(Under Art. 32 of the Constitution of El-Mango) · 2019-08-09 · 1. The Petitioner has the locus...
Transcript of (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
2 MEMORIAL ON BEHALF OF THE PETITIONER
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
3 MEMORIAL ON BEHALF OF THE PETITIONER
SCR Supreme Court Reporter
Supp. Supplement
v. Versus
4 MEMORIAL ON BEHALF OF THE PETITIONER
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)
5 MEMORIAL ON BEHALF OF THE PETITIONER
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
6 MEMORIAL ON BEHALF OF THE PETITIONER
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
7 MEMORIAL ON BEHALF OF THE PETITIONER
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
8 MEMORIAL ON BEHALF OF THE PETITIONER
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
9 MEMORIAL ON BEHALF OF THE PETITIONER
The Petitioner has approached this Hon’ble Court seeking its writ jurisdiction under Article 32
of the Constitution of El-Mango
STATEMENT OF FACTS
10 MEMORIAL ON BEHALF OF THE PETITIONER
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
11 MEMORIAL ON BEHALF OF THE PETITIONER
1. The Petitioner has the locus standi to file the present Writ Petition under Art. 32
of the Constitution of El-Mango
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
12 MEMORIAL ON BEHALF OF THE PETITIONER
1. The Petitioner has the locus standi to file the present Writ Petition under Art. 32
of the Constitution of El-Mango
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.
2. Denial of software Patenting is a violation of Article 14 of the Constitution and
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.
3. Software is patentable under the Patents Act, 1970
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
13 MEMORIAL ON BEHALF OF THE PETITIONER
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
14 MEMORIAL ON BEHALF OF THE PETITIONER
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
15 MEMORIAL ON BEHALF OF THE PETITIONER
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
16 MEMORIAL ON BEHALF OF THE PETITIONER
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
17 MEMORIAL ON BEHALF OF THE PETITIONER
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
18 MEMORIAL ON BEHALF OF THE PETITIONER
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.
2. Denial of software Patenting is a violation of Article 14 of the Constitution and
consequently Sec. 3 of the Patents Act, 1970 is unconstitutional
19Commentary on the Paris Convention for the Protection of Industrial Property, Reiss Seth, M.
19 MEMORIAL ON BEHALF OF THE PETITIONER
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
20 MEMORIAL ON BEHALF OF THE PETITIONER
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
21 MEMORIAL ON BEHALF OF THE PETITIONER
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.
22 MEMORIAL ON BEHALF OF THE PETITIONER
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)
23 MEMORIAL ON BEHALF OF THE PETITIONER
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
24 MEMORIAL ON BEHALF OF THE PETITIONER
of the purview of Patents apart from being a violation of Article 14 also constitutes a
loss of revenue to the state.
25 MEMORIAL ON BEHALF OF THE PETITIONER
3. Software is patentable under the Patents Act, 1970
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
26 MEMORIAL ON BEHALF OF THE PETITIONER
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
27 MEMORIAL ON BEHALF OF THE PETITIONER
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
28 MEMORIAL ON BEHALF OF THE PETITIONER
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.
29 MEMORIAL ON BEHALF OF THE PETITIONER
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