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ULC24

BEFORE THE HONOURABLE SUPREME COURT OF CINDIA

Civil Appellate Jurisdiction

Under Article 136 of the Constitution

SPECIAL LEAVE PETITION (CIVIL) No. ____/2015

(AGAINST THE IMPUGNED JUDGMENT AND FINAL ORDER PASSED BY THE


HONBLE HIGH COURT OF CINDIA)

In the matter of:

Futuristic Technology Corporation (FTC) (Appellant)

Versus

Rationalists International (Respondent)

UPON SUBMISSION TO THE HONBLE CHIEF JUSTICE AND HIS COMPANION


JUSTICES OF THE HONBLE SUPREME COURT OF CINDIA

MEMORIAL FILED ON BEHALF OF THE APPELLANT

COUNSEL APPEARING ON BEHALF OF THE APPELLANT


XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

TABLE OF CONTENTS

1. LIST OF ABBREVIATIONS............................................................ 3

2. INDEX OF AUTHORITIES.............................................................. 4

3. STATEMENT OF JURISDICTION................................................. 7

4. STATEMENT OF FACTS................................................................. 8

5. ISSUES FOR CONSIDERATION.................................................... 9

6. SUMMARY OF ARGUMENTS...................................................... 10

7. WRITTEN SUBMISSIONS.............................................................. 11

8. PRAYER............................................................................................. 26

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

I. LIST OF ABBREVIATIONS

S.NO. ABBREVIATION EXPANSION


1. Paragraph
2. AIR All India Reporter
3. Anr Another
4. Art Article
5. Corp. Corporation
6. Del Delhi
7. EPO European Patents Office
8. EPOR European Patents Office Reports
9. FTC Future Technology Corporation
10. FTI Future Technology Indus
11. HC High Court
12. Honble Honourable
13. IPAB Indian Patent Appellate Board
14. ITA Income Tax Authority
15. Mad Madras
16. SC Supreme Court
17. SCC Supreme Court Cases
18. SLP Special Leave Petition
19. Supp. Supplement
20. TK Traditional Knowledge
21. U.S.C. United States Code
22. UK United Kingdom
23. US United States
24. USPTO United States Patent And Trademark
Office
25. v. Versus
26. WIPO World Intellectual Property
Organisations

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

II. INDEX OF AUTHORITIES

STATUTES AND CONVENTIONS

The Constitution of India, 1950


The Indian Patents Act, 1970
U.S. Patents Act,1790
Indian Copyright Act, 1957
The Agreement on Trade-Related Aspects of Intellectual Property Rights,1995
UK Patent Act, 1949
European Patent Convention,1973

ONLINE JOURNALS

1. Manupatra Online Resources, www.manupatrafast.com


2. SCC Online, www.scconline.com
3. Law Weekly, www.thelawweekly.com
4. Lexis Nexis Legal, www.lexisnexis.com/in/legal
5. Lexis Nexis Academia, www.lexisnexis.com/academia
6. CDJ Law Journal, www.cdjlawjournal.com
7. Indian Kanoon, www.indiankanoon.com
8. US Patent Office, www.upsco.gov
9. World Intellectual Property Organisation, www.wipo.org
10. European Patent Office, www.epo.co.at

BOOKS REFERRED1

1. M P Jain ,Indian Constitution Law (6th ed. 2010)


2. Durga Das Basu, Commentary on the Constitution of India (8th ed. 2010)
3. H.M.Seervai, Constitutional Law of India (4th ed.2010)
4. V N Shukla, Constitution of India (10th ed. 2007)
5. Elizabeth Verkey, Law of Patents (2th ed. 2012)

1
19th Edition of Bluebook Mode of Citation

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

6. P. Narayanan, Patent Law (3rd ed. 1998)


7. Bentley Sherman, Intellectual Property Law (Oxford University)
8. Michael A. Epstein, Epstein on Intellectual Property(5th Ed.2007)
9. Peter K. Yu, Intellectual Property and Information Wealth
10. N.S. Bindras, Interpretation of Statutes (9th ed.)
11. S.K. Verma & Raman Mitral, Intellectual Property Rights, A global Vision (2002)
12. Dr. A.V. Narasimha Rao, Software Patents Legal Perspective

ARTICLES REFFERED

1. Robert L. Mitchell, Why Windows Should Think Small, COMPUTERWORLD,


Aug. 25, 2003, at 37
2. John S. Liebovitz, Inventing a Nonexclusive Patent System, 111 YALE L.J. 2251,
2284-85 (2002).
3. Samuelson P, Symposium: Towards a third Intellectual Property Paradigm:
Article: A manifesto concerning the legal protection of computer programs,
Columbia Law Review,2308(1994)94

LIST OF CASES REFERRED

1. Alice corp. v. CLS Bank, 958 F.2d 1053, 22 USPQ2d 1033 (Fed.Cir.1992)
2. Anand Transport & Printers v. Senior Labour Inspector, (2001) 10 SCC 452, 454
3. Arrhythmia Research Technology Inc. v. Corazonix Corp., 958 F.2d 1053, 22
USPQ2d 1033
4. Arunachalam v. Sethuratnam, P.S.R., (1979) Cr. LJ 875 ( 4) SC: AIR 1979 SC1284 :
(1979) 2 SCC 297
5. AT&T Corp. v. Excel Communications, 52 U.S.P.Q.2d 1865 (D. Del. 1999)
6. AT&T v. Excel Communications, 172 F.3d 1352 (Fed. Cir. 1999)
7. Baldota Bros. v. Libra Mining Works, AIR 1961 SC 100
8. Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, AIR 1982 SC 1444
9. Blakey & Co. v. Lathem & Co., [1889] 6 RPC 184 (CA)
10. C.C.E. v. Standard Motor Products, AIR 1989 SC 1298 : (1989) 2 SCC 303
11. Chiron v. Murex, [1996] RPC 535,607 (Morritt LJ)

