(Under Art. 32 of the Constitution of El-Mango) · 2019-08-09 · 1. The Petitioner has the locus...

IN THE HON’BLE SUPREME COURT

OF EL-MANGO

(Under Art. 32 of the Constitution of El-Mango)

W.P. No. ……………………of 2011

……………………………………………………………………….

………………………………………………………………………..

SBTS………………………………………………………Petitioner

v.

STATE OF EL-MANGO…………….………………..Respondent

………………………………………………………………………....

………………………………………………………………………....

On submission to the Supreme Court of El-Mango

Memorial on behalf of the Petitioner

COUNSEL FOR THE PETITIONER

1 MEMORIAL ON BEHALF OF THE PETITIONER

TABLE OF CONTENTS

LIST OF ABBREVIATIONS…………………………………………….2

INDEX OF AUTHORITIES……………………………………………...4

TABLE OF CASES……………………………………………………….6

STATEMENT OF JURISDICTION…………………………………….9

STATEMENT OF FACTS……………………………………………….10

STATEMENT OF ISSUES……………………………………………….11

SUMMARY OF ARGUMENTS…………………………………………12

ARGUMENTS ADVANCED……………………………………………..13

PRAYER…………………………………………………………………….29


LIST OF ABBREVIATIONS

& And

AIR All India Reporter

Art. Article

DLT Delhi Law Times

Ed. Edition

et al et alia

etc. et cetera

i.e. id est

Ors. Others

p. Page

pp. Pages

para Paragraph

RPC Reports of Patent, Design and Trademarks

Cases

Sec. Section

SC Supreme Court

SCC Supreme Court Cases


SCR Supreme Court Reporter

Supp. Supplement

v. Versus


INDEX OF AUTHORITIES

LIST OF BOOKS REFERRED:

1. Pandey, Dr. J. N., The Constitutional Law of India, 45th Ed., Central Law Agency, 2008

2. Basu Durga Das, Constitutional Remedies and Writs, 3rd Ed. Kamala Law House,

Kolkata, 2009

3. Taraporevala, V. J., Law of Intellectual Property

4. Shukla, V. N., Constitution of India, 11th Ed., Eastern Book Company, Lucknow

5. Vashishth Vikass, Law and Practice of Intellectual Property in India, Bharat Law

House

6. Jain Rajiv, et al, Law of Patents

7. Bakshi P. M., The Constitution of India, Universal Law Publishing Co. Pvt Ltd., 2011

8. Salmond, Jurisprudence, 11th Ed.

9. Stair, Ralph M, et al, (2003), Principles of Information Systems, 6th Ed., Thomson

Learning, Inc.

10. Silberschatz Abraham (1994), Operating System Concepts, 4th Ed., Addison-Wesley

LIST OF LAW LEXICONS REFFERED:

1. Aiyar Ramanatha, P., Concise Law Dictionary, LexisNexis Buttersworth Wadhwa

Nagpur, 2009

2. Wharton’s Law Lexicon

LIST OF ARTICLES REFERRED:

1. Commentary on the Paris Convention for the Protection of Industrial Property, Reiss

Seth, M.

2. Intellectual Property Rights: Patents and Copyright, NASSCOM

3. In India, A High-Tech Outpost for U.S. Patents, Deccan herald

4. The Cost of Obtaining a Patent in the U.S., Quinn Gene

LIST OF JOURNALS:

1. All India Reporter (AIR)

2. Supreme Court Reporter (SCR)

3. Supreme Court Cases (SCC)


4. The GNLU Law Review, Vol. 3, Oct. 2010

LIST OF WEBSITES REFERRED:

1. http://www.nasscom.in/ (visited on 2011-8-23)

2. http://ipwatchdog.com/ (visited on 2011-8-23)

LIST OF STATUTES REFERRED:

1. Constitution of India

2. The Patents Act, 1970

3. The Patents (Amendment) Ordinance, 2004

4. The Copyrights Act, 1957

5. The Companies Act, 1956

6. General Clauses Act, 1897

7. U.S. Patent Act, 1952

8. U.K. Patent Act, 1977

LIST OF INTERNATIONAL TREATIES, CONVENTIONS AND AGREEMENTS

REFERRED:

1. The Paris Convention on Protection of Industrial Property

2. Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS)

3. Universal Declaration on Human Rights (UDHR)

4. International Covenant on Civil and Political Rights (ICCPR)

TABLE OF CASES

http://www.nasscom.in/Nasscom/templates/NormalPage.aspx?id=22708

http://ipwatchdog.com/


S.NO. NAME OF THE CASE CITATION

1. Jasbhai v. Roshan AIR 1976 SC 578

2. Bishwanath Prasad v. H.M. Industries AIR 1982 SC 1444, 1447-8

3. Smiths Detection Asia-Pacific Pte. Ltd v.

Electronic Corporation of India and Ors.

