The India Patents Act, 1970 and Software Patentability --------------------------------------------------------------------- MIP India IP & Innovation Forum New Delhi | March 07, 2013 Akhilesh K Guptawww.paai.org.in President Patent Agents Association of India
Legal ProvisionsSection 2(1)(j)"invention" means a new product or processinvolving an inventive step and capable ofindustrial application;Section 3(k)A mathematical, or business method or acomputer programme per se or algorithms arenot inventions and hence not patentable. Patent Agents Association of India | www.paai.org.in
Section 3(k): Problems All computer implemented product/ process(“software”) are not mathematical, businessmethods, computer program per se andalgorithms. Softwares are more or less related tomathematical methods and/ or algorithms, so isit an end of the software patent? If no, a line should be drawn to distinguishthe patentable and un-patentable subjectmatter. Patent Agents Association of India | www.paai.org.in
Solutions: Understanding softwares A software professionals view describesvarious types of softwares based on thenature 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 methematical methods or business methods Patent Agents Association of India | www.paai.org.in
Solutions: Types of Softwares Patent Agents Association of India | www.paai.org.in
Solutions: Case LawsBusiness methodsYahoo vs Controller and Rediff.com, the IPABconcluded, “This is nothing but doing theadvertisement business electronically...technical advance that is claimed ... is only animprovement in the method of doing businessand S.3(k) is clear that business methodcannot be patented, ... Therefore, we affirmthat this ground alone is sufficient to reject thepresent application.” Patent Agents Association of India | www.paai.org.in
Solution: InterpretationMathematical methods - Is it referring to a softwareimplementing one or moreestablised mathematicalmethods ? e.g vector graphicsapplication.Algorithms - Is it referring to a software implementingone or more establised algorithms. e.g encrption/ decryption software implementing DES algorithm. Patent Agents Association of India | www.paai.org.in
Solution: Case Laws (Contd..)Mathematical methods& Algorithms In a case of Cybersource v. Retail Decisions,654 F.3d 1366 (Fed. Cir. 2011) The Court ruled that no-patenting-math ruledoesnt apply if the math in question compli-cated enough that "as a practical matter, theuse of a computer is required" to perform thecalculations. Patent Agents Association of India | www.paai.org.in
Solutions: Case Laws (contd..) Citing a previous case Research Corp.Techs. v. Microsoft Corp., the court stated,“... the method could not, as a practical matter,be performed entirely in a human’s mind.In contrast, it is clear in the present case thatone could mentally perform the fraud detectionmethod ..... of the ’154 patent ... attempt tocapture unpatentable mental processes (i.e.,abstract ideas), they are invalid under § 101.” Patent Agents Association of India | www.paai.org.in
Solutions: Case Laws (contd..)In a recent order dated Nov 23rd, 2012 inthe matter of 6067/DELNP/2005 filed byMicrosoft Corp., the India Patent Office stated,“...to control a new computer to cause it toperform desired operation, without specialadoptation or modification of its hardwarecomponents, then no matter whether claimedas computing device or a method implementedin a type checking system...is not patentableu/s 3(k)... ” Patent Agents Association of India | www.paai.org.in
Solutions: Case Laws (contd..)In another recent order dated Jun 01st 2012in the matter of 965/DELNP/2004 filed byMicrosoft Corp., the India Patent Office stated,“...should clearly define the inventiveconstructional hardware features... Anapparatus claim... is a concrete product,consisting of many hardware components of ofcertain devices to perform certain funtion...claim is nothing but a method claim...no locusstand to obviate objections of 3(k)...” Patent Agents Association of India | www.paai.org.in
Solutions: Conclusion Softwares embedded with specific hardwareare patentable. (embedded system) System software may not be excludedsubject matter as it operates/controlscomputer hardwares and hence patentable.(e.g os kernel, device drivers) Business methods based software is notpatentable. Patent Agents Association of India | www.paai.org.in
Solutions: Conclusion (contd..) Mathematical methods based software maybe allowed if the mathematics or algorithm inquestion is complicated enough and may notbe implemented with pencil and paper. Computer program product i.e computerprogram code stored in a computer readablemedium is computer program per se andhence not patentable. Patent Agents Association of India | www.paai.org.in
Thank you.. Akhilesh Kumar Gupta email@example.com +919650622383 Patent Agents Association of India | www.paai.org.in
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