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TRANSCRIPT
UNNI NALSAR
Patenting of Computer Programs
Dr. V.K. Unni
Associate Professor
IIM, Calcutta
E-mail: [email protected]
The ABC of Programming
A computer program is a set of instructions to the computer. Most programs accept and process user-supplied data
The fundamental processes utilized by a program are called algorithms
Algorithms are mechanical computational procedures and are at the heart of the program
These algorithms must be developed by the human creativity of the programmer, and the program therefore cannot contain any algorithms not already considered by humans.
Although a computer cannot think or develop algorithms, it can execute them faster and more accurately than any human possibly could
Patenting of Computer Programs
Here the most important case-laws or rather the jurisprudence has emanated from the U.S.A
The principal source of patent law in U.S is the Patents Act or specifically S. 101 which defines the scope of patentable subject matter, S.101 deals with products, processes etc
Thus in the light of S. 101, the only aspects of computer programs that are eligible for patent protection are the algorithms on which they are based, algorithms can be considered as processes
Under the law of copyright source code/object code which merely implements these algorithms are considered as literary works
Patenting of Computer Programs
As a result, patent disputes involving computer programs revolve around the question whether the algorithms underlying the program are eligible for a patent
What is an Algorithm?
An algorithm is a plan/method which tells us how to organize a calculation to solve a specific set of problem
The detailed organization /structure of the procedures that a machine may take to implement an algorithm results in a program
When we tell a computer what to do, you also have to choose how it is going to do, so to be very simple, an algorithm is the basic technique used to get the job done
Patenting of Computer Programs
Thus algorithms are mostly in the form of a mathematical
formula
Interestingly mathematical formula is excluded from
patentability in most of the jurisdictions
Thus the moot question is whether algorithms constitute a
patentable process or they are merely mathematical formulae
which are exempted from patentability
The courts addressed this issue for the 1st time in the case of
Gottschalk v. Benson, 409 U.S. 63 (1972)
The issue was whether an algorithm for converting decimal
numbers into binary numbers constituted patentable subject
matter
Patenting of Computer Programs
Most of the digital readings found in calculators, micro wave ovens use decimal numbers internally, but for a computer to read these devices these decimal numbers should be converted into binary numbers
Here the court held that the algorithm involved here has no substantial practical application except in connection with a digital computer
Court held that the claimed invention was not a process within the meaning of the Patents Act
The court viewed the properties / characteristics of numbers and numbering systems as a mathematical formula/phenomena of nature which is not patentable
Patenting of Computer Programs
In Parker v. Flook, 37 U.S. 584 (1978) The case involved the use of a new algorithm for
calculating alarm limits in a petroleum refining process
The patent application described a method of updating alarm limits which consists of 3 steps
1st step that measures the present value of a variable like temperature
2nd step that uses a mathematical equation/ algorithm to calculate an updated alarm limit value
Final step that adjusts the actual alarm limit to the updated value
Patenting of Computer Programs
The U.S Supreme Court held that the only novel feature of the
application was a mathematical formula/algorithm
Here Flook only teaches a formula and a possible suggestion
that it can be used in a catalytic conversion process
It doesn’t teach how to apply it to such process, for e.g. the
human operator is not taught on how to measure the variables,
how to select the margin of safety etc
Experts are of the opinion that had Flook revealed how to
measure the variables, how to select the appropriate values of
safety margin and drafted the claim as a step that controls the
petrochemical process, then it might have been patentable
Patenting of Computer Programs
Diamond v. Diehr, 450 U.S. 175 (1981)
The patent involved a process for treating / curing rubber
Diehr invented a new process for curing synthetic rubber which was based upon a mathematical algorithm
To get the finest quality of synthetic rubber the curing time should not be too long or too short
Thus temperature inside the mould cavity played a crucial role in any curing process
In the present invention Diehr used temperature sensors to monitor the heat inside the moulding chamber
Patenting of Computer Programs
This information on temperature was fed to a computer, which
in turn used a program based on an algorithm to calculate the
curing time
The computer then signals precisely when to open the chamber
to get the finest synthetic rubber
In this case the US Supreme Court developed a 2 point test
Firstly it has to be determined whether the mathematical
algorithm is either directly or indirectly recited by the claim, if
the answer is yes
Then it has to be determined whether the claim is a mere
recitation of the mathematical formula, if it is, then no patent
can be granted
UNNI NALSAR
Patenting of Computer Programs
In the present case the court found that the claim had infact
applied the mathematical formula in a device / process which
provided a solution that directly affects the physical elements
Here the end product is not a mere number, it is an applied
solution that directly resulted in the manufacturing of high
quality synthetic rubber
Thus patent was granted
Patenting of Computer Programs
Arrhythmia Research Technology, Inc v. Corazonix Corp.
