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  • Writer's pictureRFMLR RGNUL


This post is authored by Tawishi Beria and Rakshit Assudani, fifth-year students of B.B.A. LL.B. (Hons.) at Jindal Global Law School, Sonipat.


In assessing whether any form of protection can be extended to various kinds of Intellectual Property (“IP”) by way of a range of rights, the first point of enquiry is that of subject matter eligibility.[i] In this post, the authors seek to analyse the different methods used to identify the same, in the wake of technological and digital advancements that have led to the creation of complex forms of IP that cannot be put in strait-jacket criteria. The article primarily looks at three kinds of IP: copyright and patents which are classified using exhaustive lists, and trademark which has a relatively broader criterion.


In the past, owing to technological advancements, copyright laws throughout the world have managed to evolve from time to time.[ii] However, the contemporary context, characterised by the internet and technology, poses a serious challenge to the copyright regime. In India, Sections 13 and 14 of the Copyright Act, 1957 enlists categories of works affording protection to literary, dramatic, and musical works, artistic works, cinematographic films and sound recordings. If a work does not fall in any of these categories, copyright over such work cannot be granted; essentially creating a closed list system. The legislature has been proactive in ensuring that the Indian Act covers new forms of expression like computer programs, databases, and multimedia works.[iii] However, due to the dynamic nature of technology and digitalisation, the emergence of new and complex forms of expression are bound to escalate in the near future.

Using the example of video games helps understand how such a rigid categorisation of copyrightable subject matter is problematic and could potentially restrict new technology. A video game has several components that do not fall under any one category, some of which are the characters, gameplay, sounds and music, artwork, and visual design. Protection of gameplay was denied in the Nova Productions case in England for instance. There is to date only one case relating to video games in India where protection was granted against piracy. In the said case, the defendant used the Jailbreak software to run pirated versions of the plaintiff’s video games resulting in the creation of copies of the game. Since this amounted to modifications of the plaintiff’s original machines without due consent, as well as the introduction of unlicensed pirated games, the Court granted an injunction against the defendant under Section 65A of the Act.

On the other hand, copyright protection to video games is usually denied on account of the doctrine of merger or the doctrine of the scene a faire. According to the doctrine of merger, as interpreted in Atari v North American Philips (US), the idea and expression in a video game are inseparable and hence, cannot be extended copyright protection. Applying this rationale, the Delhi High Court, in Mattel Inc. v. Jayant Agarwalla, refused to grant copyright protection to the plaintiff when the defendant released an online version of the famous game ‘Scrabble’. Furthermore, according to the doctrine of scene a faire, as developed in NRI Film Production Associates (P) Ltd. v. Twentieth Century Fox Films Corporation & Anr, copyright laws cannot protect certain elements that are common to different games belonging to a particular category. For example, with the concept behind PUBG and Fortnite being the same, no single company can get a copyright to this effect. The current copyright framework is very restrictive and leaves out many aspects. If the closed list is made inclusive (as opposed to exhaustive), it could accommodate new and emerging forms of works owing to technological advancements, fostering innovation – the very purpose of IP laws.


The approach taken in identifying the subject matter for patents is characterised by using a list containing non-protectable subjects. Chapter II of the Patents Act, 1970 (Sections 3 and 4) provide for inventions that are not patentable; the list of what are not inventions therein is fairly long, effectively precluding several inventions from protection. The magnitude of the problems that arise due to the use of such a closed-list system in general and the non-patentability of software in particular, is likely to increase with the rise in technological advancements. This is because the underlying essence of any technology is the software and program that is embedded in a machine. The discussion on software patents[iv] is relevant to understand the shortcomings of the narrow definition of (non-)patentable subject matter.

Section 3(k) of the Patents Act categorises computer programs per se, mathematical or business methods, and algorithms in the list of what are not inventions, and consequently patent ineligible. This effectively excludes the possibility of granting software patents since computer software is essentially a form of applied mathematics, qualifying as a ‘mathematical method’ within the meaning of Section 3(k). For instance, in the Yahoo case, the IPAB refused to grant a patent for “features of a software tool targeting search terms relevant to Yahoo’s business” on the ground that the alleged technological advancement was merely a novel technical method of doing business and therefore excluded from being an invention by virtue of Section 3(k). To be eligible for patent protection, a software must be used in combination with novel hardware, which fulfils other statutory requirements.[v]

As the current trend is towards digitalisation and technological developments, software becomes the fundamental source of such creative application. However, the absence of adequate protection afforded to software may lead to a stagnancy in innovation, since the creator of a software would have to be dependent on the creator of hardware to patent the software. Moreover, due to the provisions of the Act being inflexible, a software cannot be granted protection by a liberal interpretation from the Courts as well. Apart from software, technological advancements may lead to other useful inventions that might not be patentable under the Act. Accordingly, a change in the closed list system for patents is warranted.


