Patentability of CR

Email: [email protected]

Patentability of Computer Related Inventions (CRIs)

-Himatej Reddy Asst. Patent Engineer


What is a patent?• A patent is an intellectual property right

relating to inventions and is the grant of exclusive right, for limited period, provided by the Government to the patentee, in exchange of full disclosure of his invention, for excluding others from making, using, selling, importing the patented product or process producing that product for those purposes.


Basic Criteria for Patentability?• In order to deserve a patent, the invention

must– be new (Novelty)– involves an inventive step (Non-

Obvious)– be capable of Industrial application and– not fall under Section 3 and 4 of Indian

Patent Act, 1970


Section 3 – Inventions Not Patentable


Section 3 (a)

• An invention which is frivolous or which claims anything obviously contrary to well established natural laws– A machine that gives more than 100%

performance


Section 3(b)

• An invention, the primary or intended use or commercial exploitation of which would be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment– Gambling machine– Device for house-breaking– Biological warfare material or device, weapons for

mass destruction


Section 3(c)

• The mere discovery of a scientific principle or the formulation of or discovery of any living thing or non-living substance occurring in nature


Section 3(d)

• The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant


Section 3(e)

• A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance


Section 3(f)

• The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way


Section 3(h)• A method of agriculture or horticulture

Section 3(i)• Any process for the medical, surgical,

curative, prophylactic, diagnostic, therapeutic 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


Section 3(j)

• Plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals


Section 3(k)• A mathematical or business method or a

computer programme per se or algorithms

Section 3(l)• A literary, dramatic, musical or artistic

work or any other aesthetic creation whatsoever including cinematographic works and television productions


Section 3(m)• A mere scheme or rule or method of performing

mental act or method of playing game

Section 3(n)• A presentation of information

Section 3(o)• Topography of integrated circuits


Section 3(p)

• An invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components


Section 4

• Inventions relating to atomic energy not patentable– No patent shall be granted in respect of an

invention relating to atomic energy falling within sub section (1) of section 20 of the Atomic Energy Act, 1962 (32 of 1962)


SOFTWARE PATENTABILITY


Statutory Amendments• Prior to the implementation of Patent

(Amendment) Act 2002 (No. 38 of 2002), the definition of invention was as under: “ Invention means

i. art, process, method or manner of

manufacture;

ii. Machine, apparatus or other article;

iii. Substance produced by manufacture,

and includes any new and useful improvement of

any of

them, and an alleged invention; ”


The Patent (Amendment) Act 2002 (No. 38 of 2002) – w.e.f. 20th May, 2003• Section 2(1)(j) –

“Invention” means a new product or process involving an inventive step and capable of industrial application;

• Section 2(1)(ja) – “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;

• Section 2(1)(ac) – ‘ “capable of industrial application”, in relation to an

invention, means that the invention is capable of being made or used in an industry; ’


• It further introduced explicit exclusions from patentability with regard to Computer Related Inventions (CRIs) under section 3:k) a mathematical or business method or a computer

programme per se or algorithms;l) a literary, dramatic, musical or artistic work or any

other aesthetic creation whatsoever including cinematographic works and television productions;

m) a mere scheme or rule or method of performing mental act or method of playing game;

n) a presentation of information;

The Patent (Amendment) Act 2002 (No. 38 of 2002) – w.e.f. 20th May, 2003 (Cont.)


Patents (Amendment) Ordinance, 2004 (No. 7 of 2004)• The exclusions under section 3(k) were

amended as -k) a computer programme per se other

than its technical application to

industry or a combination with

hardware;

ka) a mathematical method or business

method or algorithms;


Patents (Amendment) Ordinance, 2004 (No. 7 of 2004) (Cont.)• However, through the enactment of the Patents

(Amendment) Act, 2005 (No. 15 of 2005), which did not include these amendment provisions of the ordinance, the position of 2002 amendments were restored automatically

• Therefore, the re-instatement of the original phraseology of section 3 (k) clearly indicates that the legislature intended to retain the original scope of exclusion and did not approve its widening under this sub-section as attempted through the ordinance


Terms/Definitions (Guidelines for Examination of Computer Related Inventions (CRIs))• Computer related inventions:

– This phraseology has not been defined in any of the Indian statutes and it is construed as any invention which involves the use of computers, computer networks or other programmable apparatus and includes such inventions, one or more features of which are realized wholly or partially by means of a computer programme/programmes


Terms/Definitions (Guidelines for Examination of Computer Related Inventions (CRIs)) (Cont.)• Software

• The term “software” is not defined in Indian statutes and hence, for interpretation of this term, the general dictionary meaning may be used.