(2004) 2 ALD 878

4. Thomson-Csf and Ors. v. National Airport

Authority

AIR (1993) Delhi 252

5. Anwar v. State of J&K (1971) 3 SCC 104

6. Louis De Raedt v. Union of India (1991) 3 SCC 554

7. Chairman Railway Board v. Chandrima Das (2000) 2 SCC 465

8. Jabbar v. State of U.P. AIR 1966 All 590

9. Shiv Prasad v. Punjab State AIR 1957 Punj 150, 151

10. Charanjit Lal Chowdhary v. Union of India AIR 1951 SC 41

11. Romesh Thappar v. State of Madras 1950 SCR 594, 597

12. Daryao v. State of U.P. (1962) 1 SCR 574, 582

13. K.G.Khosla and Company v. The Union of India 7 (1971) DLT 429

14. Kedar Nath Bajoria v. State of W.B. AIR 1953 SC 404, 406

15. D.S.Nakara v. Union of India (1983) 1 SCC 305


16. State of W.B. v. Anwar Ali Sarkar AIR 1952 SC 75

17. Motor General Traders v. State of A.P. (1984) 1 SCC 222, 229

18. Prabodh Verma v. State of U.P. (1984) 4 SCC 251

19. Raj Pal Sharma v. State of Haryana 1985 Supp SCC 72,75

20. E.P. Royappa v. State of TamilNadu

AIR 1974 SC 555

21. Maneka Gandhi v. Union of India (1978) 1 SCC 248, 284

22. Ramana Dayaram Shetty v. International Airport

Authority

(1979) 3 SCC 498

23. Asahi, Kanei Kogyo 1991 RPC 485, 523 (H.L.)

24. Jupe v. Pratt (1837) 1 WPC 144

25. Chamberlain v. Mayor of Bradford 1903 (20) RPC 673, 684

(H.L.)

26. Biogen v. Medeva 1997 RPC 1, 52

27. Ray Prakash v. Mangal Ram AIR 1978 Delhi 1

28. Farbwork Hoechst Attiongesellschaft Vosmals

Meister Leucius & Bruning Corporation etc. v.

Unicham Laboratories and Other

AIR 1969 Bom 255

29. Lallubhai Chakabhai Jariwala v. Chimanlal

Chunilal and Co.

AIR 1936 Bom 99

30. Canadian General Electric Co. Ltd. v. Fada

Radio Ltd.

AIR 1930 P.C. 1


31. Chiron Corp. v. Murex Diagnostic 1996 FSR 153, 178

32. In Re Dane K. Fisher and Raghunath Lalgudi (September 2005), 04-1965

(Serial No. 09/619, 643)

33. Brenner v. Mason 38 US 519, at 534-35

34. Bajaj Auto Ltd. v. TVS Motor Company Ltd. (2008) IILJ 726 Mad

35. Molnlycke A.B. v. Proctor and Gamble 1994 RRPC 49, 113

36. Hoechst Celanese Corp. v. BP Chemicals 1997 FSR 547, 562

37. Polar Industries v. Jay Engineering 1991 IPLR 150

38. Windsurfing International v. Tabur Marine 1985 RPC 59, 77

STATEMENT OF JURISDICTION


The Petitioner has approached this Hon’ble Court seeking its writ jurisdiction under Article 32

of the Constitution of El-Mango

STATEMENT OF FACTS


Blueland Technology Solution (BTS) is a leading Software and Technology giant in the world

having its registered corporate office in USA. El-Mango is a state located in Asia and has

adopted the same legal structure as that of Republic of India. BTS developed an innovative

software (a computer program) to help medical practitioners in their profession. This was the

first of its kind as commented by few of the doctors who Beta-Tested the same. Market Survey

of BTS showed that the sales of this software would help the development of Medicine industry

and also BTS’ profit shall go up by 10%.

BTS, to secure monopoly Rights, filed Patent Application for the said software in USA and

successfully got the same. BTS appoints SBTS, a company situated in El-Mango as its Agent

to file for Patent in El-Mango. Patent was denied in El-Mango for the reason that the Patents

Act, 1970 explicitly prevented patenting of software or computer program. SBTS’ appeal

before the Intellectual Property Appellate Board (IPAB) was also dismissed for the same

reason. Similar Software patents were rejected for several other companies in El-Mango.

Hence BTS files a Writ Petition under Art.32 before Hon’ble Supreme Court.

