “expression of idea in literal form along with the overall structure of the
programme,”2 the latter protects not only the idea concerned but also the functional elements
attached to it. To obtain a copyright for software, creator has to prove the source and object
code’s originality.3 However, to get a patent for the same, applicant has to take help of means
as well as function involved that is hardware limitation.

1
Deli Yang, ‘Software Protection: Copyrightability vs Patentability?’ (2012) 17 Journal of Intellectual Property
Rights <https://nopr.niscpr.res.in/bitstream/123456789/13722/1/JIPR%2017%282%29%20160-164.pdf>
accessed 18 March 2023.
2
‘IP Protection of Software in India – Patent or Copyright?’ (S.S.Rana, 19 July 2019)
<https://ssrana.in/articles/ip-protection-of-software-in-india-patent-or-copyright/> accessed 19 March 2023.
3
Ibid.
Literature review
Abhijeet Kumar, ‘IP Protection to Software: Conflict between Indian Provision and
Practice’ Journal of Intellectual Property Rights4

The author states that a custom-made policy strictly for the protection of software which also
proves beneficial to the industry as a whole may prove best as a solution, considering the
socio-economic environment of the state. Furthermore, the author argues that India needs to
amend Computer related Inventions (“CRI”) to make software patentable. The article also
argues in favour of adopting transformative test for software patentability.

Deli Yang, ‘Software Protection: Copyrightability vs Patentability?’ Journal of Intellectual

Property Rights5

In this article, the author examines the precautionary evolvement of software protection and
argues for possible solution for the same. The article puts forth the argument of World
Intellectual Property Organisation to take a clear stand on the form of protection given to
software rather than leaving it on nations to decide. Moreover, it suggests that owners should
be able to establish open-source software where patent owners can bundle certain computer
programmes for future growth through cross-licensing contracts.

Shabib-Ahmed Shaikh and B R Londhe, ‘Intricacies of Software Protection: A Techno-

Legal Review’ Journal of Intellectual Property Rights6

The article compares all forms of intellectual protection that could be granted to software. It
argues that copyright only gives limited protection whereas patent strongest protections
comparatively. Prohibition on patenting software will not only harm businesses but also
increase level of uncertainty in the intellectual property regime.

4
Abhijeet Kumar, ‘IP Protection to Software: Conflict between Indian Provision and Practice’ (2017) 22 Journal
of Intellectual Property Rights <https://nopr.niscpr.res.in/bitstream/123456789/43409/1/JIPR
%2022%285%29%20247-256.pdf> accessed 20 March 2023.
5
Deli Yang (n 1).
6
Shabib-Ahmed Shaikh and B R Londhe, ‘Intricacies of Software Protection: A Techno-Legal Review’ (2016)
21 Journal of Intellectual Property Rights <https://nopr.niscpr.res.in/bitstream/123456789/34718/1/JIPR
%2021%283%29%20157-165.pdf> accessed 21 March 2023.
S K Verma, ‘IP Protection of Software and Software Contracts in India: A Legal
Quagmire’ Journal of Intellectual Property Rights7

The author states that the extent of protection given to software is closely interconnected to
issues of infringement of the same. The copyright jurisprudence protects the literal element of
the software concerned; however, they may arise cases of non-literal infringements which are
not yet protected under the legislations. The author also dwells into the ‘per se’ aspect of
software related to patent protection and argues that the same has been left ambiguous.

7
S K Verma, ‘IP Protection of Software and Software Contracts in India: A Legal Quagmire’ Journal of
Intellectual Property Rights (2012) 17 <https://nopr.niscpr.res.in/bitstream/123456789/14456/1/JIPR
%2017%284%29%20284-295.pdf> accessed 20 March 2023.
Statement of Problem
With copyright regime granting extremely limited protection and patent regime not making
software patentable per se, it has become extremely crucial to grant appropriate protection to
software in this ever evolving and complex technology industry.

Hypothesis
A dual protection approach involving both copyright and patent law protection will ensure
maximum benefit accrual to the software owner. The limitations faced by each of these legal
regimes can be overcome by the other.

Research Questions
1. What is the current legal framework with respect to protection of software and
computer programme in India? What challenges do the existing intellectual property
regime faces on software protection?
2. Can a dual protection system which includes patent law help in making software
protection more powerful?

Research Objective
The study aims to analyse the existing jurisprudence on computer programme’s protection
under intellectual property law and compare all forms of such protection provided in Indian
law. Furthermore, the research paper aims to examine present issues and challenges involved
in software protection in the country.

