patentabilityof software & business methods
TRANSCRIPT
Presented by:NISHANT KEWALRAMANI
Brain League IP Services Pvt. Ltd. Now BananaIP
© Brain League IP Services Pvt. Ltd.now BananaIP
SUBJECT MATTER REQUIREMENT
US & EUROPEAN POSITIONS
INDIAN GUIDELINES
© Brain League IP Services Pvt. Ltd
INVENTIONS
Subject MatterUsefulness
Novelty
Non-obviousness
Specification
PATENTS
Patent Filter Model
USA- ◦ Process, machine, manufacture, composition of
matter and Improvements.
INDIA-◦ Product or Process
© Brain League IP Services Pvt. Ltd
EXCLUSIONS: Abstract Ideas Physical Phenomenon Laws of Nature Mental Steps Mathematical algorithm Business Methods Computer program per se (Only for India)
USA
State Street Bank v. Signature Financial Corp.◦ Hub and spoke- mutual fund model◦ Useful, concrete, tangible result test
AT&T Corp. v. Excel Communications◦ PIC (Primary Interexchange Carrier) for long distance
calls◦ Identifies specific callers PIC- indicating service
provider◦ Helps in calculation of bills etc.◦ Upheld useful, concrete tangible test.
In Re Bilski◦ Hedging of risks in commodity trading◦ E.g. coal industry◦ Machine or Transformation test
There should be a structural limitation; ORShould change a physical tangible object from one form to another
Public or private legal obligations
Relationships
Business risks
Any transformation related to these is not covered
Claim for predicting future values:1.Algorithm – the sequence of steps without
any specific application or result.2.Relating to mechanical behavior of subway
trains.3. Relating to risks in mutual fund
investments.
Software/Process should be tied to machine that can be touched
Should bring about a transformation in a physical tangible object.
Something representing a physical tangible object is also allowable subject matter. (X-ray of a bone)
Meaningful limitation to the claim necessary◦ Field of use limitation not sufficient
Should be more than insignificant extra-solution activity◦ Not central to the purpose of invention◦ E.g. data gathering as explicit limitation when it is
compulsory to gather data for the invention to work.
EUROPE
Article 52 EPC◦ 52 (2) (c) ◦ “schemes, rules and methods for performing
mental acts, playing games or doing business, and programs for computers”
Vicom Judgment◦ Digital manipulation of image data◦ Technical contribution◦ EPO said patent allowed
Existence of a technical problem
Solution to the problem constitutes the technical contribution of the invention.
This technical contribution should be checked against the patentability criteria.
Aerotel Judgment◦ “Special
Telephone exchange”
◦ Caller has account with this exchange for credit deposit
◦ Correct code + enough credit caller can call.
Four step approach:
1. Properly Construe the Claim2. Identify the actual contribution3. Ask whether it falls solely within the excluded
subject matter4. Check whether the actual or alleged contribution
is actually technical in nature.
Invention considered patentable subject matter
Dynamic link library related invention Linking by ordinal- problem may occur due
to upgradation as ordinals may point to the wrong function programs.
Invention- Split dynamic link library in two parts◦ Existing functions part◦ Future functions part
Technical contribution is the core test
Interpreted Aerotel to mean that if the contribution, though purely made to a computer software, enhances the functioning of other hardware such as cameras etc. then technical contribution test is satisfied.
INDIA
Section 3 (k)◦ A mathematical or business method or computer
program per se
Software per se is not patentable
Software per se to be differentiated from software.
A technical process where process is carried out under the control of a program.
Technical applicability + hardware component
E.g.
◦ “a method for processing seismic data, comprising the steps of collecting the time varying seismic detector output signals for a plurality of seismic sensors placed in a cable”