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

12. Collector of Customs & Central Excise v. Oriental Timber Industries, AIR 1985 SC
746 : (1985) 3 SCC 85
13. Dhanpath Seth & ors v. Nil Kamal Plastic Crates Ltd., AIR 2008 HP 23
14. Diamond v. Chakrabarty, 447 U.S. 303, 309
15. Diamond v. Diehr, 450 U. S. 175 (1981)
16. Dipak Kumar Biswas v. Director of Public Instruction AIR 1987 SC1422 : (1987) 2
SCC 252
17. Director of Income Tax v. Infrasoft Ltd., ITA 1034/2009
18. Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45
19. Elias v. Grovesend, (1890)7RPC455 at 467
20. Enercon India Limited , Daman v. Alloys Wobben Germany, W.P No.20165 of
2010;M.P Nos. 1&2 of 20
21. Fomento v. Mentomore, 1956 RPC 87
22. Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 US 127,130 (1948)
23. Gottschalk v. Benson, 409 US 63 (1972)
24. Graham v. John Deere, 35 U.S.C. 103
25. Hallen v Barbantia, 1991 RPC 195, 212
26. Haryana State Industrial Corpn. v. Cork Mfg. Co. (2007) 8 SCC 359 (SC)

27. IBM Computer Program Product, T 1173/97, 1999 OJ EPO 609


28. Janshed Hormusji Wadia v. Board of Trustees, Port of Mumbai (2004)3 SCC 214
(SC)
29. Lallubhai Chakubhai Jariwala v. Chimanlal, AIR 1936 BOM 99 at 104-105
30. MacKay Co. v. Radio Corp., 306 U.S. 86, 94, 40 USPQ 199, 202
31. Mackay Radio & Tel. Co v. Radio Corp of Am., 306 US 86,94 (1939)
32. Parkes v. Cocker, (1929)46 RPC 241,248
33. Pawan Kumar v. State of Haryana (2003)11 SCC 241 (SC)
34. Pentec Inc. v. Graphic Controls Corp., 776 F.2d3 09 (Fed.Cir.1 985)
35. PLG Research v Ardon, 1993 FSR 197, 207
36. Santosh v. Mul Singh, AIR 1958 SC 321 : 1958 SCR 1211
37. State of Uttar Pradesh v. Harish Chandra, AIR 1996 SC 2173 : (1996) 9 SCC 309
38. State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.ed
1368 (Fed. Cir. 1998), 47 U.S.P.Q.2D 1596
39. Windsurfing International v. Tabur Marine, 1985 RPC 59

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

III. STATEMENT OF JURISDICTION

THE PETITIONER HUMBLY SUBMITS TO THE JURISDICTION OF THIS HONBLE


COURT UNDER ART 136 OF THE CONSTITUTION OF INDIA, 1950 CHALLENGING
THE VALIDITY OF REVOCATION OF PATENT BY THE HONBLE HIGH COURT OF
CINDIA. THIS HON'BLE COURT HAS JURISDICTION TO ENTERTAIN THIS
SPECIAL LEAVE PETITION.

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

IV. STATEMENT OF FACTS

1. A Multi National Company based in United States of Ramerica, namely Futuristic


Technology Corporation (FTC) invested US $100 million and established in Cindia, a
fully owned subsidiary namely Futuristic Technology Indus (FTI) for developing
software on the theme of Futurology.
2. Upon infusion of fresh funds of about US $ 50 million by the FTC, a team of the R &
D department of the FTI headed by a Physicist Dr Sriram, who has a doctorate in
Astrophysics from a prestigious US University and comes from a family of famous
astrologers; worked on the project and developed a software titled 'Future X' for
predicting what holds in the future for a man or woman based on the movement and
position of stars in the constellation.
3. The FTC - as a foreign company filed an international application for grant of patent
to the software Future X under the provisions of the Patent Act of 1970. Upon
examination, the Patent was granted and duly registered in the name of FTC. The
software Future X immediately attracted the global market earning whopping sales
revenue of US $ 200 million in six months.
4. A forum namely Rationalists International filed a Writ Petition under Art. 226 of the
Constitution challenging the grant of software patent to the FTC. The violation of
provisions of the Patents Act of 1970; particularly Sec 3 (a) and 3 (k) were alleged.
The High Court upholding the contentions of the petitioner quashed the grant of
patent to FTC.
5. Being aggrieved, a SLP was filed in the Supreme Court of Cindia under Art.136 of
the Constitution, challenging the said order of the High Court. The Supreme Court of
Cindia granted the special leave and has posted the appeal for hearing on February 28,
2016.

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

V. ISSUES FOR CONSIDERATION

1. Whether the SLP is maintainable.

1.1 Jurisdiction of SC under Art. 136 can always be invoked when a substantial question of
law arises.

1.2 The issue involves miscarriage of justice.

2. Whether the software Future X is patentable under the Act.

2.1 Whether the software Future X is violative of 3a and 3k of the Act.


2.2 Whether the patented software Future X is patentable under 3p of the Patent Act
1970.
2.3 Why computer software should be patented than copyrighted.

