Patentability of Computer Related Inventions (CRIs) in India

Patentability of Computer Related InventionsPresented by,Arun Narasani, Founder, ipMetrix Consulting Group

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Arun NarasaniFounder, ipMetrix Consulting Group (www.ipmetrix.com)

More than 10 years experience as an IP professional More than 5 years experience as a software engineer Vast experience in writing and prosecuting applications

Registered patent agent Certified Valuation Analyst Certified TRIZ Practitioner

Published journal articles in technology and law Co-authored a book on Indian Patent Law

B.Tech, IIT Madras PGPEM, IIM Bangalore

Agenda

2 Review of MPPP

1 Evolution of patent law and definitions

3 Case law

4 Allowable and non-allowable subject matter

5 Observations and summary

Agenda

2 Review of MPPP


3 Case law



Patents Act, 1970 and Amendments

Patents Act, 1970 First Act post independenceCame into force in 1972Three amendments were passed, all of them primarily

aimed at bringing India’s patent regime into compliance with the WTO TRIPs Agreement

Patents (Amendment) Act, 1999Provided for filing of applications (date stamping) for

product patents in the areas of drugs, pharmaceuticals, and agro-chemicals with retrospective effect from Jan 1, 1995

Patents Act, 1970 and Amendments

Patents (Amendment) Act, 2002 Introduced the new patent rules, 2003Amended the definition of “invention”

Patents (Amendment) Act, 2005 Introduced compulsory license provisions relating to export

of patent pharmaceutical products in exceptional circumstances

Amended the definition of “inventive step”

Patents Act, 1970

Introduced the definition in Section 2(1)(j):"invention" means any new and useful

(i) art, process, method or manner of manufacture(ii) machine, apparatus or other article(iii) substance produced by manufacture

Patents (Amendment) Act, 2002

Amended definition in Section 2(1)(j):"invention" means a new product or process involving an inventive step and capable of industrial application;

Introduced definition in Section 2(1)(ja):“inventive step” means a feature that makes the invention not obvious to a person skilled in the art;

Introduced exclusion in Section 3(k):A mathematical or business method or a computer

programme per se or algorithms

Patents (Amendment) Act, 2005

Amended the definition in 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

Agenda

2 Review of MPPP and examination guidelines for CRIs


3 Case law



Examination procedure

MPPP 08.03.05.10(e):

Patent applications, with computer programme as a subject matter, are first examined with respect to

‘Mathematical Methods’, ‘Business Methods’, and ‘Algorithms’ exceptions.

Examination procedure

MPPP 08.03.05.10(f):

If the claimed subject matter in a patent application is only a computer programme, it is considered as a computer programme per se and hence not patentable.

Claims directed at ‘computer programme products‘ are computer programmes per se stored in a computer

readable medium and as such are not allowable.

CRI Examination Guidelines

Section 3.15 – Technical Effect:

“It is defined for the purpose of these guidelines as solution to a technical problem, which the invention taken as a whole, tends to overcome. A few general examples of technical effect are as follows:

• Higher speed• Reduced hard-disk access time• More economical use of memory• More efficient data base search strategy• More effective data compression techniques• Improved user interface• Better control of robotic arm• Improved reception/transmission of a radio signal”


Section 3.16 – Technical Advancement:

“It is defined for the purpose of these guidelines as 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. Technical advancement comes with technical effect, but all technical effects may or may not result in technical advancement.”


Section 5.4.6 – Determination of excluded subject matter:

“A computer programme which may work on any general purpose known computer does not meet the requirements of the law. For considering the 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.”

Agenda

2 Review of MPPP


3 Case law



Yahoo Inc Vs. Assistant Controller of Patents and Designs

Patent application relates to methods for retrieving search results based on bid amounts placed by advertisers

Rediff.com files pre-grant opposition on the application

Patent office rejects the patent application because invention does not pass novelty and patentability test

Yahoo appeals and the appeal is heard by IPAB


Independent claim:A method of operating a computer network search apparatus for generating a result list (710) … the search apparatus comprising a computer system (22, 24) operativelyconnected to the computer network and the method comprising:

storing a plurality of items (344) in a database (38, 40), …;receiving a keyword entered by a user though an input device (12);searching the stored items (344) and identifying items representing a match

with the key word entered by the user;ordering the identified items ….;receiving a request from the user ….;charging to an account …; andproviding information providers (302) with authenticated login access ….;

wherein the computer system (22, 24) sends an indication of the status of the information provider’s account to the information provider (302) in response to the occurrence of a predetermined condition.