STATEMENT OF ISSUES


1. The Petitioner has the locus standi to file the present Writ Petition under Art. 32


2. Denial of software Patenting is a violation of Article 14 of the Constitution and

consequently section 3 of the Patents Act is unconstitutional

3. Software is patentable under the Patents Act, 1970

SUMMARY OF ARGUMENTS


1. The Petitioner has the locus standi to file the present Writ Petition under Art. 32


It is humbly submitted before this Hon’ble Court that the Petitioner in the present

instance is BTS filing a writ through its assignee, SBTS. This Petitioner has locus standi

to file the same because Article 14 is guaranteed to all persons and the writ is filed on

the basis of this provision of law. Also, the International Instruments signed by El-

Mango warrant National Treatment of Individuals.


consequently section 3 of the Patents Act is unconstitutional

It is humbly submitted that section 3 makes discrimination by prohibiting patenting of

software and this is a violation of Art. 14 as the section has not stood the test of

reasonable classification.


It is humbly submitted before this Hon’ble Court that when section 3 becomes

unconstitutional, software can be patented in the State of El-Mango. As the software

developed by BTS is accordance with the definition of invention, it can be patented.

ARGUMENTS ADVANCED


1. The Petitioner has the locus standi to file the present Writ Petition under Art. 32 of the

Constitution of El-Mango

Locus standi means a place of standing, a right of appearance in a Court of Justice. It

signifies the right to bring an action and to be heard.1 In the present instance, the writ petition

is filed by BTS through SBTS. It is humbly submitted that the Petitioner has the locus standi

to approach this Hon’ble Court under Art. 32 of the Constitution because the Fundamental

Right alleged to be violated in the present instance is Article 14 and the Petitioner has the

right to claim this right.

1.1 SBTS is an assignee within the meaning of the term in the Patents Act, 1970

According to Sec 2 (ab) of the Patents Act, 1970, an assignee includes an assignee

of the assignee and the legal representative of a deceased assignee and references to the

assignee of any person include references to the assignee of the legal representative or

assignee of that person. This is not an exhaustive definition. Assignment is the act of

transferring to another all or part of one's property, interest or rights. An "assignee" is

a person to whom an assignment is made. Assignee in fact is one to whom an

assignment has been made in fact by the party having the right; and assignee in law is

one in whom the law vests the right, as an executor or administrator. Assignee means a

person appointed by another to do any act or perform any business; also a person who

takes some right, title or interest in things by an assignment from an assignor.2 SBTS is

a company situated in El-Mango and is an assignee of BTS to file for Patent in El-

Mango on behalf of Blueland Technology Solution (BTS).

1.2 BTS can claim the right to equality guaranteed under Art. 14

SBTS is a foreign company within the meaning of sec. 591 (1) (a) of the Companies

Act, 1956. It was appointed by BTS as its assignee to file for patent in respect of a

software. SBTS filed for Patent which was denied because the Patents Act, 1970

explicitly prevented patenting of software. SBTS’ appeal before the Intellectual

Property Appellate Board (IPAB) was also dismissed. So, BTS has filed the present

writ petition through its assignee, SBTS. It is humbly submitted before this Hon’ble

1Aiyar Ramanatha, P., Concise Law Dictionary, LexisNexis Buttersworth Wadhwa Nagpur, 2009 2Wharton's Law Lexicon


Court that BTS can claim the right to equality through SBTS. SBTS is a company

recognised by the Companies Act, 1956 as a foreign company.

A person can approach the Supreme Court under Art. 32 of the Constitution only

when a fundamental right that that person has a claim to, is violated.3 Article 14 of the

Constitution states thus: The State shall not deny to any person equality before the law

or the equal protection of the laws within the territory of El-Mango. Article 14 can be

availed of by the Petitioner because of various international agreements and also the

existing laws in El-Mango relating to Patents. Also, a wholesome reading of this Article

permits the petitioner to avail of this right.

1.2.1 The provision to apply for patent implies a right to Art. 14

A patent is an exclusive privilege granted to an inventor to exploit and market

the fruit of his innovative technical or scientific talent for a period of twenty years

computed from the date of the filing of the application and during that term prevents

others from copying his invention, advertently or inadvertently.4 As was observed

by the Supreme Court in Bishwanath Prasad v. H.M. Industries,5 the object of

patent law is to encourage scientific research, new technology and industrial

progress. Grant of an exclusive privilege to own, use or sell the method or the

product patented for a limited period, stimulates new inventions of commercial

utility. In keeping with global trends, El-Mango has become parties to various

conventions and treaties and has undertaken to act in compliance of the same. Some

of them are

i. The Paris Convention for the Protection of Industrial Property

ii. Agreement on Trade-Related Aspects of Intellectual Property Rights

(TRIPS)

These International instruments promote Unionism, i.e., the Nationals of every

Member Country can file for Patent in all other Member Countries.6

3Jasbhai v. Roshan, AIR 1976 SC 578 4Taraporevala, V.J., Law of Intellectual Property 5AIR 1982 SC 1444, 1447-8 6Art. 2 of the Paris Convention, Art. 3 of the TRIPS Agreement


Also, the statutory law applicable to Patents in El-Mango is the Patents Act,

1970. This Act also contains provisions for the filing of an application by a person

who is not a national of El-Mango. Section 6 of the Patents Act, 1970 gives an

assignee of a first and true inventor the right to apply for patent on behalf of the

inventor. Therefore, it is evident that El-Mango in keeping in mind its International

obligations and also inorder to amend and consolidate the law relating to Patents

and also to grant an exclusive privilege of monopoly to an inventor to stimulate and

promote research and investigation whether he is a national of El-Mango or not has

decided to give the right to any person to file an application for patent in El-Mango.