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

VI. SUMMARY OF ARGUMENTS

Issue 1: Whether the SLP is maintainable.

The jurisdiction of Supreme Court under Art 136 of the Constitution of India can always be
invoked when a question of law of general public importance arises. The jurisdiction of
Supreme Court can always be invoked when a question of law of general public importance
arises. In the present case, there is substantial question of law of general importance as the
HC incorrectly revoked the patent grant. Also there is grave miscarriage of justice by the HC.
Therefore this SLP under the Honble Supreme Court is maintainable.

Issue 2: Whether the software Future X is patentable under the Act.

The impugned software Future X is a TK (Astrology) derived software that involves


novelty, industrial application, and inventive step, hence is non-obvious under the Indian
Patent Act, 1970.When an invention is new, non-obvious and has industrial application, it
cannot be termed as a frivolous invention. Therefore it is patentable and does not violate
Section 3(a), 3(k) and 3(p) of the Indian Patent Act.

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

VII. WRITTEN SUBMISSIONS

ISSUE 1: WHETHER THE SLP IS MAINTAINABLE.

It is averred that SLP filed by Appellant against the judgment of the High Court that has
committed patent error in revoking the rightly granted patent for the software Future X. It is
contended that the jurisdiction of the Supreme Court can be invoked under Art. 136 when a
question of law of general public importance arises. The revoking of the patent has given rise
to substantial question of law wherein the HC has erred that has led to grave miscarriage of
justice in not considering the inventive step that is involved in creating the software. The
denial of patent to the software Future X raises a substantial question of law.

1.1 Jurisdiction of SC under Art. 136 can always be invoked when a substantial
question of law arises.

The jurisdiction conferred under Art. 136 on the SC are corrective one and not a restrictive
one.2 Ordinarily the Supreme Court does not entertain an appeal against an exercise of
discretion by the Court below it if has been exercised along sound judicial lines. But if the
discretion is exercised in arbitrarily or unreasonably, or is biased on a misunderstanding of
the principles that govern its exercise, or the order has been passed without jurisdiction, or it
there is a patently erroneous interpretation of law by the High Court as in the instant case, the
Supreme Court would intervene if there has been a resultant failure of justice.3

A duty is enjoined upon the SC to exercise its power by setting right the illegality in the
judgments is well-settled that illegality must not be allowed to be perpetrated and failure of
the SC to interfere with the same would amount to allowing the illegality to be perpetrated.4
The principle is that this court would never do injustice nor allow injustice being perpetrated
for the sake of upholding technicalities.5

The appellants have rightly approached the Supreme Court as there is grave injustice which
has to be addressed. The issue of patentability of the above mentioned software has failed to
receive the needed attention and approach. The restriction that the Supreme Court does not

2
Haryana State Industrial Corpn. V. Cork Mfg. Co. (2007) 8 SCC 359 (SC)
3
Santosh v. Mul Singh, AIR 1958 SC 321 : 1958 SCR 1211 ; Baldota Bros. v. Libra Mining Works, AIR 1961
SC 100
4
Pawan Kumar v. State of Haryana (2003)11 SCC 241 (SC); see also H.M. Seervai, Constitutional Law Of
India (4th edn. Vol 1 2010); see also Halsburys Laws of India (Vol. 35 2007).
5
Janshed Hormusji Wadia v. Board of Trustees, Port of Mumbai (2004)3 SCC 214 (SC)

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

hear an appeal from the decision of the single judge bench of the High Court, as such an
appeal ought to go to the Division Bench of the High Court is self-imposed and not a matter
ousting jurisdiction of the Supreme Court. When a High Court Judge committed a patent
error, the Supreme Court heard an appeal from the single judge.6 Therefore it is imperative
that the Supreme Court take up the issue raised and give justice.

Art. 136 is the residuary power of the Supreme Court to do justice where the Court is
satisfied that there is injustice.7 Therefore, the Supreme Court has rightly granted special
leave under Art.136 of the Indian Constitution.

Under Art.136, the Supreme Court can give whatever relief may be necessary and proper in
the facts and circumstances of the specific case. The Court has power to mould relief
according to the circumstances of the specific case.8

[Arguendo] Even if we say there is no substantial question of law, SC in this present appeal
can entertain this present appeal. Art.136 uses the wording in any cause or matter. This
gives widest power to the Court to deal with any cause or matter, even if it involves question
of facts.

1.2 The issue involves miscarriage of justice

The patent for the invention in question had been granted only after due examination, when it
complied with all the requirements of a patentable invention. The High Court without taking
into consideration, the grounds on which the patent was granted, arbitrarily revoked the grant.
Such a revocation had led to grave miscarriage of justice. Where the High Court failed to
examine the matter in its true perspective and passed order accordingly, the Apex Court
remitted the matter to be decided afresh.9 Thus it is the duty of the Supreme Court to the take
up this matter that involves glaring miscarriage of justice.