22 US PQ 2d. 1033 (Fed. Circuit,1992)
Patent concerned here pertains to the analysis of e.c.g. signals to determine certain characteristics of heart function
This claim was for the method of analysing the presence or absence of particular signal emanating from a patients heart
For this e.c.g signals were first transformed into digital signals and processed using a computer programme which was based on an algorithm to find out whether the patient is at a high risk for a dangerous heart condition (ventricular tachycardia)
The resultant output is not an abstract number, but is a signal related to the patient's heart, thus the patent was held valid
Patenting of Computer Programs
Re Alappat, 31USPQ 2d. 1545 (Fed. Circuit,1994)
Invention pertained to a device which was meant for creating a smooth wave form display in a digital oscilloscope
Oscilloscope is a device which can display graphs, it draws the graph of an electric signal and looks like a small TV set
It is used by everyone from electricians to medical professionals
Neurologists/ cardiologists use it to measure brain/heart waves
In certain patients where the heart beat is slow the signal changes much faster and then the picture of the wave becomes difficult to see
Alappat invented device to solve this problem which used a program that was based on an algorithm , finally the patent was granted
Patenting of Computer Programs
State Street Bank & Trust Co. v. Signature Financial Group, 47 U.S.P.Q. 2d 1596 (Fed. Circuit, 1998)
In this case Signature’s patent called “Data Processing System for hub and spoke financial services configuration” pertained to a data processing system which used a computer program
The said computer program was used for monitoring, calculating and recording the information involved in a financial arrangement called “hub and spoke” configuration
In this case the claimed invention involved a program that is closely tied to a business model
A clear distinction has to be made between the business method and software that signature invented to do business
Patenting of Computer Programs
Under this business model, mutual funds (spokes) would pool
their assets into an investment portfolio (hub) organised as a
partnership
This model provided the administrator of the mutual funds
with 2 advantages, firstly the economies of scale in
administering the investments, secondly the tax advantages of
a partnership
The data processing system processed the data regarding the
assets in the portfolio of each of the funds, daily incremental
expenses, income, allocation of share in percentage that each
fund holds in the portfolio etc
Patenting of Computer Programs
The court held that transformation of data
representing discreet dollar amounts by a
machine into a final share price,
constitutes a practical application of a
mathematical algorithm because it
produces a useful, concrete and tangible
result
Thus the patent was held to be valid
Latest Case: In re Bilski (Federal Circuit N0. 2007-
1130, en banc, decided on 30th October 2008),
The Federal Circuit has affirmed the PTO's Board of Patent Appeals finding that Bilski's claimed invention which dealt with a method of hedging risks in commodities trading, does not satisfy the patentable subject matter requirements of 35 U.S.C. § 101.
In doing so, the nine-member majority opinion spelled out the "machine-or-transformation" test as the sole test of subject matter eligibility for a claimed process
In State Street, the Federal Circuit used the "useful, concrete, and tangible result" of a process as a touchstone for patentability.
In Bilski, the en banc panel found the State Street formulation "insufficient to determine whether a claim is patent-eligible under § 101."
In re Bilski (Federal Circuit N0. 2007-1130, en
banc, decided on 30th October 2008),
The Federal Circuit reiterated the viewpoint of the
Supreme Court that enunciated a definitive test to
determine whether a process claim is tailored
narrowly enough to encompass only a particular
application of a fundamental principle rather than
to pre-empt the principle itself.
A claimed process is surely patent-eligible under §
101 if: (1) it is tied to a particular machine or
apparatus, or (2) it transforms a particular article
into a different state or thing.