The State has granted this right in order to protect the inventions of a person.

Therefore, it is evident that if the object of protection of Intellectual Property

especially inventions and patents is to be accomplished, the right to equality needs

to be assured to the Applicants and their assignees whether they are nationals or

not. In fact Art. 1 of the Paris Convention states that the countries to which the

Convention applies constitute a Union for the Protection of Industrial Property. In

order for protection of industrial property effectively patents need to be granted and

the law and administrative procedures governing the granting of patents should not

be vitiated by arbitrariness and therefore Art. 14 should be extended in its

application to applicants claiming IPR protection.

Therefore, it is humbly submitted that the nature of right to intellectual property

existing in El-Mango warrants the application of Art. 14 to every person, be it

nationals or non-nationals and their assignees. Consequently, the Petitioner should

be allowed to claim the right to equality under Art. 14 of the Constitution of El-

Mango.

1.2.2 Equality of treatment is to be accorded to every person having an interest within

the territory of El-Mango

Article 7 of the Universal Declaration of Human Rights declares the right to

equality in the lines of Art. 14 from which Art. 14 could have been inspired. Article

14 of the Constitution states: The State shall not deny to any person equality before

the law or the equal protection of the laws within the territory of El-Mango. The

first expression denotes that no particular individual would be granted special

treatment while the second expression is a pledge of protection or guarantee of equal


laws.7 A wholesome reading of Art. 14 shows that what the Article means is that

there should be equality of treatment of all persons within the territory of El-Mango,

i.e. every person, within the territory of El-Mango should have the same rights as

granted to persons on similar footing. The words “within the territory of El-Mango”

must be taken to mean that every person who has a right in El-Mango granted by

the State should be assured of the protection of Art.14.

In the case, Smiths Detection Asia-Pacific Pte. Ltd v. Electronic Corporation

of India and Ors.,8 it has been held by the Court that Art. 14 is available to all

persons and therefore the Petitioner foreign Company can avail of this right and

question the government on actions done by it in violation of this right. It has also

been held in Thomson-Csf and Ors. v. National Airport Authority9 that when Art.

14 can be granted to National Companies, it should also be provided to foreign

companies. The Court in this regard also relied on Article 14 of the ICCPR which

provides that every person should be treated equally before Courts and Tribunals.

Also, from a perusal of the cases Anwar v. State of J&K,10 Louis De Raedt v. Union

of India,11 Chairman Railway Board v. Chandrima Das,12 the Supreme Court has

recognised that certain rights under Part III are available only to citizens while

certain others by using the words ‘persons’ are available to everyone, be it citizen

or non-citizen. Therefore, it is evident that the Law and the Courts guarantee Art.

14 to foreigner persons.

According to this Article 14, the right to equality can be claimed by ‘any

person’. According to Salmond, legal persons are beings real or imaginary who for

the purposes of legal reasoning are treated in greater or less degree in the same way

as human beings. In legal theory, a person is any being whom the law regards as

capable of rights or duties.13 According to Section 3 (42) of the General Clauses

Act, 1897, a person shall include any company or association or body of individuals,

7Shukla, V.N., Constitution of India, Eastern Book Company, 11th Ed., 2010 8(2004) 2 ALD 878 9AIR (1993) Delhi 252 10(1971) 3 SCC 104 11(1991) 3 SCC 554 12(2000) 2 SCC 465 13Salmond, Jurisprudence, 11th Ed., pp. 350-351


whether incorporated or not. It has been held in the case Jabbar v. State of U.P.14,

that the provision in the General Clauses Act shows the intention of the legislature

to treat artificial persons as persons. Also, the Punjab and Haryana High Court, in the

case of Shiv Prasad v. Punjab State15 held that the term person used in Art. 14 does

not include state but however includes natural persons and artificial persons like

corporations and joint stock companies. As has been held in Charanjit Lal Chowdhary

v. Union of India,16 juristic person is entitled to the right to equality. SBTS is a foreign

Company within the meaning of the Companies Act, 1956, sec. 591 and registered

thereunder. So Art. 14 can be claimed by the Petitioner since SBTS is a company

situated in El-Mango.