In the famous case of Arunachalam v. Sethuratnam, it was said that when the Supreme Court
reaches the conclusion that a person has been dealt with arbitrarily or that a Court or tribunal
has not given a fair deal to a litigant, then no technical hurdles of any kind like the finality of
finding facts, or otherwise, can stand in the way of the exercise of this power. 10 Such is the

6
State of Uttar Pradesh v. Harish Chandra, AIR 1996 SC 2173 : (1996) 9 SCC 309
7
C.C.E. v. Standard Motor Products, AIR 1989 SC 1298 : (1989) 2 SCC 303
8
Collector of Customs & Central Excise v. Oriental Timber Industries, AIR 1985 SC 746 : (1985) 3 SCC 85;
Dipak Kumar Biswas v. Director of Public Instruction AIR 1987 SC1422 : (1987) 2 SCC 252
9
Anand Transport & Printers v. Senior Labour Inspector, (2001) 10 SCC 452, 454 ( 5 and 6)
10
Arunachalam v. Sethuratnam, P.S.R., (1979) Cr. LJ 875 ( 4) SC: AIR 1979 SC1284 : (1979) 2 SCC 297

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

power of Supreme Court which it should exercise to meet the ends of justice. This will
protect not only the greater interests of the confidence of the public in the justice system, but
will put the appellant back to the position he or she was in before the decision infected by the
miscarriage of justice was given.

Issue 2: WHETHER THE SOFTWARE FUTURE X IS PATENTABLE UNDER THE


ACT.

2.1 Whether the software Future X is violative of 3(a) and 3(k) of the Act.

A patent confers a statutory privilege on an inventor i.e. that there is no common law of
patents.11 The purpose of patent policy is to balance the incentive to invent against the ability
of the economy to utilize and incorporate new inventions and innovations. A patent must
publicly disclose the invention. This could educate the public by making them aware of a
previously unknown or not obvious software invention.

Article 27 1 of TRIPS12 states that patents shall be available for any inventions, whether
products or processes, in all fields of technology, provided that they are new, involve an
inventive step and are capable of industrial application. Therefore the agreement does not
exclude software from patentability. Further, Article 27 2 and 3 speak about exclusion from
patentability. In both of these paragraphs nowhere has it been mentioned that computer
program or software should be excluded from patentable subject matter.13

To be eligible for patent protection, an invention must meet several criteria. In connection
with software-related innovation, the major two stage requirements are concerning patentable
subject matter and inventive step (non-obviousness). Since patent law is applicable to
inventions in any field of technology without discrimination, to be patentable, software-
related inventions and business method-related inventions must also comply with those
requirements.

11
Section 2(1) (j) of the Patent Act, 1970.
12
The Agreement on Trade-Related Aspects of Intellectual Property Rights
13
The Agreement on Trade-Related Aspects of Intellectual Property Rights
Art 27.2 and 27.3

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[A] Patentable Subject Matter

Section 3k of the Act states a mathematical or business method or a computer programme


per se or algorithms. Although the Act has excluded computer program per se from the list
of patentable inventions, the non-patentability of computer program as such does not
preclude the patenting of computer-implemented inventions. Not all software innovations fall
under section 3(k). Hence, a wide range of software innovations are patentable even in India.
The Patents (Amendment) Ordinance14 split the sub-section 3k into two- sub-section 3(k) and
3(ka). The amended Section 3(k) read as follows: (k) a computer programme per se other
than its technical application to industry or a combination with hardware. This would have
allowed computer software in combination with hardware to have fallen within the scope of
patentability. The key expressions contained in the above amendment are technical
application to industry and combination with hardware. The legislative intent behind these
words was clear. If an invention is directed at computer software having technical application
to industry or coupled to hardware then it is patentable.

Principally, technical advance or technical contribution is the most important factor while
considering the patent to software related invention .Software related invention has technical
advance or technical contribution when the program provides any solution to a technical
problem or if the program has been used to achieve any technical control over a technical
process or the program is used to operate any technical instrument. It follows that if a patent
is sought only for the software tools i.e. a patent is sought only for a computer program per
se, then a patent would not be available for the invention, as it would be hit by the provisions
of Section 3 (k) elucidated above. The IPAB discussed the invention containing the steps for
controlling the wind turbine based on external ambient conditions by using automatic control
units like the computers. The Board mentioned that the invention cannot be treated as a
computer program per se or a set of rules of procedure like algorithms and thus are not
objectionable from the point of view of patentability.15

However, if the patent is sought for a combination of software and hardware, then it would
not be a computer application per se, and hence might be patentable. As observed in Gales
Application16: Computer instructions may represent, for instance, a technical process. In IBM

14
Patents (Amendment) Ordinance on December 27, 2004
15
Enercon India Limited ,Daman v. Alloys Wobben Germany W.P No.20165 of 2010;M.P Nos. 1&2 of 2010
16
Gale's Application [1991] R.P.C. 305 (C.A.)

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Computer Program Product17, the Board stated from the assumption that for an invention to
be patentable under the EPC, it must have a technical character. The use of technical
character as a way of determining whether an invention falls within the scope of the excluded
subject matter is set out in the leading EPO decision of Vicom.18 In deciding the issue, the
Board stressed that even if the idea underlying an invention was a mathematical method it
could still be patentable if the invention as a whole made a technical contribution to the
known art.

The Board of Appeal in its conclusion reasoned that technical effect is achieved by the
internal functioning of a computer itself under the influence of said programme, on the said
condition all programmes must be considered as inventions19 , also a computer programme on
a computer readable medium has the potential to produce a technical effect and hence not
excluded from patentability. In another case, the Board of Appeal concluded that all
programs when run in a computer are by definition technical20 .All programs when run in a
computer are by definition technical because, computer is a machine21 .