• The Oxford Advanced Learners Dictionary defines “software” as “the programs, etc. used to operate a computer”


Terms/Definitions (Guidelines for Examination of Computer Related Inventions (CRIs)) (Cont.)• Computer program

– The term computer programme has been defined in the Copyright Act 1957 under Section 2 (ffc) as‘ “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; ’


Terms/Definitions (Guidelines for Examination of Computer Related Inventions (CRIs)) (Cont.)• Per se

• The term “per se” is not defined in Indian statutes an hence for interpretation of this term, the general dictionary meaning may be used

• The Oxford Advanced Learners Dictionary defines “per se” as “by itself” – to show that you are referring to something on its own, rather than in connection with other things


Terms/Definitions (Guidelines for Examination of Computer Related Inventions (CRIs)) (Cont.)• Technical advancement

• Contribution to the state of art in any field of technology

• It is important to divide between software, which has a technical outcome, and that which doesn’t, while assessing technical advance of the invention


Terms/Definitions (Guidelines for Examination of Computer Related Inventions (CRIs)) (Cont.)• Mathematical Methods

• “Mathematical methods” are considered to be acts of mental faculty. The method of calculations, formulation of equations, finding square roots, cube roots and all other methods directly or indirectly involving mathematical methods are therefore, not held patentable.

• These methods, claimed in any form, if in substance relate to mathematical methods are considered to be not patentable subject matter.


Terms/Definitions (Guidelines for Examination of Computer Related Inventions (CRIs)) (Cont.)• Business Methods

• The term ‘Business Methods’ involves the whole gamut of activities in a commercial or industrial enterprise relating to transaction of goods or services.

• With the development of internet technologies, many business activities have grown by leaps and bounds through e-commerce and related B2B and B2C business.

• The claims relate to business method even with the help of technology are not considered patentable.


Terms/Definitions (Guidelines for Examination of Computer Related Inventions (CRIs)) (Cont.)• A literary, dramatic, musical or artistic work or any

other aesthetic creation whatsoever including cinematographic works and television productions: • Writings, music, works of fine arts, paintings, sculptures, computer

programmes, electronic databases, books, pamphlets, lectures, addresses,

sermons, dramatic-musical works, choreographic works, cinematographic

works, drawings, architecture drawings, engravings, lithography, photographic

works, applied art, illustrations, maps, plans, sketches, three dimensional works

relating to geography, topography, translations, adaptations, arrangements of

music, multimedia productions, etc. are not patentable.

• Such works fall within the domain of the Copyright Act, 1957


Terms/Definitions (Guidelines for Examination of Computer Related Inventions (CRIs)) (Cont.)• A mere scheme or rule or method of performing

mental act or method of playing game:• A mere scheme or rule or method of performing

mental act(s) or a method of playing game(s) are excluded from patentability, because they are considered as outcome of mere mental process. For example, Method of playing chess Method of teaching Method of learning Method of training


Terms/Definitions (Guidelines for Examination of Computer Related Inventions (CRIs)) (Cont.)• Presentation of information:

• Any manner or method of expressing information, whether visual, audible or tangible; by words, codes, signals, symbols, diagrams or any other mode of representation, is not patentable.• For example, a speech instruction in the form of printed

text where horizontal underlining indicates stress and vertical separating lines dividing the works into rhythmic groups is not patentable.

• For instance, railway time table, 100 years calendar etc.


Understanding Software

• A software professional’s view describes various types of software based on the nature of works involved in the development• Software embedded with specific hardware• System software for general purpose hardware• Application software

• Implements established methods/algorithms such as mathematical methods or business methods


Types of SoftwareType of Software Example

Software for specific hardware or device Embedded systemSystem software Operating system

FirmwareDevice driverRegistry cleanerAnt-virusArchivesBiosDisk compressionNetwork utilitiesMiddlewareCompiler

Application software Banking softwareFile password generatorOnline shoppingOffice suiteSimulation software


Various Categories of Claims concerning Computer Related Inventions


Various Categories of Claims concerning Computer Related Inventions

• Applications concerning Computer Related Inventions (CRIs) broadly fall under the following categories:• Method/process• Apparatus/system• Computer readable medium• Computer program product


Method/Process• Computer related inventions often carry claims with

preamble as “method/process for…” whether the claims are relating to “mathematical method or business method or computer programme per se or algorithm or mental act;” they are claimed in ‘method/process’ format.

• The role of examiner becomes very critical in ascertaining whether the invention belongs to one of such categories and hence falls under excluded subject matter.


Example 1: Mathematical method/Computer program per se


Example 2: Business Method


Example 3: Computer Program per se


Example 4: Algorithm


Apparatus/System• These claims are often crafted to appear in “means

plus function” format (means for performing a specified function).

• It requires the examiners’ attention to properly construe whether the claimed subject matter indeed relate to any apparatus which is novel, inventive, having industrial applicability or is just formatted to appear so.

