© 2009 Brain League IP Services Pvt. Ltd Now Bananaip.

Software patents

ByArun K NarasaniBrain League IP Services Now BananaIP

Patent Amendment Ordinance Patents (Amendment) Act 2002, specifying as

excluded subject-matter: 3(k) a mathematical or business method or computer

programme per se or algorithms; by new clauses (‘04):

3(k) a computer programme per se other than its technical application to industry or a combination with hardware;

3(ka) a mathematical method or business method or algorithms;

Software patents Intel Corp. USA, No. 192439, "A method of processing a request and a computer system and

microprocessor therfore", 2004-04-24 Siemens, Germany, No. 193501, "Method for cashless payment", 2004-07-24 Canal + Societe Amonyme, France, No. 193654, "Method of download data to an MPEG

receiver/decoder and an MPEG receiver/decode", 2004-07-31 Siemens, Germany, No. 181381, "Method for transmission of digital signals in time division

multiplex channel from via a ATM transmission device.", 2004-11-29 Interl Corp, No. 192590, "Method for providing content interruption", 2004-05-08 Sun Microsystems Inc., 193708, "A computer implemented process for processing a computer

program and a computer program product therefore", 2004-08-07 Siemens, Germany, No. 194407, "A method for offering announcement in a communication

network and the communication network thereof", 2004-10-30 Siemens, Germany, No. 194087, "Method for transmission of data between a terminal and

portable data carrier over a wireless electromagnetic transmission stretch", 2004-09-25 Sun Microsystems, US, No. 194159, "An interactive computer assembly for implementing

message dispatch for an object oriented program and method therof", 2004-09-25

IPO ..if however the format of the program, or

the nature of the record medium (tape, disc etc.) necessitated some non-standard adaptation to the computer itself (this factor being integral to the invention and not an arbitrary unrelated addition) then the exclusion would not apply.

IPO If the implementation of a new program

requires internal modification to a computer of such a nature that it may reasonably be regarded as a new computer then clearly a claim to this computer is not excluded .. the modification must however be inventive itself ..

IPO ..a novel solution to a problem relating to

the internal operations of a computer, although it may comprise a program or subroutine, will also necessarily involve technological features of the computer hardware or the manner in which it operates and thus, if appropriately claimed, may be patentable.

IPO …computer program product is claimed as

“A computer program product in computer readable medium”, “A computer-readable storage medium having a program recorded thereon”, etc. In such cases the claims are treated as relating to software per se, irrespective of the medium of its storage and are not held patentable.

USPTO Computer-related non-statutory subject

matter Functional descriptive material Nonfunctional descriptive material

Both types are non-statutory when claimed as descriptive material per se

USPTO Since a computer program is merely a set

of instructions capable of being executed by a computer, the computer program itself is not a process and USPTO personnel should treat a claim for a computer program, without the computer-readable medium needed to realize the computer program's functionality, as non-statutory functional descriptive material.

USPTO When functional descriptive material is

recorded on some computer-readable medium, it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized.

USPTO Example

…a claimed computer-readable medium encoded with a data structure defines structural and functional interrelationships between the data structure and the computer software and hardware components which permit the data structure's functionality to be realized, and is thus statutory.

EPO … although methods for doing business,

programs for computers, etc., are as such explicitly excluded from patentability, a product or a method which is of a technical character may be patentable, even if the claimed subject-matter defines or at least involves a business method, a computer program, etc.

EPO …a computer program is considered to

have a technical character, if it causes, when run on a computer, a technical effect which may be known in the art but which goes beyond the "normal" physical interactions between program and computer. Such effect may, for example, be found in the control of an industrial process or in the internal functioning of the computer itself.

EPO A patent application for an Internet auction system was

not granted because the system used conventional computer technology and computer networks - which meant it made no inventive technical contribution to the level of existing technology. Such a system may provide business advancement to its users, but that is not the type of advancement required by the EPO.

On the flip side, the problem of improving signal strengths between mobile phones is a technical problem, even if it is solved by modifications to the phone software rather than its hardware. Such an invention would obtain a patent, provided that the solution is also novel and inventive.

JPO To be qualified as a "statutory invention"

prescribed in the Patent Law, the claimed invention shall be “a creation of technical ideas utilizing a law of nature.”

JPO Example: A computer to calculate the minimum value of

formula y=F(x) in the range of a<=x<=b.

RationaleIt cannot be said that the information processing to calculate the minimum value of formula y=F(x) is concretely realized by the fact that the computer is used "to get the minimum value of formula y=F(x) in the range of a<=x<=b." This is because information processing to calculate the minimum value of formula y=F(x) and the computer cannot be said to be cooperatively working by only saying "a computer to calculate the minimum value..."

JPO Examples that are patentable:

control of an apparatus (rice cooker, washing machine, engine, hard disk drive, etc.), or processing with respect to the control; or

information processing based on the physical or technical properties of an object (rotation rate of engine, rolling temperature, etc.);

these examples constitute "a creation of technical ideas utilizing a law of nature."

EU/India/Japan An invention enabling receipt of orders via

the Internet, for instance, which were taken by fax or telephone in the past, will not be regarded as having inventive step

Assumed to be within the scope of ordinary creative activity of a person skilled in the art

Mode of operation US: best mode of operation

Need not update the best mode

Europe/Japan: at least one mode of operation Enable person skilled in the art to make the

invention

India: best mode of operation

Computer programs US:

Program claims are allowed Good description of structure and operation of

program Snippets of source code helps

EU/India/Japan: Mere program claims are not allowed

Complex software applications Include function block diagrams

Hardware illustration Structure of the software

Files and/or functional modules

Business Methods US/Japan:

Business methods are patentable Mere automation of an existing method is not

patentable EU/India:

Business methods are part of exclusions If needed, claim the method as technology “technical character” dominates

Patentability Novel Useful Non-obvious

Claim specifics Scope of protection

Equivalence File wrapper estoppel

General claim strategies Diversity of claims in scope

Narrow/medium/broad Harder to invalidate

Different claim formats System claim Computer readable medium

Claim specifics Avoid using words that narrow the

interpretation Critical, must, required, necessary, only,

always, never “Comprise” better than “consisting of” or

“which consist of” “a”/”an”

General claim strategies Focus on physical aspects of the invention

Apparatus or machine claims Physical transformation for process claims Avoid overly broad statement without any

limitation to a specific use

Built-in responses/fall back positions Obviousness or non-inventive rejection