As the Act does not specifically exclude software inventions, and as the Joint Committee
acknowledges that inventions that are ancillary to or are developed using computer programs
are patentable. Accordingly, patentability assessments would be well served to focus more on
identifying the actual invention or contribution of the software invention and then
determining if the contribution falls within the exclusions set forth in the Act rather than
determining the technical effect or technical character of the software invention which is
undoubtedly inherently technical in nature.

An invention comprising functional features implemented by software is not excluded from


patentability under Article 52(2) (c) and (3), EPC if technical considerations concerning
particulars of the solution of the problem the invention solves are required in order to carry
out the same invention. Such technical considerations lend a technical nature to the invention
in that they imply a technical problem to be solved by technical features. An invention of this
kind does not pertain to a computer program as such under Article 52(3), EPC.22 In this
context of the problem-and-solution approach, the technical problem means the aim and task

17
T 1173/97, 1999 OJ EPO 609
18
Vicom/Computerrelated invention T208/84 [1987] EPOR 74; [1987] OJEPO 14.
19
American Telephone and Telegraph Company, T 204/93 OJ
20
T 0931/1995 OJ
21
Controlling pension benefits system/PBS T-0931/1995
22
Sohei/General Purpose Management System Case, 1995 OJ EPO 525

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

of modifying or adapting the closest prior art to provide the technical effects that the
invention provides over the closest prior art. The finding in a case was that the essence of the
invention lay in the way the elements of the system were combined.23

The expression "technical problem" should be interpreted broadly; it does not necessarily
imply that the technical solution is an improvement to the prior art. Thus the problem could
be simply to seek an alternative to a known device or process which provides the same or
similar effects or is more cost-effective.

Hence the software is not barred from patentability by the very reason that it provides a
speedier and a more efficient solution to the existing technical problem which is adapting the
basis of astrology to develop a software Future X. From the above, it may be concluded
that in ascertaining the patentability of an invention, the invention must be looked at a whole.

Further section 10124 reads: Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful improvement thereof,
may obtain a patent therefor, subject to the conditions and requirements of this title. The
Supreme Court has acknowledged that Congress intended 101 to extend to "anything under
the sun that is made by man."25 The law does not expressly prohibit any field of technology
from being patentable. Only the courts had excluded laws of nature, scientific phenomena,
and mathematical formulae from patentability.26

The question whether there is an invention is a question of fact in each case. A new and
useful application of an old principle may be a good subject-matter for a patent. An
improvement on something known may also afford subject-matter; so also a new combination
of different matters already known. A patentable combination is one in which the component
elements are so combined as to produce a new result or to arrive at an old result in a better or
more expeditious or more economical manner. If the result produced by the combination is
either a new article or a better or a cheaper article than before, the combination may afford
subject-matter for patent. In the case of a combination the inventor may have taken a great
many things which are common knowledge and acted on a number of principles which are
well known. If he had tried to see which of them, when combined produce a new and useful

23
NAT/Bagging plant [1993] EPOR 517
24
Title 35 U.S.C.101of U.S Patent Act; Diamond v. Chakrabarthy 447 U. S. 303 (1980)
25
Diamond v. Chakrabarty, 447 U.S. 303, 309
26
Mackay Radio & Tel. Co. v. Radio Corp of Am., 306 US 86,94 (1939); Funk Bros. Seed Co. v Kalo Inoculant
Co., 333 US 127,130 (1948)

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

result, and if h succeeds in ascertaining that such a result is arrived at by particular


combination, the combination will, generally speaking, afford subject-matter for a patent.27

[B]Inventive Step (Non Obviousness)

In order to obtain a patent, an invention must not be obvious to a person skilled in the art
having regard to the prior art. But the difference between the claimed invention and the
existing state of the art should be significant and essential to the invention.28 It is essential
that the invention must be of such nature that it involves a technical advance as compared to
the existing knowledge.29 It is not enough that the claimed invention is new, i. e. that it is
different from what exists in the state of the art. To be new in the patent sense, the novelty
must be shown in the invention. There must be novelty in the mode of application.30 The
program is made up of hundreds, if not thousands, of smaller pieces of code. 31The novelty in
a program lies either in the manner in which these pieces are combined, or in an additional
component or algorithm that is developed by the software creator. Software is a cumulative
form of engineering, in that new programs rely heavily on old software, or at least on ideas
obtained from old software. The novel portion of a program might just be a small part of the
whole code base.32

The patent statute itself expressly contemplates at "improvements" to other inventions are
themselves a patentable category of invention33, and even invites patent claims that declare
their subservience to a previously patented invention.34

The Supreme Court stated that in the case, that even though the only new feature of the
invention appeared to be the timing process controlled by the computer, it is patentable.35 The
court recognised that while a scientific truth, or the mathematical expression of it, is not
patentable invention, a novel and useful structure created with the aid of knowledge of
scientific truth may be.36 In Alice Corp. v. CLS Bank37 the Supreme Court set forth a two-part

27
Lallubhai Chakubhai Jariwala v. Chimanlal AIR 1936 BOM 99 at 104-105
28
Graham v. John Deere, 35 U.S.C. 103; Windsurfing International v. Tabur Marine 1985 RPC 59
29
Blakey & Co. v. Lathem & Co. [1889] 6 RPC 184 (CA)
30
Fomento v. Mentomore 1956 RPC 87
31
Robert L. Mitchell, Why Windows Should Think Small, COMPUTERWORLD, Aug. 25, 2003, at 37.
32
John S. Liebovitz, Inventing a Nonexclusive Patent System, 111 YALE L.J. 2251, 2284-85
(2002).
33
Title 35 U.S.C. 101 (1994)
34
Pentec Inc. v. Graphic Controls Corp., 776 F.2d3 09 (Fed.Cir.1 985)
35
Diamond v. Diehr 450 U. S. 175 (1981)
36
Gottschalk v. Benson 409 US 63 (1972)
37
958 F.2d 1053, 22 USPQ2d 1033 (Fed.Cir.1992)

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

test for analyzing whether or not a claim is unpatentable for claiming an abstract idea. First, it
is necessary to determine whether or not the claim is "directed to" an abstract idea. If a patent
claim is "directed to" the right type of abstract idea, then it is necessary to determine whether
or not the claim contains an "inventive concept" outside the abstract idea.