The identification of subject matter under the trademark regime reflects a relatively broad and open-ended approach, independent of strict categories like with copyright and patents. As per Section 2(1)(zb) of the Trade Marks Act, 1999, if the requirement of graphical representation and distinctiveness is fulfilled, a trademark can be registered for a wide range of products and services, including words, phrases, images, tastes, smells, colours, shapes, packaging and so on. Interestingly, an illustrative list of marks is also provided in Section 2(1)(m) of the Act. This essentially means that the ambit of a mark is broad enough to include anything and is highlighted by the emergence of unconventional trademarks. An example of how such a definition is beneficial is reflected in the ease of registration of domain names.

Pursuant to the exploding growth of the internet and cyberspace, registration of domain names has gained popularity, facilitated by applicant-friendly trademark law. The Indian judiciary has pro-actively encouraged such growth as is evident from the Delhi High Court’s decisions in the Yahoo! Inc. case and the Tata Sons case. Broadly, the Court acknowledged that trademark law would be applicable to activities on the internet, holding that domain names and internet sites are more than a mere address that warrant protection through trademark. However, at the same time, due to the inherent flexibility and ease of registration, cyber-squatting has become a significant issue, raising doubts about the practical relevance of having an open-textured definition.


It is not disputed that there are public policy reasons like prevention of monopoly and ensuring consumer welfare for adopting a restrictive definition of what constitutes protectable subject matter for copyright and patents. However, it is also essential to be cognizant of the fact that the categories had been stipulated a long time ago when vast technological developments had not taken place. Accordingly, the justifications for having a restrictive list may not hold water in contemporary times, thus warranting change.

The discussion above highlights that the copyright and the patent regime in India concerning subject matter eligibility are ill-equipped to deal with opportunities that may arise due to technological developments. The only way to cope up with such developments would be to amend the law. On the contrary, the method adopted by the trademark regime is conducive to the opportunities that new technology presents. Although it is true that an open-ended and flexible definition as reflected in the trademark regime is desirable, it also has the potential to create problems. Like in the case of domain names as discussed above, due to the ease of registration of frivolous domain names, issues such as cyber-squatting arise. This becomes problematic for a proprietor who may require registration of the domain name in good faith and may have to pay up a hefty amount to purchase the same from third parties who have frivolously registered the said domain name.

Moreover, the closed list in copyright law and the non-protected subject matter list in patents do have their virtues. A higher level of scrutiny is entailed as a result of having to satisfy the respective tests and meeting the requirements of the lists. The minimum requirements of originality and fixation in copyright and the three elements of novelty, non-obviousness and utility for patents have to be satisfied before such IP rights are granted to the applicants. The need to satisfy these tests over and above qualification/disqualification as per the lists provides an additional layer of safety since granting protection to any kind of IP does have the tendency to take monopolistic forms. From the perspective of the IP owner, this may require greater efforts to successfully secure a copyright or patent since a higher standard is supposed to be satisfied.

An optimal method to approach the identification of subject matter of different forms of IP, in the authors’ view, is characterised by using a hybrid of the copyright and patent approach as well as the trademark approach. What is essentially required is firstly, making the list provided in the Copyright Act, 1957 more inclusive rather than exhaustive so that newer forms of IP are not left out; and secondly, making the list provided in the Patents Act, 1970 more illustrative so that the relevant authorities can specifically ascertain the ambit of the list and there is no scope of discretion in denying patent protection. This would eliminate the inherent rigidity and bring in much-needed flexibility. Doing away with the lists in totality could potentially create several problems since the tests for determining whether protection should be granted would be too broad in the absence of any guidance whatsoever.

Further, the courts must adopt a broad outlook whenever faced with an IP matter, attempting to not dismiss the same at least on the preliminary ground of subject matter invalidity. In line with the idea of the law being dynamic, opportunities presented by new technology should be embraced and protected adequately.

Endnotes: [i] Justine Pila, The Subject Matter of Intellectual Property (OUP, 2017). [ii] Eric Fleischmann, The Impact of Digital Technology on Copyright Law, 8 Computer L.J. 1 (1987). [iii] TC James, Indian Copyright Law and Digital Technologies, 7 JIPR 423 98 (2002). [iv] Wendy Seltzer, Software Patents and/or Software Development, TPRC 2011, 78 Brooklyn Law Review (2013). [v] Ravindra Chingale & Srikrishna Deva Rao, Software Patent in India: A Comparative Judicial and Empirical Overview, 20 JIPR 210 (2015).


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