After review, the Controller concludes that “the invention is only a business strategy and hence is not patentable.”

Controller further explains that:When the patentee explains that there is an inventive step which is a technical advance compared to theexisting knowledge (state-of the-art) or that it has economic significance that would not give him the right toa patent as such. ‘’The inventive step” must be a feature which is not an excluded subject itself.

ENRI et. al. Vs. Controller of Patents and Designs, and others

Patent application relates to methods for calculating chaos theoretical exponent value (CTEV) at a high speed and on a real time basis, and to calculate a CTEV from a time series signal which includes noises, which was previously not possible

Invention has potential applications in voice processing

Applicant does not agree with the objections provided in the examination report

Applicant appeals


Independent claim:A system for analyzing speech voice signal comprising:

a reading means (xi) for reading a speech voice signal …;a cutting means (xi) for cutting out said read speech voice

signal …., wherein said calculating means x(i) for calculating a chaos theoretical exponent value comprises:

a first calculation means for calculating a chaos theoretical exponent value ….; and

a second calculation means for calculating the chaos theoretical exponent value of said speech voice signal with respect to a predetermined time ….


After review, controller concludes that:the invention which is the technical advance was itself nothing more than “a mathematical method for solving mathematical claims which are further based on various algorithms.” So the identifiable contribution was itself the excluded subject matter according to the impugned order. So the Controller held that the Indian Patent law does not allow patent for a mathematical method just because it provides a technical advance. His reasoning that merely because a mathematical method is a technical advance it cannot cross the 3(k) bar is right.

Enercon Vs. Aloys Wobben

Patent application relates to power control of wind turbines

Patent is granted to the applicant

Enercon files for revocation of patent on many grounds, on of which being applicability of section 3(k)

After back and forth, the matter is heard by IPAB. One among many considerations in the hearing is the applicability of section 3(k)


Independent claim:

“A method for controlling a wind turbine characterised in that at least one operational setting is varied within predefined limits, the variations are performed at

predetermined time intervals, and the time intervals are varied in response to predefinable ambient and/or operating conditions.”


After review of applicability of section 3(k), Controller rejects the basis for appeal saying that

An algorithm is clearly a “set of rules”. The claims of the impugned patent relate to a method for controlling a wind turbine by performing specific process steps. Neither the granted claims contain a “set of rules” nor do they seek any protection for a “set of rules”. … In this respect the first examination report submitted during the hearing may kindly be referred to and decide the matter that it is not an algorithm.

Agenda

2 Review of MPPP


3 Case law



Non-allowable subject matter

Computer Programs:

“A program for analyzing source code to detect vulnerabilities, said program embodying instructions to perform ..”

Media containing computer programs:

“A computer program product tangibly embodied in a computer readable medium, ..”


Mathematical formulae and algorithms:

“A computerized method for performing wavelet transformation on image data, said method comprising

obtaining data..creating a vector..applying a transformation vector....”


Business Methods:

“A method for generating an automated invoice in a computerized network..”

Automated real world processes:

“A method for tracking a due date of a task, said method comprising.. ”

Allowable subject matter

A novel machine/apparatus (product):

“An apparatus for delivering video stream to a connected device, said apparatus operable by a plurality of

controllers over a Wi-Fi network..”

A method involving purpose specific hardware elements (process):

“A method for streaming video content to a connected device, based on input from a controller, said method comprising .. ”

Agenda

2 Review of MPPP


3 Case law


5 Observations from practice and summary

Observations

Patent office has not been favorable to software architecture improvements

“A method for enabling services using a service oriented architecture in a network of devices …”

Patent office has not been favorable to methods relying on data structure improvements resulting in better performance

“A method for retrieving search results from a databaseengine, said method comprising …”

Observations

Patent office has been more lenient regarding inventions relating to software in embedded format: mobile devices, appliances, etc.

“A method for transliteration in a mobile communication device ..”

Summary

Software based inventions that can run on traditional computing environments like a PC are very unlikely to pass through section 3(k)

Software based inventions where software is “embedded” are more likely to pass through 3(k), even though such hardware may be available in the market

A claim cannot be directed to non-statutory subject matter like business methods and mathematical methods even though technical advancement is evident

Summary

A method enabled by a software can be claimed provided it does not follow a “set of rules” that are mathematical, and business process oriented

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