Bilski v Kappos
Bilski Vs. Kappos (2010)
US Supreme Court affirmed that Bilski’s risk-management
method was not the type of innovation that may be patented.
However, it rejected the machine-or-transformation test as a sole
test of patentability
The Court's opinion in this case is seen as moderating the
machine-or-transformation test requirement instated by the
Federal Circuit
Alice Corp. v. CLS Bank International ( US Supreme Court
June 2014)
Alice held the patent for a computer-implemented, electronic
escrow service for facilitating financial transactions
Alice Corp. v. CLS Bank International,
2014
A consortium of banks led by CLS Bank challenged this
patent
Supreme Court held that the patents are invalid because
the claims were drawn to an abstract idea, and
implementing those claims on a computer was not enough
to transform that idea to a patentable invention
Supreme Court "reaffirmed that merely adding “a generic
computer to perform generic computer functions” does not
make an otherwise abstract idea patentable
Court opined that an abstract idea along with a computer
doing what a computer normally does is not something the
patent system was designed to protect.
Patenting of Computer Programs
Patentability in Europe
Vicom /Computer related invention
This case pertains to an application before the European Patent Office (EPO), for an invention relating to digital image processing
The said imaging process was based on an algorithm
Here the images of physical/ simulated objects were generated and reproduced with the help of a computer program
Thus the imaging process is related to a method of obtaining/reproducing an image of a physical / simulated object which has a lot of industrial application especially in CAD/ CAM operations
Patenting of Computer Programs
Here the EPO held that a claim that is directed towards a
technical process ,which is carried out under the control of a
program is patentable
Thus the subject matter of the invention is the technical effect
produced by the operation of the computer program, the that
technical effect should be patentable as long it satisfies the
other conditions for a patent
The patent granted in relation to the technical effect is not the
patent for the program as such and it shouldn’t make any
difference whether or not novelty resides in the program itself
This seems to be a logical approach, otherwise any new and
inventive technical effected by a mechanical method will be
patentable and one implemented by a computer is not
Patenting of Computer Programs
IBM / Document abstracting and retrieving,
(1990) EPOR 98
Here the patent application was for a method of
automatically abstracting storing and retrieving
documents in a computer
Here the EPO held that ,if the only conceivable use of a
program is running it in a computer, then there can be no
patent
It is often said that the intellectual effects like storing,
abstracting are not patentable while the industrial effects
are patentable as demonstrated in the Vicom case
UNNI NALSAR 24
Patenting of Computer Programs
IBM Application (1999) RPC 861
IBM applied for a patent for a data processing system
Here a program was used to display information in windows, in such a way that when any information displayed in one window is obscured by a second window then one window will move to a new unobscured position
Apart from this , IBM applied for the computer program product itself
The patent was granted by the EPO but the claims pertaining to the computer program product were rejected, IBM appealed
Patenting of Computer Programs
The Board of Appeal held that computer program product may
have a potential technical effect which the program possesses
Thus it would be illogical to grant a patent for the method of
using the program and the apparatus (computer) adapted for
using the program, while not giving protection to the computer
program product which consists of all the features needed for
the functioning of the method and apparatus
This would men that as long as a computer program is
technical, the medium on which it is recorded is immaterial, it
can be a floppy, chip , CD or a flash drive
This might mean that a program may be patentable as such,
provided it produced a desired technical effect when run on a
computer
Patenting of Computer Programs
Position in U.K.