• The apparatus claim should clearly define the inventive constructional/hardware features


Apparatus/System - Example:


Computer program product

• The claims relating to computer program product are nothing but computer program per se simply expressed on a computer readable storage medium (CD, DVD, Signal etc.) and as such are not patentable


Computer program product – Example:


Determination of excluded subject matter relating to CRIs


Determination of excluded subject matter relating to CRIs• Essentially, all computer programs need a

combination with some hardware for its functionality

• Does it imply that all such programmes can be can be considered as away from the purview of computer programme per se?• Whether a computer programme loaded on a

general purpose known computer or related devices can be held patentable? – the answer is NO


Determination of excluded subject matter relating to CRIs (Cont.)• In an application for patent for a new hardware

system, the possibility of a computer programme forming part of the claims is not ruled out

• The examiner is to carefully consider as to how integrated is the novel hardware with the computer programme

• Further, whether the machine is programme specific or the program is machine specific is important to ascertain. This requires critical care of the examiners


Determination of excluded subject matter relating to CRIs (Cont.)• A computer programme which may work on any

general purpose known computer does not meet the requirements of the law

• For considering patentability of computer programme in combination with hardware features, the hardware portion has to be something more than general-purpose machine.

• In cases where the novelty resides in the device, machine or apparatus and if such devices are claimed in combination with the novel or known computer programmes to make their functionality definitive, the claims to these devices may be considered patentable, if the invention has passed the triple test of novelty, inventive step and industrial applicability


Determination of excluded subject matter relating to CRIs (Cont.)• It is important to note that the term per se has been

suffixed to the computer programme alone• Therefore, if the invention is relating to mathematical

method, business method or algorithm, they are considered to be non-patentable by direct application of law

• However, if a claim of an invention is oriented towards a novel, inventive and industrially applicable computer or related device along with the programme for defining its functionality, then it may be considered to be patentable


Illustration 1

“ An application titled, “system and method for billing augmentation” was held as a business method ”

• The controller held that the subject matter of the claims falls within scope of clause (k) of section (3) of the Patents Act, 1970 (as amended)


Illustration 2• The controller held that

it is evident that the alleged invention relates to the processing of transaction data and billing for transactions across a data network which is a mere business method


Illustration 3• The controller held that

when the server and database are known in the art, the computer is known in the art and the way those interact with each other is known, then what is the contribution of the invention? The contribution is only a computer program to carry out the above discussed business method

A system operated over an electronic network for surveying nursing quality of nursing units at multiple healthcare facilities, comprising:

a database configured to store information received from multiple healthcare facilities; and a web server; configured to transmit at least one question relating to nursing quality indicator to at least one staff member .......

A method of surveying nursing quality of nursing units at multiple healthcare facilities connected via a network, comprising: presenting at least one question relating to a nursing quality indicator to at least one staff member of a first nursing unit of a first health care facility using a web server via a first web client connected to the network; ……


Illustration 4• The controller held that the

said method for scoring compatibility between the social network users is nothing but a business method which shall be used commercially (Section 3(k))

• Estimating the probability and dividing the estimated probabilities from the resultant product, is a mere mathematical method (Section 3(k))

• Method for computing compatibility score, is based on a scheme/predefined set of rules (Section 3(m))


Illustration 5• The controller held that,

based on the facts and conclusions, the subject matter of the alleged invention DO NOT constitute of patentable subject matter and purely relate to a business method and software per se and as such the application for patent could not be processed further


Illustration 6 - Yahoo case IPAB OA/22/2010/PT/CH


Illustration 6 - Yahoo case IPAB OA/22/2010/PT/CH (Cont.)• The controller concluded that the invention was

only a business strategy and hence not patentable

• On appeal, the IPAB analyzed various decisions of foreign courts with regard to ‘business method’ patents. In its decision, the Board held that the invention was falling in the category of “method of doing business”, maybe a technically smarter way of doing business


Illustration 7

Comments – Claims 1 to 33 were directed to genome sequences. Claim 34 was directed to computer readable medium. In FER, objection u/s 3(k) was raised for the said claim. In reply, the agents deleted the said claim.


Procedures of Examination of CRIs


Determining the technical field of the alleged invention

Determining the technical contribution of the alleged invention over the prior art

Conducting prior art search

Determining whether the claims are compliant with section 2(1)(j)

Determining whether the alleged invention is compliant with requirements of Sec 10(4), 10(5) i.e., fully and particularly disclosure of invention, utility of invention,

etc

Determining whether the claims are falling under the ambit of subsections of section 3

Communicating detailed findings in the examination report


Classifying the claim

Claims directed at a

literary, dramatic, musical or aesthetic

work or any other

aesthetic creation

whatsoever including

cinematographic works

and television

productions;

Claims directed at a mere scheme

or rule or method of performing

mental act or method of

playing game;

Claims directed at a presentation

of information;

Claims directed at a mathematical or business method or a

computer programme

per se or algorithms;

Determining whether the claims are falling under the ambit of subsections of section 3 (relevant to CRIs)

Separating the “Technical” and “Non-Technical” features appearing in the claim and determining where the invention lies, by analyzing the Technical

feature of the claim and the Technical problem it tries to solve i.e., Determining the underlying substance of the invention


Conclusion

• Software embedded with specific hardware are patentable (embedded system)

• System software may not be excluded subject matter as it operates/controls computer hardware and hence patentable (ex., OS Kernel, device drivers)

• Business/Mathematical methods based software is not patentable


Conclusion (Cont.)

• Computer program product i.e., computer program code stored in a computer readable medium is computer program per se and hence not patentable

Patentability of CR

Law

Transcript of Patentability of CR