To enforce this right under Art. 14, Art. 32 guarantees the right to constitutional

remedies. In order to protect the right to equality, the Petitioner can approach this

Hon’ble Court under Art. 32 and has the locus standi to do the same. As expressed

by Patanjali Sastri, J., “The Supreme Court should regard itself as the protector and

guarantor of fundamental rights and should declare that it cannot, consistently with

the responsibility laid upon it, refuse to entertain applications seeking protection

against infringements of such rights17 The Court should regard it as a solemn duty

to protect the fundamental rights zealously and vigilantly.18” From this, it is evident

that the Court in order to guarantee effectively the right to apply for patent to the

Petitioner must guarantee the right to equality of the Petitioner and must declare

that the Petitioner has the locus standi to file the writ petition and allow the same.

1.2.3 The principle of National Treatment applies

According to Article 2 of the Paris Convention on Protection of Industrial

Property, Nationals of any country of the Union shall, as regards the protection of

industrial property, enjoy in all the other countries of the Union the advantages that

their respective laws now grant, or may hereafter grant, to nationals. Consequently,

they shall have the same protection as the latter, and the same legal remedy against

any infringement of their rights, provided that the conditions and formalities

14 AIR 1966 All 590 15AIR 1957 Punj 150, 151 16 AIR 1951 SC 41 17Romesh Thappar v. State of Madras, 1950 SCR 594, 597 18Daryao v. State of U.P., (1962) 1 SCR 574, 582


imposed upon nationals are complied with. However, no requirement as to

domicile or establishment in the country where protection is claimed may be

imposed upon nationals of countries of the Union for the enjoyment of any

industrial property rights. This provision means that the same quality and quantity

of treatment be granted to every person, be he a national or foreigner.

National treatment undertaking assures foreigners, both individuals and

juristic entities, not only that their patents and marks will be protected in the foreign

nation, but also that they will not be disadvantaged vis-à-vis nationals in terms of

the scope and quality of intellectual property protection that will be accorded them

in the foreign nation.19 The underlying object of this Article is the effective

protection of the Intellectual Property Rights of foreigners as that afforded to

nationals. Therefore, since a national can approach the SC in case of violation of

right to equality in granting patent, the Petitioner also should be allowed to

approach the SC against arbitrariness. This is because if the goal of the principle of

national treatment (i.e. the effective protection of the IPR of a person within a

member state) is to be achieved then the Petitioner should be declared to have locus

standi before this Hon’ble Court.


consequently Sec. 3 of the Patents Act, 1970 is unconstitutional

19Commentary on the Paris Convention for the Protection of Industrial Property, Reiss Seth, M.


Article 14 of the Constitution states thus: The State shall not deny to any person equality

before the law or the equal protection of the laws within the territory of El-Mango. However,

denial of software patenting is a violation of this right to equality and is arbitrary.

The phrase ‘equality before law’ implies the absence of any special privilege in favour

of any individual while the phrase ‘equal protection of the laws’ is a pledge of protection or

guarantee of equal laws.20 It contains a Constitutional guarantee of equality before the "law"

and the prevalence of the rule of law in all situations. It prohibits the State from

discriminating through legislative, administrative executive action.21 The equal protection

of laws guaranteed by the Constitution does not prohibit the Parliament from making

legislative classification22 but the classification must be valid and reasonable.23

2.1 Section 3 of the Patents Act does not pass the test of reasonable classification and

doctrine of arbitrariness

Any legislation needs to be tested with the reasonable classification test to declare

that it is not class legislation. The test24 is as under:

i. The classification must be founded on an intelligible differentia which

distinguishes persons or things that are grouped together from others left out of the

group

ii. The differentia must have a rational relation to the object sought to be

achieved by the statute in question

In E.P. Royappa v. State of TamilNadu,25 the Court held that equality is the

antithesis of arbitrariness and where an act is arbitrary, it is implicit in it that it is

unequal both according to political logic and constitutional law and is therefore

violative of Art. 14. Also, in Maneka Gandhi v. Union of India,26 it was held by the

Court that Article 14 strikes at arbitrariness in State action and ensures fairness and

equality of treatment. This was reiterated by the Court in R.D.Shetty v. Airport

20Shukla, V.N., Constitution of India, Eastern Book Company, 11th Ed., 2010 , p. 45 21K.G.Khosla and Company v. The Union of India, 7 (1971) DLT 429 22 Kedar Nath Bajoria v. State of W.B., AIR 1953 SC 404, 406 23D.S.Nakara v. Union of India, (1983) 1 SCC 305 24State of W.B. v. Anwar Ali Sarkar, AIR 1952 SC 75; Motor General Traders v. State of A.P., (1984) 1 SCC

222, 229; Prabodh Verma v. State of U.P., (1984) 4 SCC 251; Raj Pal Sharma v. State of Haryana, 1985 Supp

SCC 72,75 25AIR 1974 SC 555 26(1978) 1 SCC 248


Authority.27 There was an assimilation of the doctrine of classification and the

doctrine of arbitrariness in the case D.S.Nakara v. Union of India.28

The Patents Act, 1970, under Section 3 (k) says that software program per se is

not patentable as an invention. There is therefore a distinction where certain inventions

under sec. 3 are expressly denied patent. Therefore, it can be stated that section 3 of

the Patents Act, 1970 which does not allow computer software to be patented should

be tested to see if it is a reasonable classification and also it should be proved that it is

not arbitrary. Otherwise, it would be unconstitutional and violative of Article 14 of

the Constitution.