It is trite law that you cannot patent a discovery, but if on the basis of that discovery you can
tell people how it can be usefully employed, and then a patentable invention may result. This
would be the case even though once you have made the discovery the way in which it can be
usefully employed is obvious enough. 38

But at some level, all inventions embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas. Thus, an invention is not rendered ineligible for patent
simply because it involves an abstract concept.

In this case, the software owned by the assesse is patented software. Even if it is considered
that the software owned has not been patented, there is no denial of the fact that it is
essentially an invention. The development of such software requires highly technical
manpower, with highly sophisticated infrastructure and huge investment. Similarly, the
software can also be considered as a scientific work. Therefore, the software can also be said
to be information developed out of scientific experience.39Therefore if the software is
designed to improve the functioning of a computer or some other type of technology, then
that software should be considered patent eligible. Similarly, in Arrhythmia Research
Technology Inc. v. Corazonix Corp.40, it was concluded that there was practical application of
an abstract idea (a mathematical algorithm, formula, or calculation), and hence patentable.
The Court upheld in Eibel Process Co. v. Minnesota & Ontario Paper Co.,41 the validity of
an improvement patent that made use of the law of gravity, which by itself was clearly non-
patentable. Similarly The Court stated in MacKay Co. v. Radio Corp.,42 that "While a
scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and
useful structure created with the aid of knowledge of scientific truth may be." If a route is
obvious to try in response to a known problem, but the route chosen produces unexpected
advantages, the result might be inventive.

38
Genentech Inc.s Patent (1987) RPC 553 at 556
39
Director of Income Tax v. Infrasoft Ltd., ITA 1034/2009
40
958 F.2d 1053, 22 USPQ2d 1033
41
261 U.S. 45
42
306 U.S. 86, 94, 40 USPQ 199, 202

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

In the case in hand the Appellants humbly submit that the new software Future X has
improved user interface gives the user convenience when entering data into different kinds of
files. The Appellants further argue that the given software gives much more efficient and
accurate results by a machine through a series of calculation best known to the developer
making it an inventive step and hence entitled to patent under the Act.43

i. Obviousness to a person skilled in the art:

A skilled person would be a person who has experience of the field in question and he may
be one who have available assistants who would carry out tests.44 The person skilled in the
art must have the necessary information (through the prior art) to take the inventive step in
question.45 The fate of an invention after grant may provide evidence that suggests that the
invention is not obvious.

Here, the person skilled in the art, that is the astrologers in the given case for instance, though
have knowledge on the entire study in the field of Astrology do not have the necessary
information to take the inventive step in question. They are incompetent to develop computer
based software based on their knowledge in the field.

In some cases, the ingenuity and skill needed for an invention to be non-obvious lies not so
much in the identification of a research problem or in reaching the final goal. Instead the
invention arises in the way the obstacles and problems that arise en route to reaching the final
goal are overcome.46 Where unforeseeable difficulties exist, the outcome will be non-obvious
if the route chosen to overcome those difficulties is inventive.47

The improved features in Future X make the unskilled and hence the invention is
unobvious to them.

ii. Economic Significance:

After the Amendment in 2005, the definition of inventive step has enlarged to include
economic significance of the invention as well.48 If an invention proves to be commercially
successful, or is widely copied by or licensed to competitors might be inferred that the
invention involved a leap beyond what already existed.

43
Freeman-Walter-Abele Test
44
PLG Research v Ardon 1993 FSR 197, 207
45
Hallen v Barbantia 1991 RPC 195, 212
46
John Manvilles Patent [1967] RPC 479
47
Unilever/Chymosin T386/94 [1997] EPOR 184,194
48
Section 2(1) (ja) of the Act.

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

Given that the software 'Future X', earned sales revenue of US $ 200 million in six months
establishes economic significance and thus inventive step.49

[C] Industrial Applicability


The need to show industrial applicability also reflects the image of the patentable invention as
having a concrete and technical character. The decision to include a requirement of industrial
applicability in the EPC was used to give effect to the policy goal that sought to exclude
methods of medical and veterinary treatment from the remit of the scope what may be
patented.
Further, "capable of industrial application", in relation to an invention, means that the
invention is capable of being made or used in an industry.50 Therefore, if a computer
programme is not claimed by in itself rather, it has been claimed in such manner so as to
establish industrial applicability of the invention and fulfils all other criterion of patentability,
the patent should not be denied.51 In such a scenario, the claims in question shall have to be
considered taking in to account whole of the claims. Computer software or programs are
instructions that are executed by a computer. These are in the form of source codes and object
codes, which take a lot of skill, time and labour to develop them. Computer softwares have a
market value and hence can be copied and used by unauthorized persons. These should hence
be protected under a strict legal regime. In relation to Future X, it is capable of industrial
application as it can be used to analyse in other systems.

