How his persistence led to clarity on patenting software in India. A must read for Tech Startups on Software Patenting in India

Navigating the software patenting landscape in India? The journey of entrepreneur Ferid Allani offers crucial insights for startups and tech innovators.

Ferid Allani, a French man originally from Tunisia, aimed to simplify internet usage for those who are not tech-savvy.. He came up with a way for regular people to use the internet in places like public booths, private spaces, and offices. He applied for a software patent application on this idea on December 30, 1999. Pursuing global recognition, he also applied internationally on December 29, 2000. He tried to get his patent in many countries, including the US, European Patent Office (EPO) countries, Japan, and India. Notably, he encountered challenges in the patenting process within the EPO and India, contrasting his successes in the US and Japan.

Upon India’s patent office denial, Allani remained undeterred.His first appeal was to the Intellectual Property Appellate Board ( IPAB), which also resulted in rejection. So, he took his case to the Delhi High Court.

In December 12, 2019, the Delhi High Court ruled, asserting that the IPAB’s prior denial was erroneous and instructed the Patent Office to reevaluate. However, the Patent Office reiterated their refusal on February 7, 2020. Persevering, Allani appealed this at the Intellectual Property Appellate Board (IPAB). Their verdict on July 20, 2020, was in Allani’s favor, emphasizing the novelty of the internet in 1999. 

The IPAB made a pivotal declaration: the solution Allani proposed was transformative for the 1999 internet landscape. The mere inclusion of a computer program doesn’t negate patent eligibility. Their assessment recognized that while the invention’s organizational aspect relates to programming, it extends beyond just that. Drawing from the Delhi High Court’s 2019 stance, the IPAB confirmed that a partial reliance on a computer program doesn’t preclude patenting. Comprehensive examination of the invention, its technical operations, and its contributions is paramount. Thus, overruling the February 7, 2020, decision, the IPAB endorsed Allani’s patent application.

Mr Allani’s persistence paved the way for innovators to get patents for software related inventions in India. The Delhi high court’s decision was significant because it cleared up a lot of ambiguity related to the interpretation of section 3(k) of the Indian patents act, which states that a computer program “per se” is not patentable. If an invention contributes to a technical field and produces a technical effect, it is patentable even if it uses software. Further, the decision gave several examples of technical effects such as higher speed, reduced hard-disk access time, more economical use of memory, more efficient database search strategy, improved user interface, etc. Hence, applicants can apply for patents for software inventions in India with even more certainty as compared to other jurisdictions, where “technical effect” doesn’t have a specific definition or clear examples. In summary, thanks to the Ferid Allani case, if there is evidence that a software related invention produces a technical effect, it is patentable in India if other criteria such as novelty, inventive step, and utility are met.  

Key Takeaways for Tech Startups and Founders: 

1. Patent Persistence Pays: Allani’s journey underscores the value of perseverance in the face of bureaucratic roadblocks. For startups, this case offers a playbook on navigating patent rejections and seeking rightful recognitions.

2. Technical Impact is King: The Delhi High Court’s decision illuminates Section 3(k) of the Indian patents act. Startups with software solutions should note: if your innovation brings tangible technical improvements, patenting in India is within reach.

3. A Win for the Indian Tech Ecosystem: With clearer guidelines on ‘technical effects’ and examples ranging from improved speed to enhanced UI, India has arguably made it more straightforward for tech startups to seek patents than many other regions.

4. A win for international Tech companies or founders eyeing the Indian market:  If your software-driven invention showcases evident technical benefits, and meets the fundamental patenting criteria, India’s doors are open.For any tech startups and founders eyeing the Indian market, the Ferid Allani case is a beacon. If your software-driven invention showcases evident technical benefits, and meets the fundamental patenting criteria, India’s doors are open. 

Key Takeaways for International Tech companies and Founders who consider India as one of their main markets: 

1. Persistence Matters: Despite initial rejections, Allani’s determination led to eventual success. Startups should be prepared for potential setbacks but remain persistent in their patenting pursuits.

2. Legal Channels Are Crucial: Utilize all available legal avenues, from the patent office to appellate boards, and even high courts, if necessary. Understanding the Indian legal framework for patenting can make a significant difference.

3. Technical Contribution is Key: The patenting body in India emphasizes the technical contribution of software-related inventions. Ensure that your software solution brings tangible technical advancements to be considered patent-worthy.

4. Stay Updated on Precedents: Legal decisions, like the Allani case, can greatly influence patenting criteria. Regularly update yourself on landmark rulings to better navigate the patent application process.

5. Software Can Be Patented: Contrary to misconceptions, software can be patented in India. However, it should demonstrate a technical effect or contribution beyond mere programming.

6. Clarity on ‘Technical Effect‘: The case offered clearer guidelines on what constitutes a ‘technical effect’, providing more certainty to applicants about what qualifies for a patent.

7. Global Recognition Matters: Having patent recognitions from other countries, as Allani had from the US and Japan, can potentially bolster your case in India.

8. Broaden the Perspective: Instead of narrowly focusing on the software aspect, consider the holistic functionality, usability, and technical operations of the invention, as these broader perspectives played a role in Allani’s success.

9. Be Proactive: In light of evolving patenting norms, proactively seek advice and consultation. Engage with local patent experts familiar with the Indian landscape to optimize your application strategy.