The object of the Patent law was explained by Lord Oliver in Asahi, Kanei

Kogyo29 as encouraging improvements and innovation by conferring the benefit of

a monopoly for a defined period of monopoly on the inventor so that he may make

known his invention to the public. Another purpose is that companies will be willing

to take risk and expend much money and efforts in the development of scientific

and legal research. The Supreme Court has reiterated this object of Patent Law in

the case, Bishwanath Prasad v. H.M.Industries.30 In leaving software programs

out of the purview of patent law, the object of the legislation of promoting research

is not fulfilled.

It is true that Patents cannot be granted to every discovery or invention and

therefore every country’s laws have provisions to exclude certain types of

inventions.31 This does not by itself constitute inequality. However, by keeping

software programs and certain other discoveries and inventions out of the purview

of patents, inequality arises.

27(1979) 3 SCC 489 28(1983) 1 SCC 305 291991 RPC 485, 523 (H.L.) 30AIR 1982 SC 1444, 1447-8 31Sec. 1 (2) of the U.K. Patent Act, 1977; Sec. 3 of the Patents Act, 1970; Art. 52 of the European Patent

Convention, Sec. 101 of the U.S. Patent Act, 1952


The reasons for keeping certain things out of the purview of patentable subject

matter are as follows:

i. Mere ideas and discoveries are not patentable32

ii. Patent cannot be claimed for an idea or principle as stifles further

research33

Software program on the other hand does not stifle research. A computer

program is a sequence of instructions written to perform a specified task with

a computer.34 A computer requires programs to function, typically executing the

program's instructions in a central processor.35 There can be innovation in preparing

a computer program. Thus, a basic software can be unpatentable. However, when a

software program as in the present instance, which contributes to the software field

and also has utility in other fields cannot and should not be denied patent. By

granting software patenting to such software programs, there can be no stifling of

research but rather a promotion of research in the software field.

Section 3 (k) of the Patents Act, 1970 expressly states that a mathematical or

business method or a computer program per se or algorithms is not patentable. In

fact, in keeping with the requirements of the TRIPS agreement, an Ordinance was

passed in 2004 to amend this subsection. The amendment read a computer

programme per se other than its technical application to industry or a combination

with hardware was not patentable. However, this amendment was not included in the

Patents (Amendment) Act, 2005. So the law still stands that computer programme

per se is not patentable. This means that the protection guaranteed to other inventions

by the Patent Act, 1970 is not guaranteed to software programs. This is a violation

of equality.

Applying the test of reasonable classification, it is evident that there is no

intelligible differentia in keeping software programs out of the purview of

inventions. This is because keeping software programs out of the purview of

inventions does not result in protection of intellectual property, does not promote

32 Jupe v. Pratt, (1837) 1 WPC 144; Chamberlain v. Mayor of Bradford, 1903 (20) RPC 673, 684 (H.L.) 33Biogen v. Medeva, 1997 RPC 1, 52 34Stair, Ralph M, et al, (2003, Principles of Information Systems, 6th Ed., Thomson Learning, Inc., pp. 132 35 Silberschatz Abraham (1994), Operating System Concepts, 4th Ed., Addison-Wesley, pp. 58.


research in the software field and in turn does not encourage the object of the Act.

Therefore, it is humbly submitted that there is no intelligible differentia in this

classification. Also, the differentia does not have a nexus to the object of the act and

promote it but rather is against the very object of the Act.

Also, the other provisions of section 3 of the Patents Act, 1970 violate the

object of the Act and do not enhance it. Subsection (i) keeps out any process for the

medicinal, surgical, curative, prophylactic or other treatment of human beings or any

process for a similar treatment of animals to render them free of disease or to increase

their economic value or that of their products is again violative of Art. 14 and

inconsistent with the object of the Patents Act. This is because if there was for

example, a new medicine invented, then that would not be recognised for granting

of patent as an invention, thereby stifling research in that field. It is thus evident that

Section 3 needs revamping and in its present form is a violation of Art. 14 of the

Constitution.

Therefore, it is humbly submitted that the Patents Act, 1970 is vitiated by

arbitrariness and is unconstitutional.

