Kirti BalasubramanianCounsel
Bhavik ShuklaAssociate
Key Developments
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Computer programs that demonstrate technical contribution are eligible for patent protection
The Delhi High Court has held that computer-related inventions that involve a technical contribution or effect are patentable, if it can be demonstrated that such inventions solve a technical problem, enhance a technical process, or display a technical benefit. The Court observed that while a computer program per se is non-patentable under Section 3(k) of the Indian Patents Act, 1970 (Patents Act), patent examiners should focus on the underlying technical contribution of a computer-related invention rather than solely focusing on the language in which the claims are worded to determine the patentability of a computer program. This order is critical as it clarifies that there is no blanket bar on computer-related inventions in India and that for truly innovative applications (which display a technical benefit, enhance a technical process, or solve a technical problem), computer programs may be considered patentable.
In this case, the Patent Office had rejected Microsoft’s patent application for the invention titled ‘Methods and Systems for Authentication of a User for Sub-Locations of a Network Location’ on the ground that the applied invention was a computer program per se. The Court held that Microsoft’s computer program involved a technical contribution since it improved the security of the computer system and the entire computer network by authenticating the user access locations within a network location. The Court also stated that such patent applications should be considered in light of the Guidelines for Examination of Computer Related Inventions (CRIs), 2017. Accordingly, the Court set aside the order of the Patent Office and remanded the matter for a fresh assessment of the novelty and inventive step of the applied technology.
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Criteria for patent-ineligible ‘business methods’ clarified; computer programs producing a technical effect would be patentable
The Delhi High Court, in a first-of-its-kind order, held that a business method could constitute one or more of the following:
- an invention for the conduct or administration of a particular business; or
- an invention over a manner of doing business; or
- an invention relating to a method of sale or purchase of goods or services; or
- a computer program producing a technical effect.
The Court held that a computer program producing a technical effect would be patentable, but the other three business methods are not patentable.
As part of the decision, the Court urged the government to revisit the provision excluding patentability of business methods, to ensure that inventions in emerging technologies relating to computing and digital technologies are not excluded from patentability.
In the present case, the Court was evaluating if OpenTV’s patent application titled ‘System and method to provide gift media’, which related to a network architecture and method implemented to enable the exchange of interactive media content, would constitute a business method. Based on the provisions of the Patents Act, the Court observed that the bar on patentability of a business method is absolute in nature, and not qualified by the term ‘per se’ as applicable to a computer program (under Section 3(k) of the Patents Act). Considering the specification of the present application, the Court held that the appellant had adapted known technologies and components to enable giving a gift, i.e., tangible or intangible media, without human intervention, which would constitute a business method. Accordingly, the Court dismissed the appeal on the ground that the subject invention is not patentable subject matter.
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Appeal from a trademark rectification order by a high court will lie before its appellate bench
The Delhi High Court has clarified that appeals from the orders passed by a single judge in trademark rectification petitions filed before it can be entertained by the division bench of the court. This clarification is critical as the Trade Marks Act, 1999 (Trade Marks Act), as amended pursuant to the abolishment of the Intellectual Property Appellate Board, did not set out the mechanism for appeals where the original rectification petition was filed before a high court.
In the matter of Resilient Innovations Private Limited v Phonepe Private Limited & Another, the appellant filed an appeal against the dismissal of its rectification petitions by the single judge of the Court. The division bench of the Delhi High Court observed that the Letters Patent of the Court, from which it derives its powers, allows for intra-court appeals. Further, the Court observed that in the absence of a specific bar on intra-court appeals under the Trade Marks Act, the Letters Patent of the Court will be applicable, and the appeal would be maintainable.
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Author remains the owner of a screenplay, even when commissioned by a producer
The Delhi High Court has held that, in the absence of an agreement to the contrary, the author of a film screenplay continues to remain the owner of such screenplay, even when such author has been commissioned to write the screenplay by a producer (RDB and Company HUF v HarperCollins Publishers India Private Limited). This ruling clarifies that though a producer is the first owner of the cinematograph film as a whole, it is not the first owner of the independent underlying works incorporated in the cinematograph film, in the absence of an express written assignment (this is also set out in the proviso to Section 17 of the Copyright Act, 1957). Therefore, producers must obtain appropriate assignments from authors in writing for each and every independent work being incorporated into a cinematograph film.
In the present case, Satyajit Ray (deceased) was commissioned by R.D. Bansal, the producer of the film, to author the screenplay of the film, which was subsequently commercially produced and released as ‘Nayak’. Subsequently, in the year 2018, the screenplay of ‘Nayak’ was novelised by the defendant without any authorisation from the plaintiff. However, the defendant had obtained the consent of the heirs of Satyajit Ray, the screenplay’s author. The plaintiff filed a copyright infringement suit against the defendant claiming that it owns the copyrights in the screenplay of the film. The Court observed that the author of a screenplay is the owner of the copyright in such screenplay. Further, the Court observed that:
- the screenplay was not authored under a contract of service/employment; and
- there was no contract assigning copyrights in the screenplay to the plaintiff.
Therefore, the Court held that on the demise of Satyajit Ray, the copyright in the screenplay vested in his heir, and the assignment of the right to novelise the screenplay granted by such heir in favour of the defendant was valid in law.
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Authors of underlying works of a sound recording are entitled to independently seek royalties for the use and communication of the sound recording
In a significant development, a single judge of the Bombay High Court has held that the Copyright (Amendment) Act of 2012 (2012 Amendment) has created a substantive right in favour of authors of underlying musical and literary works, i.e., lyrics and musical compositions, to receive royalties even when such underlying works are communicated as part of sound recordings (Indian Performing Rights Society Limited (IPRS) v Rajasthan Patrika Private Limited & Another). This means that every business that publishes sound recordings and obtains licenses to do so from copyright collecting companies such as Phonographic Performance Limited, Novex, or a registered society such as Recorded Music Performance Limited, will also be required to obtain an independent license from IPRS (to the extent the authors of underlying works in these sound recordings are members of IPRS).
While a similar assessment is simultaneously being undertaken by the division bench of the Delhi High Court, the aforesaid judgment clarifies that the 2012 Amendment introduces a new substantive right in favour of authors of underlying works, which must be respected even when such works are indirectly utilised by way of the use of sound recordings (the present case pertains to use and communication of sound recordings by radio broadcasters to the public).
To arrive at this conclusion, the Court specifically placed reliance on the Statement of Objects, Report of the Parliamentary Standing Committee, and the language of the provisos introduced by the 2012 Amendment, to observe that these amendments were enacted with the intention to protect and guarantee the rights of authors of underlying works. In view of this, the Court restrained radio broadcasters from communicating the sound recordings, whose underlying works had authors that are members of IPRS, in the absence of any license from IPRS for the same. It is pertinent to note here that the Court did not consider the matter from the view that ‘sound recordings’ per se are independent works of copyrights, and whether such indirect use of the underlying works (by way of the communication of the sound recordings to the public), can be considered as utilisation of the underlying works (musical, literary, etc.).