In U.K. the earlier approach followed was to find out whether
the machine without taking the computer program into account
adds anything to the state of art
If the only novel/inventive step resides in the computer
program then the machine or data processing system as a
whole is not patentable
In Re Merrill Lynch Application (1988) RPC 1
The invention related to an improved data processing system
for implementing an automatic trading market for securities
The system received and stored the best current bids, produced
reports of trade particulars for customers ,monitored stock,
inventory and profit etc
Patenting of Computer Programs
The application was rejected by the examiner, because there
was no practical or technical effect, (it was also hit by the
business method exception)
In addition courts in U.K. looked upon the operations
performed by a computer program as some sort of a mental act
Raytheon Co. Application (1993) RPC 427
The invention was for an automated process for identifying
ships from a silhouette which was then matched against a
database of known ships
This application was rejected on the basis that it was a method
of performing a mental act
Patenting of Computer Programs
Fujitsu’s Application (1997) RPC 608
A computer related invention which enabled chemical
researchers to produce digital models of hybrid chemicals
were not patentable
Although the invention saved considerable time/ effort for
researcher, it was held that there was no technical effect
Thus in U.K. an ordinary computer program used in a general
purpose computer is not patentable
In 1999 the UK Patent Office has changed its practice to come
into line with that of EPO on computer program inventions
Patenting of Computer Programs
Aerotel Ltd v Telco Holdings Ltd & others and Macrossan's Patent Application [2007] RPC 7 , the UK Courts have laid down a 4 point test,
1. properly construing the claim;
2. Identifying the actual contribution;
3. asking whether it falls solely within the excluded subject matter; and
checking whether the actual or alleged contribution is actually technical in nature.
The decision of the Court of Appeals in Symbian Ltd v Comptroller General of Patents [2008] EWCA Civ 1066; [2008] WLR (D) 310 has liberalized the UK regime dealing with software patents
Symbian Ltd v Comptroller General of Patents
The patent application concerned a method of accessing data in a dynamic link library in a computing device
The Court of Appeals held that it was not excluded from registration under s 1(2)(c) of the Patents Act 1977 on the ground that it related to a computer program “as such”, since it involved a technical contribution to the prior art which would enable computers and related devices to work faster and more reliably.
The patent dealt with “Mapping dynamic link libraries in a computing device”.
Dynamic link libraries (DLLs) were used as a means of storing functions common to a number of different applications, so that they were only required to be stored once.
Symbian Ltd v Comptroller General of Patents
The program concerned a method of overcoming certain problems associated with the prior art in accessing DLLs and would enable a range of devices, including computers, cameras and mobile phones, to work faster and more reliably
Court of Appeals noted that the effect of the alleged invention was not merely within the computer programmed with the relevant instructions.
The beneficial consequences of those instructions would feed into the cameras and other devices and products which included computer systems.
In other words the Court of Appeal stated that a method of accessing data in a dynamic link library in a computing device was not excluded by reason of being a computer program from registration as a patent as it involved a technical contribution which would enable computers to work faster and more reliably
UNNI NALSAR
Patenting of Computer Programs
In India as per the Sec 3 of the Patents Act (2002
Amendment), computer program per se is not
patentable
This would mean that a computer implemented
invention which adds a new and inventive technical
effect which can be applied industrially may be
patentable
As of now no case laws have are available in India
Software Patents: Claim Drafting
Dr. V.K. Unni
Asst. Professor-Law
NALSAR University of Law, Hyderabad
www.nalsar.ac.in
E-mail: [email protected]
Claim Drafting
Before drafting claims for an invention, the most important task for the author is to understand what the invention is and how it works
Claim drafters should not be in such a hurry to draft claims that they skip the step of understanding the technology and the invention
A patent attorney should also be aware of the prior art, enabling him or her to distinguish the invention from the prior art
In fact, the author must really understand the state of the prior art to ascertain what the invention is, and what it is not.
Patenting of Software
Understanding the invention also includes understanding what the presently preferred embodiments are, and what the best mode is
Several important questions should be asked of the inventor: How will the invention be packaged?
Will it be packaged and/or distributed with other pieces of software and/or hardware? Are the customers of this product consumers or other manufacturers?
For example, if an invention is targeted at consumers, to be distributed on CD-ROMs, a few claims directed toward the CD-ROM, the functional data stored thereon, and the interrelationships between the data should be included.
Patenting of Software
On the other hand, if the software to be patented is only to be distributed with a specific piece of hardware e.g., the software that runs on a processor in a VCR, then such a data structure claim to a storage medium may be unnecessary
In drafting claims for software, try to connect the invention to the real world
Make it clear to the Examiner, judge, and jury the invention's real-world application.
If the claims read like a mathematical formula, they probably do not have enough material supporting a practical application of the invention.
Patenting of Software
The detailed description of a patent must provide support for the claims. Therefore, at least some of the broad claims should be written before the detailed description is drafted
A useful tool to use while drafting claims is to draw claim diagrams to aid in understanding the invention.
