Clean-up in India - software patents slipped through during brief period of patentability

What’s the downside to the temporary-presidential-decree-followed-by-legislation approach to amending a patent law, you ask?  Remember, India did just this in order to comply with its January 1, 2005 TRIPs deadline.  To meet the deadline, a temporary presidential decree, or ordinance, was issued amending the law to change the scope of patentable subject matter to include various new categories, including pharmaceuticals and embedded software.

This month, the Indian parliament finally debated the issue and produced a legislative change to the law, with some key differences from the ordinance.  Most notably, the politically debated bill excludes embedded software and limits the patentability of new chemical forms of drugs.

Prior to the ordinance, pharmaceuticals were clearly excluded from patentable subject matter.  Software, on the other hand, was not such a clear issue.

Prior to December 27, 2004 (the effective date of the ordinance), the patentability of software was cloudy at best.  The ordinance changed that situation, placing software squarely within the scope of patentable subject matter.  So, after December 27 but before March 23 (the date on which Parliament passed the amendment), embedded software was patentable under the provisions of the decree.  Now, under the new legislative change, embedded software is clearly not patentable.

According to this article, almost 150 patents had been granted on software, some even prior to the ordinance.  So the clean-up effort begins.  Apparently the Patent Office is prepared to “reverse” these patents.  I have to wonder why the Office would undertake this effort.  The patents were valid when issued (at least those issued under the authority of the ordinance).  Also, the marketplace will likely assign trivial value to the patents considering their brief period of validity, making it unlikely that economic motivation exists to enforce the patents (three months of damages, at best?)