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

 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

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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

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SCR Supreme Court Reporter

Supp. Supplement

v. Versus

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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)

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MEMORIAL ON BEHALF OF THE PETITIONER
 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)

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MEMORIAL ON BEHALF OF THE PETITIONER
 TABLE OF CASES

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. (2004) 2 ALD 878

Electronic Corporation of India and Ors.
4. Thomson-Csf and Ors. v. National Airport AIR (1993) Delhi 252
Authority
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

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MEMORIAL ON BEHALF OF THE PETITIONER
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 (1979) 3 SCC 498

Authority

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 AIR 1969 Bom 255

Meister Leucius & Bruning Corporation etc. v.
Unicham Laboratories and Other

29. Lallubhai Chakabhai Jariwala v. Chimanlal AIR 1936 Bom 99

Chunilal and Co.

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MEMORIAL ON BEHALF OF THE PETITIONER
30. Canadian General Electric Co. Ltd. v. Fada Radio AIR 1930 P.C. 1
Ltd.
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

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MEMORIAL ON BEHALF OF THE PETITIONER
 STATEMENT OF JURISDICTION

The Petitioner has approached this Hon’ble Court seeking its writ jurisdiction under Article
32 of the Constitution of El-Mango

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MEMORIAL ON BEHALF OF THE PETITIONER
 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.

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MEMORIAL ON BEHALF OF THE PETITIONER
 STATEMENT OF ISSUES

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

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MEMORIAL ON BEHALF OF THE PETITIONER
 SUMMARY OF ARGUMENTS

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.

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MEMORIAL ON BEHALF OF THE PETITIONER
 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

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

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MEMORIAL ON BEHALF OF THE PETITIONER
 the present writ petition through its assignee, SBTS. It is humbly submitted before
this Hon’ble 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

3 Jasbhai v. Roshan, AIR 1976 SC 578

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

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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

15
MEMORIAL ON BEHALF OF THE PETITIONER
 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

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

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MEMORIAL ON BEHALF OF THE PETITIONER
 Clauses Act, 1897, a person shall include any company or association or body of
individuals, 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 State 15 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 rights 17 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.

14 AIR 1966 All 590

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

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MEMORIAL ON BEHALF OF THE PETITIONER
 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 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.

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

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MEMORIAL ON BEHALF OF THE PETITIONER
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
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

20 Shukla, V.N., Constitution of India, Eastern Book Company, 11th Ed., 2010 , p. 45
21 K.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
23 D.S.Nakara v. Union of India, (1983) 1 SCC 305
24 State 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
25 AIR 1974 SC 555

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MEMORIAL ON BEHALF OF THE PETITIONER
 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
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

26 (1978) 1 SCC 248

27 (1979) 3 SCC 489
28 (1983) 1 SCC 305
29 1991 RPC 485, 523 (H.L.)
30 AIR 1982 SC 1444, 1447-8
31 Sec. 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

20
MEMORIAL ON BEHALF OF THE PETITIONER
 software programs and certain other discoveries and inventions out of the purview
of patents, inequality arises.

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

32 Jupe v. Pratt, (1837) 1 WPC 144; Chamberlain v. Mayor of Bradford, 1903 (20) RPC 673, 684 (H.L.)
33 Biogen v. Medeva, 1997 RPC 1, 52
34 Stair, 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.

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MEMORIAL ON BEHALF OF THE PETITIONER
 inventions. This is because keeping software programs out of the purview of
inventions does not result in protection of intellectual property, does not promote
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

36 Section 2 (ffc)
37 Intellectual Property Rights:
Patents and Copyright,
http://www.nasscom.in/Nasscom/templates/NormalPage.aspx?id=22708 (visited on 2011-8-23)

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MEMORIAL ON BEHALF OF THE PETITIONER
 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, 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

38 ibid
39 InIndia, 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)
40 The 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)

41 Supra 37

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MEMORIAL ON BEHALF OF THE PETITIONER
Thus, keeping software programs out of the purview of Patents apart from being a
violation of Article 14 also constitutes a loss of revenue to the state.

24
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.

42 AIR 1978 Delhi 1

43 Farbwork Hoechst Attiongesellschaft Vosmals Meister Leucius & Bruning Corporation etc. v. Unicham
Laboratories and Other, AIR 1969 Bom 255
44 AIR 1936 Bom 99, p. 106
45 AIR 1930 P.C. 1

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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

46 Section 2 (ffc)
47 1996 FSR 153, 178
48 (September 2005), 04-1965 (Serial No. 09/619, 643)
49 38 US 519, at 534-35
50 Bajaj Auto Ltd. v. TVS Motor Company Ltd., (2008) IILJ 726 Mad

26
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.Chemical 53 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 currently non-existent. Therefore, the test of non-

51 Molnlycke A.B. v. Proctor and Gamble, 1994 RRPC 49, 113; Hoechst Celanese Corp. v. BP Chemicals, 1997
FSR 547, 562
52 Supra 5
53 1997 FSR 547, 562
54 1991 IPLR 150
55 1985 RPC 59, 77

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MEMORIAL ON BEHALF OF THE PETITIONER
 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.

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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

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MEMORIAL ON BEHALF OF THE PETITIONER