Research Methodology
The research study is descriptive in nature. And adapts the method of analytical legal
research.
Scope and Limitation
The paper is restricted to Indian legal jurisprudence of intellectual property rights. For a
better understanding, examination and consideration of foreign jurisprudence relating to
software protection in jurisdictions which are well developed in the subject matter will be
helpful.
Chapter II: Current IPR Framework and Challenges faced in Software
Protection

Introduction
The relevant market concerning software and computer programmes has been becoming
competitive with passing of every single day, consequently, making software target to various
issues such as piracy. There are three fundamentals of computer programmes which comes
under the purview of protection namely, “object code, source code and documentation.”
Software was not protected under the copyright law until the year 1970. In the landmark case
of “Diamond v Diehr”8 came and turned the history of software protection regime.

Software Protection under copyright law

The Copyright Act9 refers to computer programmes as ‘literary works,’ 10 the same must be in
“written, print or some kind of symbols i.e., it must be able to be recreated visually or audibly
in turn representing the original work.” There is no distinction provided in the legislation
between source and object code; both come under the umbrella of literal elements. However,
notions involving algorithms which are often used in software are not covered under
copyright protection. To be able to get protection as ‘literary work’ under the copyright
regime, the work needs to be original in nature. Emphasis is given more to “labour, skill,
judgement and capital” than the degree of originality. 11In cases concerning software, there is
no need to disclose the source code, software can be registered for copyright without
disclosing the source code.12

Under the Copyright legislation, literal elements of a software are protected, though it is not
clearly established what constitutes those elements. And there could also be non-literal
aspects of the programme which could get infringed. The fundamental issue in cases
involving software has always been respect to the extent of substantial copying including
which portion of software is covered under copyright. 13 There is no specific test relating to
which portion of software should be given protection and to what extent this protection would

8
Diamond v Diehr 450 US 175 (1981).
9
The Copyright Act, 1957 (14 of 1957).
10
The Copyright Act, 1957 (n 9) s 2(o).
11
S K Verma (n 7).
12
Ibid.
13
Microsoft Corporation v Vijay Kaushik (2011) 48 PTC 127 (Del.).
be called appropriate.14 India does not follow the “abstraction test” as laid down in
“Computer Associates v Altai”15 which provided a three level test named, “abstraction-
filtration-comparison” in order to find infringement.

In cases involving computer programme, there is a need to safeguard the notion in producing
non-literal elements because they are comparatively more essential than the expression. 16 The
issue with granting only copyright as protection for software is that the same does not
safeguard industry standard expressions. Moreover, copyright does not protect an expression
if it is functional in accomplishing a necessary task namely, compatibility.

Software Protection under Patent Law

Many scholars argue that copyright only gives a limited protection to software. Additionally,
it does not protect “idea, procedure, process, system, method of operation, concept, principle
or discovery, regardless of the form in which it is described, explained, or embodied in an
otherwise copyrightable work.”17 Whereas patent protection grants comparatively increased
security as the same gets protected through the scope of software and is not dependent on
how it was developed by its competitor.

A patent could be utilised for getting protection for ideas, the functional element of a
computer programme and it also has power to protect against someone who developed the
software by using reverse engineering or by simply copying.18 If Article 27.1 is analysed, one
can reach the conclusion that nations have the freedom to determine the scope of protection
given to computer programme within their respective state jurisdictions. Before the
amendment in 2005, the Patents Act19 did not exclude software from getting protection.
However, after the revised version of section 2(1)(j), such computer programmes were not
allowed to get protection unless they were attached with ha hardware.

14
Seyed Kamran bagheri and Elena Casprini, ‘Intellectual Property Paradoxes in Developing Countries: The
Case of Software IP Protection in Developing Nations’ (2014) 19 Journal of Intellectual Property Rights
<https://nopr.niscpr.res.in/bitstream/123456789/26510/1/JIPR%2019%281%29%2033-42.pdf> accessed 22
March 2023.
15
Computer Associates v Altai (982) Federal Court Second Circuit 693.
16
S K Verma (n 7).
17
Ibid.
18
Susan Finston, ‘India: A Cautionary Tale on the Critical Importance of Intellectual Property Protection’ (2002)
12 Fordham Intellectual Property Media & Entertainment Law Journal <https://heinonline.org/HOL/Page?
handle=hein.journals/frdipm12&div=33&g_sent=1&casa_token=&collection=journals> accessed 23 March
2023.
19
The Patent Act, 1970 (39 of 1970).
According to section 3(k), “a mathematical or business method or a computer programme
per se or algorithms,”20 this provision has become the bone of contention from the very
beginning. And due to the absence of any guidelines, a vague and ambiguous interpretation of
the said section needs judicial reach to analyse adequately what must come under per se and
what must be excluded. The reason behind not protecting software is to actually avoid dual
protection which are available to computer programmes. However, it has to be noted that
copyright only protects the literal elements of the software, and the algorithm element is still
not considered as a subject matter in Patent law.