Claim diagrams usually consist of several circles or boxes connected by lines
The circles represent the claimed elements, and the lines interconnecting them represent the claimed relationships between the elements.
Claim diagrams are simple to make from an existing claim.
Patenting of Software
Each element or sub-element is drawn as a circle or box and
labeled
Each relationship between elements or sub-elements is drawn
as a line between the related elements and labeled with a name
indicating the type of relationship
Claim diagrams are beneficial because the reader can "see"
what is being claimed
When claims are completed, the author also has a rough draft
of the sketches needed for the patent application
Patenting of Software
Method Claims
Method claims are defined in terms of operations performed
Because method claims are intended to define the steps performed and not the hardware, they need not be tied as closely to the disclosed structure as the apparatus claims should be.
Where the hardware is not unique, method claims should dominate, for e.g., if a computer program runs on any IBM PC compatible computer running Microsoft Windows XP, the method claims should dominate the claim set because novelty is in the computer program alone.
Patenting of Software
Thus, a method claim is more capable of cleanly claiming and
protecting a computer program without unnecessarily limiting
its application to a particular piece
Apparatus Claims
On the other hand, an apparatus claim is usually tied much
closer to a piece of hardware
If method claims have already been drafted for the invention,
drafting corresponding apparatus claims is relatively simple
and can be done by simply prefacing each step with "means
for
Patenting of Software
Data Structure Apparatus Claims
A data structure claim is a modification of an apparatus claim
directed toward some aspect of the data embodied on a
computer-readable medium (e.g., a CD- ROM, hard drive,
memory, and the like).
These types of claims are are often narrower than a method or
apparatus claim for the same invention.
Unless a data structure claim is written carefully, or is really a
method or apparatus claim in disguise, designing around the
claim to avoid infringement is easy.
Patenting of Software
Diamond v Diehr Claims
A method of operating a rubber-molding press for precision molded compounds with the aid of a digital computer, comprising:
providing said computer with a data base for said press including at least,
natural logarithm conversion data (ln),
the activation energy constant (C) unique to each batch of said compound being molded, and
a constant (x) dependent upon the geometry of the particular mold of the press,
Patenting of Software
initiating an interval timer in said computer upon the closure
of the press for monitoring the elapsed time of said closure
constantly determining the temperature (Z) of the mold at a
location closely adjacent to the mold cavity in the press during
molding,
constantly providing the computer with the temperature (Z),
repetitively calculating in the computer, at frequent intervals
during each cure, the Arrhenius equation for reaction time
during the cure, which is ln v = CZ+x, where v is the total
required cure time,
Patenting of Software
repetitively comparing in the computer at said frequent intervals during the cure each said calculation of the total required cure time calculated with the Arrhenius equation and said elapsed time, and
Opening the press automatically when a said comparison indicates equivalence.
Although the process employed a well-known mathematical equation, the claims did not "pre-empt the use of that equation."
"Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process."
Patenting of Software
The Court enumerated the real-world, physical steps involved in the claims as including "installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time
Claims of the Signature Financial Corporation’s patent
A data processing system for managing a financial services configuration of a portfolio established as a partnership, each partner being one of a plurality of funds, comprising:
(a) computer processor means for processing data;
(b) storage means for storing data on a storage medium;
Patenting of Software
(c) first means for initializing the storage medium
(d) second means for processing data regarding assets in the portfolio and each of the funds from a previous day and data regarding increases or decreases in each of the funds, assets and for allocating the percentage share that each fund holds in the portfolio;
(e) third means for processing data regarding daily incremental income, expenses, and net realized gain or loss for the portfolio and for allocating such data among each fund;
(f) fourth means for processing data regarding daily net unrealized gain or loss for the portfolio and for allocating such data among each fund; and
Patenting of Software
(g) fifth means for processing data regarding aggregate year-
end income, expenses, and capital gain or loss for the portfolio
and each of the funds.
Thank You Very Much
Dr. V.K. Unni
Asst. Professor-Law
NALSAR University of Law, Hyderabad
www.nalsar.ac.in
E-mail: [email protected]