[D]Utility

As well as being used or made in any kind of industry, for an invention to be industrially
applicable, it is also necessary to show that it has useful purpose.52 Also, in Bishwanath
Prasad Radhey Shyam v. Hindustan Metal Industries 53 the Supreme Court recognised utility
as one of the grounds on which a patent can be revoked. This mandates the serious
application of the utility factor of an invention as a patent as a monopoly is inseparable from
the idea of public policy. The usefulness of the invention is to be judged, by the reference to
the state of things at the date of filing of the patent application, if the invention was then
useful, the fact that subsequent improvement have replaced the patented invention render it

49
7, Page 1, Moot Proposition
50
Section 2(1) (ac) of the Act.
51
Guidelines for Examination of Computer Related Inventions (CRIs) issued by the Patent Office on August
21, 2015.
52
Chiron v. Murex [1996] RPC 535,607
53
AIR 1982 SC 1444

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

obsolete and commercially of no value, does not invalidate the patent. Courts have also held
that a patentable invention besides being a new manufacture must also be useful. 54The court
emphasized that software or other processes that yield a useful, concrete and tangible result
should be considered patentable.55 In view of this principle, the Appellant herein submits that
the claimed software Future X is a new useful mode of application of the study Astrology
to predict one persons future.

The EPO has accepted that where a mental act is automatically performed by a computer the
activity may change in such a way that it can no longer be seen as a performance of a mental
act. This is the case even when the computer carries out the process in a way that could not be
mimicked by the human mind.56 This point was reinforced in the Court of Appeal in the
Fujitsus Application where it was held that the concept for performing a mental act should
not be construed widely to include all methods of the type performed mentally, even if the
particular method in question. While the computer-related inventions may perform analogous
tasks to those carried out by humans, there must come a time when the analogy breaks down.
That is, there is a point when a process which is carries out by a computer is so qualitatively
different to a functionally equivalent process carried out by the human mind that the two
events cannot be equated with each other.

The Federal Circuit affirmed this reasoning in AT&T v. Excel Communications.57 There, the
court upheld as patentable subject matter claims to a method for "generating a message
record for an interexchange call and recording to whom the call should be billed."58The
court applied State Street's" useful, concrete and tangible result" test and concluded that the
generation of billing records was clearly useful.59 Noting that physical transformation is only
one of several possible ways to bring about a useful result, the Court specifically rejected the
argument that a patentable software claim must have physical structure associated with it.60

As Tomlin J rightly stated in Parkes v.Cocker, when it has been found that the problem has
awaited solution for many years and that the device is in fact novel and superior to what had
gone before and thus widely used and indeed in preference to alternative devices, it is
54
Elias v. Grovesend(1890)7RPC455 at 467
55
State Street Bank and Trust Company v. Signature Financial Group, Inc.,149 F.ed 1368 (Fed. Cir. 1998), 47
U.S.P.Q.2D 1596
56
Fujitsus Application [1996] RPC 511, 518-519
57
172 F.3d 1352 (Fed. Cir. 1999);AT&T Corp. v. Excel Communications, 52 U.S.P.Q.2d 1865 (D. Del. 1999).
58
172 F.3d at 1354.
59
supra note 44
60
Ibid.

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

practically impossible to say that there is not present the scintilla of invention necessary to
support the patent.61

According to section 3(a) of the Act, the exclusion comes into operation when an invention is
frivolous or makes a claim relating to well establish natural laws. In conclusion, since these
conditions have been satisfied, the revocation of grant of the alleged software Future X is
violative of section 3(a) and 3(k) of the Act.

2.2 Whether the patented software Future X is patentable under 3p of the Patent
Act 1970.

Section 3(p) states that an invention which in effect, is traditional knowledge or which is an
aggregation or duplication of known properties of traditionally known component or
components.62 TK fundamentally covers knowledge that has been accumulated through
generations by virtue of tradition. Further, it also includes developments/adaptations of the
creation from time to time depending on the changing needs of society. These developments
act as an addition to existing knowledge and form part of knowledge passed on to the next
generation, thereby collectively shaping the nature of TK for the next generation. On one
hand, TK is the cultural backbone of any country; it is also a valuable resource that needs to
be harnessed to bring about economic prosperity.

Astronomy is the scientific study of astronomical objects and phenomena, the practice of
astrology is concerned with the correlation between heavenly bodies (and measurements of
the celestial sphere) and earthly and human affairs.63 Astrology is variously considered by its
proponents to be a symbolic language, a form of art, a form of science, or a form of
divination.64

In the light of this definition ,the given invention is essentially a Astrological Software
based on the science of Astrology and the same was mentioned in Indian texts written over
2000 years ago and has been applied for centuries for prediction of ones future. It can be
thus characterised as a TK.

61
(1929)46 RPC 241,248
62
"astrology",Oxford Dictionary , Oxford University Press. 11 December 2015.
63
Merriam-Webster Online Dictionary, Definition of astrology. July 3, 2007; Compact Oxford English
Dictionary, Definition of astrology. July 3, 2007.
64
Ngre, Alain, A Transdisciplinary Approach to Science and Astrology, July 3, 2007; Campion, Nick, Nick
Campion's Online Astrology Resource: Science & Astrology.,July 3, 2007; Merriam-Webster Online
Dictionary, Definition of astrology., July 3, 2007; Encyclopdia Britannica, astrology. Retrieved July 3, 2007.