2.2 Necessity of Patenting of software

Currently, in the State of El-mango, the statute which offers protection for

software programmes is the Copyrights Act, 1957. It provides that computer

programme means 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.36 This Act provides protection

for expression of the ideas and not the ideas itself, which is guaranteed by

Patenting.37 Section 52 of the Copyrights Act, 1957 allows the making of copies or

adaptation of a computer programme by a lawful possessor. Also subsection (ab),

(ac) and (ad) of the same section give wide privileges for a lawful possessor in

respect of the programme. Under the Patents Act, 1970, according to section 48, the

patentee has the exclusive right to prevent third parties, who do not have his consent,

36Section 2 (ffc) 37Intellectual Property Rights: Patents and Copyright,

http://www.nasscom.in/Nasscom/templates/NormalPage.aspx?id=22708 (visited on 2011-8-23)



from the act of making, using, offering for sale, selling or importing for those

purposes that product in India. Also, section 46 (2) says that a patent can be granted

in respect of one invention only. Ignoring patents can lead to disastrous results.

Xerox reported losses of US$ 500 million by not patenting its GUI technology;

Visicalc lost out when it did not protect its spreadsheet technology.38 All this goes

to prove that the protection offered by a patent is better than that which offered by a

copyright. This protection is being denied to software programmes by Section 3 of

the Patents Act, 1970 and this constitutes a ground of inequality, for if an inventor

invents anything other than a computer programme, the Law extends protection

while in case of a computer programme, the same protection is not extended by the

State.

2.3 The denial of software patenting in the State of El-Mango constitutes a loss of

revenue for the State

It is humbly submitted before this Hon’ble Court that over the years many

multinational companies have been established in India (a State whose legal structure

has been adopted by the State of El-Mango) and there have been many innovative

software programmes that have been produced by Indian companies and also that these

software have been patented in U.S.A.39 American Companies like Cisco Systems,

General Electric, I.B.M., Intel, Motorola and Texas Instruments, whose various Indian

units have filed over 1000 applications with U.S. Patent and Trademarks Office. This

condition also exists in El-Mango. The minimum cost for filing a patent application for

computer implemented method is around $17,000, the minimum government filing fees

itself being $500.40 Patent royalty can be a good source of revenue. While IBM

licensing net revenues touch around US$ 1.4 billion a year, Texas Instruments gains

US$ 800 million a year from licensing. Digital Equipment got US$ 1.5 billion from

Intel for dropping its patent infringement suit.41 Thus, keeping software programs out

38ibid 39In India, A High-Tech Outpost for U.S. Patents, Deccan herald,

http://www.nasscom.in/Nasscom/templates/NormalPage.aspx?id=1355 (visited on 2011-8-23) 40The Cost of Obtaining a Patent in the U.S., Quinn Gene, http://ipwatchdog.com/2011/01/28/the-cost-of-

obtaining-patent/id=14668/ (visited on 2011-8-23) 41Supra 37


http://ipwatchdog.com/2011/01/28/the-cost-of-obtaining-patent/id=14668/

http://ipwatchdog.com/2011/01/28/the-cost-of-obtaining-patent/id=14668/


of the purview of Patents apart from being a violation of Article 14 also constitutes a

loss of revenue to the state.



It is humbly submitted before this Hon’ble Court that software is patentable under

the Patents Act, 1970 if not for section 3 (k). This is because only sec. 3(k) prevents the

patenting of software while the rest of the provisions can be interpreted to allow

patenting of software.

3.1 A computer programme falls within the meaning of an invention

In the case, Ray Prakash v. Mangal Ram,42 the Court held that invention means

to find or discover that which has not been found or discovered before, and it is not

necessary that the invention should be anything complicated. According to 2(j) of the

Patents Act, an invention means a new product or process involving an inventive step

and capable of industrial application. There are three key ingredients43 in this section

and if these are present, patent can be granted. They are

a. Novelty

b. Utility

c. Inventive Step

It is humbly submitted that in the present all these three requirements are present and

therefore, the innovative computer programme found by BTS is patentable.

3.1.1 Presence of Novelty and Utility

It was held in the case, Lallubhai Chakabhai Jariwala v. Chimanlal Chunilal

and Co.,44 that the two features necessary to the validity of a patent are novelty and

utility; however the real test is novelty of the invention. There must be a substantial

exercise of the inventive power or invention to constitute novelty. In the case,

Canadian General Electric Co. Ltd. v. Fada Radio Ltd.,45 it was held that a new

combination of well known devices and the application thereof to a new and useful

purpose, may require invention to produce it and may be a good subject matter of

patent.