Software Protection under Trade Secret

A computer programme including “the idea, structure and design specifications” can be
protected through trade secret. It can also sometimes safeguard the functional elements of
computer programme depending upon the nature and distribution pattern of the same. 21 A
computer programme which is distributed only through source code, could get partial
protection by trade secret regime, only if it is kept confidential.

There are limitations to trade secret protection of computer programmes. For example, if
another party applies reverse engineering to the software, there are no remorse available to
the actual owner. Also, if the technology used in such software can be easily copied, it is not
considered fit for trade secret protection. In “Zawels v Edutronics”22where the computer
programme contained a clause that licensee is not allowed to disclose information with
respect to the software concerned, was not covered under third party protection. It may not be
a good idea to protect software through trade secret in India, as the country does not even
have a specified legislation for it. And any protection given under it are only covered through
either contract or tort law. The former protects only those parties which are part of the
contract and does not safeguard against third party.23

20
The Patents Act, 1970 (n 19) s 3(k).
21
K. Gopinath, ‘Computer Software and Intellectual Property Rights: Issues at Stake for Developing Countries’
(1992) 27 (35) Economic and Political Weekly <https://www.jstor.org/stable/4398809> accessed 24 March 2023.
22
Zawels v Edutonics 520 NW 2d 520
23
The Indian Contract Act, 1872 (9 of 1972) s 27.
Conclusion
For any computer programme developer, the biggest obstacle is the ease with which software
can be copied. It not only creates huge financial loss but also result in discouragement in
creating new software, consequently hindering computer programme growth. Where
copyright allows for a stronger protection than trade secret regime for software, it at the same
time is able to grant only limited protection which is less than what a patent protection might
be able to give. However, in India, computer programme is not subject matter of patentability
per se.24 There is a need to revise the intellectual property regime of our country to ensure
proper and adequate protection to software developers.

Chapter III: Dual Protection for Software?

Introduction
India through its amendment in the intellectual property legislations has been able to make
itself compliant with the TRIPS, however, it cannot yet be considered as a total game changer
in the underlying intellectual property regime relating to software protection. To apply
jurisprudence which was developed for industrial age to the today’s ever changing
technological world cannot be seen as viable and intelligent. There is a constant debate on
whether the protection available to software through copyright sufficient or an extra layer of
protection should be applied to computer programme through patent protection.

Copyright Protection v Patent Protection

One set of scholars argue that copyright protection on computer programme could reap
multiple benefits. For this intellectual property right, one does not have to go through the
granting mechanism, as in copyright the owner automatically gets the authorization of
ownership. Additionally, there are fewer chances of infringement in copyright. Also, every
new computer programme acts as a new copyright in itself, thus the owner does not have to
worry about prior art interventions. The deals relating to licenses are also comparatively
simple and cheap for copyright protection. Consequently, such protection will ensure larger

24
The Patents Act, 1970 (n 19) s 3(k).
interest with respect to dissemination of new information that too at cheaper cost; resulting in
enhanced competition and industry growth as well.25

Meanwhile, scholars who are strongly lobby for patent protection in software industry argue
that such protection will be able to incentivise future research and growth of software
industry. Patent protection while granting monopoly to owners also increase competition
through development of innovative computer programmes. It also helps in rapid
commercialisation because of disclosure requirements. One main advantage of patent
protection over copyright protection is that the former allows for functional protection of
software which cannot be achieved through the latter because it only protects the expression
elements.26

At the same time, software patenting has its own issues, such as it comprises of entirely
distinct features than a regular subject matter of patent. Thus, it becomes exceedingly tedious
to analyse both originality and non-obviousness characteristics. There is also an issue with
time period of protection, a patent will be granted 20 years of protection, however, in
software industry products are developed rapidly and older products gets disposed within a
few years only. Hence, making it rather pointless to give a 20-year protection for something
which will become mundane in a couple of years only. Also, software patenting may result in
creating unfair competition because of monopoly. As software industry already is
concentrated to a few numbers of companies, giving them monopoly for such an extended
period might be an obstruction in achieving healthy competition in the market. 27 Moreover,
computer programmes can be easily infringed, as there might be confusion regarding the
extent to which the new programme is genuinely original.

Possible Solution
Software has become an integral part of people’s every day life, due to which it has become
extremely important for nations to come up with a way to incorporate a harmonised solution
for its protection. The Computer Related Invention Guidelines of 2016 is a huge
disappointment as it adds a restriction to section 3(k). 28 Through its application “the
examiner can refuse to grant patent, if invention is solely based on software and also requires

25
Deli Yang (n 1).
26
Ibid.
27
Susan Finston (n 18).
28
The Patents Act, 1970 (n 19) s 3(k).
contribution of innovation to be made to hardware, for making it eligible for patentability.” 29
These guidelines will only increase the number of pending cases in Indian Patent Office as
the same will get challenged by interested parties. The CRI needs to provide clarity to the
subject matters allowed for patentability of software.