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

In case of TK derived inventions, it is essential to understand that the word derived refers to
invention made by understanding TK acquired and not simply making a slight modification
to an existing method/product that already exists in public domain. Thereby, the standard
rules of patentability with reference to what can and cannot be considered an invention will
apply in the present scenario. Keeping in view, the non-patentability of TK per se, inventions
derived from TK generally have a high underlying qualification towards showing sufficient
inventive step. The non-obviousness factor plays an important role especially for
individuals/entities who intend to patent inventions derived from TK. While novelty is
relative to existing TK, as long as invention can be shown to be differing from the actual
method used in a TK and involves an evident inventive step, it can be patented. In
Bishwanath Prasad Case65, The Supreme Court has held that It is important to bear in mind
that in order to be patentable, an improvement on something known before or a combination
of different matters already known, should be something more than a mere workshop
improvement; and most independently satisfy the test of invention or an inventive step. To be
patentable, the improvement or the combination must produce a new result, new article, or a
better or cheaper article than before. The combination of old known integers may be so
combined that by their working inter-relation they produce a new processor improved result.
This was also reiterated in the case of Dhanpath Seth & ors v. Nil Kamal Plastic Crates Ltd66,
which partly recognized the importance of inventive step when applied to a TK-derived
invention. It was opined in that case by the Court that even a process involving an inventive
step is an invention within the meaning of the Act and so it was not necessary that the product
developed should be a totally new product. Even if a product is substantially improved by an
inventive step, it would be termed to be an invention.

There are also many other instances where a TK-derived inventions has been granted a
patent. One such instance is the Jeewani drug, where, a group of scientists belonging to
Tropical Botanical Gardens Research Institute observed Kani Tribals residing in the Western
Ghats eating some fruits and leaves to avoid fatigue. In the process, they discovered the
energy and immunity enhancing properties of those plants and thereafter obtained patents in
relation to those discoveries, which was granted by the Patent Office. The Hoodia drug, based
in South Africa, where the plant supplements was used to manufacture dietary supplements.
In this instance, the San people of South Africa used the plant as appetite suppressants.

65
AIR 1982 SC 1444
66
AIR 2008 HP 23

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

In summary, the software Future X involves inventive step and hence though is founded
on TK, it is eligible for patent.

2.3 Why computer software should be patented than copyrighted.

The dispute of protection of software arises on the issue of copyright or patent protection.
The TRIPS agreement mentions about the copyright protection of object code and source
code. It is difficult to protect computer software under copyright protection because of basic
difference between the software and traditional literary work.67

Patents protect functionality. Copyright on the other hand only protects expression.
Substantial modification to an original work, even if it performs exactly the same function,
would not be prevented by copyright. To prove copyright infringement also requires the
additional hurdle of proving copying which is not necessary for patent infringement.

Any software whose subject matter is in the nature of an invention can be patented to protect
it as a whole. Even though the Indian Copyright Act68 confers protection of a computer
program as a literary work, a patent over software would enable the patentee the monopoly
rights over the whole idea and not just the expression. Such a patent would ensure that the
software is protected not just in the form it is expressed in but the idea underlying the
software is protected as such. The patented software thus cannot be subjected to reverse
engineering that is, cannot be retraced from its end to source to arrive at the basics of the
software. An important difference between patent protection and copyright protection is the
exclusivity of patent protection. Independent development is not a defence to infringement of
a valid patent

The general notion that software cannot be patented is a misconception. The World
Intellectual Property Organisation (of which India is a member) provides that software maybe
subjected to protection under the patent laws of a country if its subject matter meets the
criteria stipulated in the Act. However, it does not mandate it as a matter of right to the
patentee. The subject matter of the patent should fall within the scope of patentable matter
under the patent laws that govern that country.

In India, Section 3 of the Act states what are not inventions. Section 3(k) explicitly excludes
computer programs from being patented. However, this does not exclude software as such.

67
Samuelson P,Symposium: Towards a third Intellectual Property Paradigm: Article: A manifesto concerning
the legal protection of computer programs,Columbia Law Review,2308(1994)94
68
Indian Copyright Act,1957

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

Guidelines under the Manual of Patent office Practice and Procedure Act 69 act as an
explanation to the various clauses of the Act. The explanation to Section 3(k) stipulates the
conditions under which software can be patented. This implies that software per se is not
excluded from the purview of patentability. There have been instances when software has
been subjected to patent.

Software which is explicitly protected as a literary work under the Indian Copyright Act, is
also patentable provided the subject matter that it deals with is patentable as an invention
under the Act. A grant of patent to an invention would make sure that not just the expression
but also the idea on which it is based is granted protection. This way the patentee is vested
with the monopoly rights over the software as a whole. The patentee is protected from any
kind of replication or copying of the similar idea.

69
Manual of Patent office Practice and Procedure , 2011

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XX All India Moot Court Competition, 2016 Memorial on behalf of the Appellant

VIII. PRAYER

In the light of issues raised, arguments advanced and authorities cited, may this Honble
Supreme Court of Cindia be pleased to allow the Special Leave and
1. Quash the order of the Honble High Court.
2. Grant the patent to Future X

AND/OR

Pass any order it deems fit in favour of the petitioners in the interest of Justice, Equity and
Good Conscience.

COUNSEL FOR APPELLANT

Date:

Place:

26