Analyzing Patentability Of Software Inventions

Anal yzing Patentability of Softwar e Inventions By Dr. Kalyan C. Kankanala Brain League IP Services

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Invention Inventor report Invention disclosure Patent search Patent application Filing Prosecution Patent Grant Patent

Patentablity Opinion

Patentability requirements Patentable subject matter Utility Novelty Nonobviousness Specification © Brain League IP Services Pvt. Ltd., 2009. Private Use is Permitted.

INVENTIONS

Kalyan’s Patent Filter Model Subject Matter Usefulness Novelty Non-obviousness Specification

PATENTS © Brain League IP Services Pvt. Ltd., 2009. Private Use is Permitted.

Patentable Subject Matter Process, machine, manufacture, composition of matter and Improvements Product or Process

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Exclusions Abstract Ideas, Physical Phenomenon and Laws of Nature. Function of a machine Mental steps Mathematical Algorithm India Computer Programs Per se

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Diamond v. Diehr Process for vulcanizing rubber Signal to open mold Physical effect Part of a process

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State Street Bank Case Hub and Spoke Software Calcuate share of profits in mutual funds Concrete, Useful and Tangible Result Business Method Exception

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Bilski Case Method of hedging risk Machine or Transformation test

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Subject Matter?

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Utility Current Substantial Credible

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Novelty Known or used Patented or published Public use or On sale Abandoned Foreign priority Patented in another country © Brain League IP Services Pvt. Ltd., 2009. Private Use is Permitted.

Novelty Derived Suppressed or Concealed Diligence Single prior art reference

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Nonobviousness Scope of prior art Differences- invention and prior art Level of ordinary skill Secondary Indicia At the time of conception Obvious to try © Brain League IP Services Pvt. Ltd., 2009. Private Use is Permitted.

Secondary Indicia Commercial Success Copying Praise by expert Unexpected results Long felt need

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Specification Written Description Enablement Best Mode Claims Object: Notice and Dissemination © Brain League IP Services Pvt. Ltd., 2009. Private Use is Permitted.

Analyzing Patentablity

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European Patent Convention

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Patent Law European Patent Convention Implementing Regulations EPO Decisions Directive

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Article 52 Invention Exclusions “As such” Mathematical methods Business methods Mental acts Computer programs © Brain League IP Services Pvt. Ltd., 2009. Private Use is Permitted.

VICOM Case Apparatus and process for digitally processing images Application of mathematical method Not Computer program as such Patentable

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IBM Case Computer Program Product Technical Character Make computer hardware function in a particular way Patentable

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ATT Case Concrete Software from Specifications Automation of certain steps - Call for necessary modules Held - Not Patentable No technical character Automation of mental steps of a programmer

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HITACHI Case Method of automatic auction Mix of technical and non-technical steps Held-Subject Matter Prior Art must not be considered

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PITNEY BOWES Case Method of Physical/Electronic mail delivery system Held - Patentable Subject Matter Not precluded under Article 52

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President’s Referral Computer program General Purpose computer Specific device Technical Effect Technical Character

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Example A software for analyzing ECG data remotely. Is it patentable in Indis, USA and Europe?

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Thank You

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