Dual protection cannot be given to software because it may hinder innovation in the country.
Such protection will concentrate patents in the hands of few which cannot be considered
appropriate for a developing nation like India. Other coders need access to open-source
computer programme in order to better develop software, which is adequately given by
section 3(k).30 Nations instead of granting software patent must give policy encouragement
for such software industry.

Moreover, if nations cannot ‘ban’ software protection then they need to clearly establish the
extent to which computer programme can be patented. Software patent are inter-connected,
allowing owners to establish open-source computer programme where patented computer
programme owners are allowed to bundle specific relevant programmes with one another
may prove beneficial. This may decrease cost relating to protection as well as
commercialisation, enhance scope for future development and research, and help setting a
single standard for software sector.31

29
Guidelines for Examination of Computer-Related Inventions (CRIs) (2017) Office of the Controller General
of Patents, Designs and Trademark <https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/
1_86_1_Revised__Guidelines_for_Examination_of_Computer-related_Inventions_CRI__.pdf> accessed 25
March 2023.
30
The Patents Act, 1970 (n 19) s 3(k).
31
Seyed Kamran bagheri and Elena Casprini (n 14).
 Conclusion
Within a last few decades, the world has seemingly shifted to a knowledge based economy.
And in such commercial environment, intellectual property rights have become important to
ensure societal and technological development. Without the diffusion of intellectual property
knowledge, creation of an innovative system is non-viable. Given the significance and
effectiveness of the software, it is now necessary to ascertain the Software's possible
protections. The fundamental objective of a computer programme is to make the whole
mechanism smooth, thus it is essential to appropriately ascertain the value of the innovation
and safeguard such computer programmes in the owner’s name. With India developing its
software industry at a fast pace, the computer programme industry may become
comparatively complex. The software companies will be required to protect their work at all
cost. And the burden of granting such protection falls on individual states. Thus, it is the need
of the hour to specify extent of software protection in a given intellectual property regime.
 Bibliography

Online Journal/Law review articles

1. Yang D, ‘Software Protection: Copyrightability vs Patentability?’ (2012) 17 Journal of

Intellectual Property Rights
<https://nopr.niscpr.res.in/bitstream/123456789/13722/1/JIPR%2017%282%29%20160-
164.pdf> accessed 18 March 2023
2. Kumar A, ‘IP Protection to Software: Conflict between Indian Provision and Practice’
(2017) 22 Journal of Intellectual Property Rights
<https://nopr.niscpr.res.in/bitstream/123456789/43409/1/JIPR%2022%285%29%20247-
256.pdf> accessed 20 March 2023
3. Shaikh S and Londhe B R, ‘Intricacies of Software Protection: A Techno-Legal Review’
(2016) 21 Journal of Intellectual Property Rights
<https://nopr.niscpr.res.in/bitstream/123456789/34718/1/JIPR%2021%283%29%20157-
165.pdf> accessed 21 March 2023
4. Verma S K, ‘IP Protection of Software and Software Contracts in India: A Legal
Quagmire’ Journal of Intellectual Property Rights (2012) 17
<https://nopr.niscpr.res.in/bitstream/123456789/14456/1/JIPR%2017%284%29%20284-
295.pdf> accessed 20 March 2023
5. Bagheri S K and Casprini E, ‘Intellectual Property Paradoxes in Developing Countries:
The Case of Software IP Protection in Developing Nations’ (2014) 19 Journal of
Intellectual Property Rights
<https://nopr.niscpr.res.in/bitstream/123456789/26510/1/JIPR%2019%281%29%2033-
42.pdf> accessed 22 March 2023
6. Finston S, ‘India: A Cautionary Tale on the Critical Importance of Intellectual Property
Protection’ (2002) 12 Fordham Intellectual Property Media & Entertainment Law Journal
<https://heinonline.org/HOL/Page?handle=hein.journals/frdipm12&div=33&g_sent=1&c
asa_token=&collection=journals> accessed 23 March 2023
7. Gopinath K, ‘Computer Software and Intellectual Property Rights: Issues at Stake for
Developing Countries’ (1992) 27 (35) Economic and Political Weekly
<https://www.jstor.org/stable/4398809> accessed 24 March 2023
 Websites/Blogs

1. ‘IP Protection of Software in India – Patent or Copyright?’ (S.S.Rana, 19 July 2019)

<https://ssrana.in/articles/ip-protection-of-software-in-india-patent-or-copyright/>
accessed 19 March 2023