42AIR 1978 Delhi 1 43Farbwork Hoechst Attiongesellschaft Vosmals Meister Leucius & Bruning Corporation etc. v. Unicham

Laboratories and Other, AIR 1969 Bom 255 44AIR 1936 Bom 99, p. 106 45AIR 1930 P.C. 1


According to the Copyrights Act, 1957, computer programme means 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.46 In the present instance, BTS has developed an

innovative software programme to help medical practitioners in their profession.

When the product was released for Beta-Testing, a few of the doctors commented

that it was the first of its kind. Thus, there is novelty in this computer programme.

The definition of the term ‘invention’ uses the phrase ‘capable of industrial

application’ to denote utility. According to section 2 (ac) of the Act, capable of

industrial application means that the invention is capable of being made or used in

an industry. The test for utility as laid down in Chiron Corp. v. Murex Diagnostic47

is what could be made and used in industry rather than what can be made and used

by the industry. In the case, In Re Dane K. Fisher and Raghunath Lalgudi,48

relying on Brenner v. Mason,49 the U.S. Court of Appeal for the Federal Circuit

held that there should be substantial utility derived by the public, i.e., an asserted

use must show that the claimed invention has a significantly and presently available

benefit to the public. In the present instance, the software produced complies with

the test mentioned above. It has substantial utility because these software sales

would help the development of the medicine industry.

3.1.2 Presence of Inventive Step

The next essential requirement for an invention is "inventive step". As

defined in section 2 (ja) of the Patents Act, inventive step means a feature of an

invention that involves technical advance as compared to the existing knowledge or

having economic significance or both and that makes the invention not obvious to

a person skilled in the art. From this provision, it can be understood that inventive

step requires two things:50

a. Technical advancement or economic significance

46Section 2 (ffc) 471996 FSR 153, 178 48(September 2005), 04-1965 (Serial No. 09/619, 643) 4938 US 519, at 534-35 50Bajaj Auto Ltd. v. TVS Motor Company Ltd., (2008) IILJ 726 Mad


b. Non-obviousness to a person skilled in the art51

In the case, Bishwanath Prasad v. H.M. Industries,52 it was held by the

Court that to be patentable the improvement or the combination must produce a

new result or a new article or a better or cheaper article than before. The

combination of old known integers may be so combined that by their working inter-

relation they produce a new process or improved result. Mere collection of more

than one integers or things, not involving the exercise of any inventive faculty, does

not qualify for the grant of a patent.

Therefore, the essential ingredient of an inventive step is the presence of

technical advancement or some economic significance. In the present instance, the

computer programme invented by the petitioner is one that has economic

significance; it would help the development of medicine industry and also BTS’

profit will go up by 10% according to a market survey. So, there is economic

significance and technical advancement as this software is the first of its kind.

Also, the test of non-obviousness has to be applied to prove that the product has an

inventive step. It was held in the case, Hoescht v. B.P.Chemical53 that two

questions need to be answered regarding the test of obviousness. Firstly, what

would the pleaded prior art document convey to the notional skilled man, i.e. what

does it mean. Secondly, what would be his reaction to it. It was also held in the

case, Polar Industries v. Jay Engineering,54 that a mere improvement in the nature

of incorporating minor changes, combination or collection of components or things

with what is already known is not an invention. It would be obvious to any skilled

worker. Also, in the case, Windsurfing International v. Tabur Marine,55 it was

held by the Court that a patent is granted only for an invention and that which is

obvious is not inventive. It is humbly submitted that in the present instance, the

development of the computer programme by BTS is not obvious. This is because

as the facts state this was first of its kind and also because if this was patented and

sold, the profit of BTS will go up by 10%. This shows that this software was

51Molnlycke A.B. v. Proctor and Gamble, 1994 RRPC 49, 113; Hoechst Celanese Corp. v. BP Chemicals, 1997

FSR 547, 562 52Supra 5 53 1997 FSR 547, 562 541991 IPLR 150 551985 RPC 59, 77


currently non-existent. Therefore, the test of non-obviousness has been satisfied

and since the other elements of an invention are also present, patent should be

granted.

3.2 Software is patentable in the State of El-Mango

From the above contention, it is obvious that if section 3 were to be declared

unconstitutional, the main impediment to patenting of software would be removed.

Consequently, the various provisions of the Act attest to the fact that computer software

with technical or economic significance and non obviousness does constitute an

invention, and therefore, software is patentable in El-Mango. Also, due to the presence

of the qualifications mentioned by the Patents Act in the present invention, it can be

patented under the Act.


PRAYER FOR RELIEF

Wherefore in the light of the issues raised, arguments advanced and authorities cited, it is

humbly prayed before this Hon’ble Court to adjudge and declare

that Section 3 of the Patents Act, 1970 is unconstitutional and issue the writ of mandamus

and pass any other order or orders as this Hon’ble Court may deem fit and proper in the

circumstances of the case and in the light justice, equity and good conscience and thus render

Justice.

All of which is respectfully submitted

Counsel for the Petitioner

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