Software Patents

Software patents By Arun K Narasani Brain League IP Services

© 2009 Brain League IP Services Pvt. Ltd.

Patent Amendment Ordinance 

Patents (Amendment) Act 2002, specifying as excluded subject-matter: 

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3(k) a mathematical or business method or computer programme per se or algorithms;

by new clauses (‘04): 

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3(k) a computer programme per se other than its technical application to industry or a combination with hardware; 3(ka) a mathematical method or business method or algorithms;

Software patents         

Intel Corp. USA, No. 192439, "A method of processing a request and a computer system and microprocessor therfore", 2004-04-24 Siemens, Germany, No. 193501, "Method for cashless payment", 2004-07-24 Canal + Societe Amonyme, France, No. 193654, "Method of download data to an MPEG receiver/decoder and an MPEG receiver/decode", 2004-07-31 Siemens, Germany, No. 181381, "Method for transmission of digital signals in time division multiplex channel from via a ATM transmission device.", 2004-11-29 Interl Corp, No. 192590, "Method for providing content interruption", 2004-05-08 Sun Microsystems Inc., 193708, "A computer implemented process for processing a computer program and a computer program product therefore", 2004-08-07 Siemens, Germany, No. 194407, "A method for offering announcement in a communication network and the communication network thereof", 2004-10-30 Siemens, Germany, No. 194087, "Method for transmission of data between a terminal and portable data carrier over a wireless electromagnetic transmission stretch", 2004-09-25 Sun Microsystems, US, No. 194159, "An interactive computer assembly for implementing message dispatch for an object oriented program and method therof", 2004-09-25

IPO 

..if however the format of the program, or the nature of the record medium (tape, disc etc.) necessitated some non-standard adaptation to the computer itself (this factor being integral to the invention and not an arbitrary unrelated addition) then the exclusion would not apply.

IPO 

If the implementation of a new program requires internal modification to a computer of such a nature that it may reasonably be regarded as a new computer then clearly a claim to this computer is not excluded .. the modification must however be inventive itself ..

IPO 

..a novel solution to a problem relating to the internal operations of a computer, although it may comprise a program or subroutine, will also necessarily involve technological features of the computer hardware or the manner in which it operates and thus, if appropriately claimed, may be patentable.

IPO 

…computer program product is claimed as “A computer program product in computer readable medium”, “A computer-readable storage medium having a program recorded thereon”, etc. In such cases the claims are treated as relating to software per se, irrespective of the medium of its storage and are not held patentable.

USPTO 

Computer-related non-statutory subject matter Functional descriptive material  Nonfunctional descriptive material 

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Both types are non-statutory when claimed as descriptive material per se

USPTO 

Since a computer program is merely a set of instructions capable of being executed by a computer, the computer program itself is not a process and USPTO personnel should treat a claim for a computer program, without the computerreadable medium needed to realize the computer program's functionality, as nonstatutory functional descriptive material.

USPTO 

When functional descriptive material is recorded on some computer-readable medium, it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized.

USPTO 

Example 

…a claimed computer-readable medium encoded with a data structure defines structural and functional interrelationships between the data structure and the computer software and hardware components which permit the data structure's functionality to be realized, and is thus statutory.

EPO 

… although methods for doing business, programs for computers, etc., are as such explicitly excluded from patentability, a product or a method which is of a technical character may be patentable, even if the claimed subject-matter defines or at least involves a business method, a computer program, etc.

EPO 

…a computer program is considered to have a technical character, if it causes, when run on a computer, a technical effect which may be known in the art but which goes beyond the "normal" physical interactions between program and computer. Such effect may, for example, be found in the control of an industrial process or in the internal functioning of the computer itself.

EPO 

A patent application for an Internet auction system was not granted because the system used conventional computer technology and computer networks - which meant it made no inventive technical contribution to the level of existing technology. Such a system may provide business advancement to its users, but that is not the type of advancement required by the EPO.

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On the flip side, the problem of improving signal strengths between mobile phones is a technical problem, even if it is solved by modifications to the phone software rather than its hardware. Such an invention would obtain a patent, provided that the solution is also novel and inventive.

JPO 

To be qualified as a "statutory invention" prescribed in the Patent Law, the claimed invention shall be “a creation of technical ideas utilizing a law of nature.”

JPO 

Example: A computer to calculate the minimum value of formula y=F(x) in the range of a<=x<=b.

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Rationale It cannot be said that the information processing to calculate the minimum value of formula y=F(x) is concretely realized by the fact that the computer is used "to get the minimum value of formula y=F(x) in the range of a<=x<=b." This is because information processing to calculate the minimum value of formula y=F(x) and the computer cannot be said to be cooperatively working by only saying "a computer to calculate the minimum value..."

JPO 

Examples that are patentable: control of an apparatus (rice cooker, washing machine, engine, hard disk drive, etc.), or processing with respect to the control; or  information processing based on the physical or technical properties of an object (rotation rate of engine, rolling temperature, etc.); 

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these examples constitute "a creation of technical ideas utilizing a law of nature."

EU/India/Japan 

An invention enabling receipt of orders via the Internet, for instance, which were taken by fax or telephone in the past, will not be regarded as having inventive step

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Assumed to be within the scope of ordinary creative activity of a person skilled in the art

Mode of operation 

US: best mode of operation 

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Europe/Japan: at least one mode of operation 

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Need not update the best mode

Enable person skilled in the art to make the invention

India: best mode of operation

Computer programs 

US: Program claims are allowed  Good description of structure and operation of program  Snippets of source code helps 

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EU/India/Japan: 

Mere program claims are not allowed

Complex software applications 

Include function block diagrams Hardware illustration  Structure of the software 

 Files

and/or functional modules

Business Methods 

US/Japan: Business methods are patentable  Mere automation of an existing method is not patentable 

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EU/India: Business methods are part of exclusions  If needed, claim the method as technology  “technical character” dominates 

Patentability Novel  Useful  Non-obvious 

Claim specifics 

Scope of protection Equivalence  File wrapper estoppel 

General claim strategies 

Diversity of claims in scope Narrow/medium/broad  Harder to invalidate 

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Different claim formats System claim  Computer readable medium 

Claim specifics 

Avoid using words that narrow the interpretation 

Critical, must, required, necessary, only, always, never

“Comprise” better than “consisting of” or “which consist of”  “a”/”an” 

General claim strategies 

Focus on physical aspects of the invention Apparatus or machine claims  Physical transformation for process claims  Avoid overly broad statement without any limitation to a specific use 

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Built-in responses/fall back positions 

Obviousness or non-inventive rejection