NATIONAL LAW UNIVERSITY, JODHPUR

SUMMER SESSION
(JULY – NOVEMBER 2017)

GENERAL PRINCIPLES OF
INTELLECTUAL PROPERTY RIGHTS
PROJECT
SOFTWARE PATENTS IN US AND INDIA: A COMPARISION

(Word Count : 4,164)

SUBMITTED BY: SUBMITTED TO:

ANUPAM NAYAK (1306) DR. GARGI CHAKRABARTI

AYUSH SINGH (1315) ASSOCIATE PROFESSOR

B.A. LL.B. (HONS.) | V SEMESTER FACULTY OF LAW

 TABLE OF CONTENTS

ACKNOWLEDGEMENT.........................................................................................................II

RESEARCH METHODOLOGY.............................................................................................III

SCOPE OF THE PROJECT....................................................................................................IV

I. INTRODUCTION..............................................................................................................1

II. SOFTWARE PATENTS IN U.S.A................................................................................1

A. STATTUTORY PROVISION.....................................................................................1

B. JUDICIAL INTERPRETATIONS..............................................................................2

C. ALICE EFFECT TOO APPARENT...........................................................................5

III. SOFTWARE PATENTS IN INDIA...............................................................................5

A. GUIDELINES.............................................................................................................6

B. ANALYSIS OF LAW IN INDIA................................................................................8

IV. DISSIMILAR YET SIMILAR: COMPARING THE TWO REGIMES......................10

V. CONCLUSION.............................................................................................................11

BIBLIOGRAPHY....................................................................................................................12

I
 ACKNOWLEDGEMENT

On the completion of this project, we take the opportunity of thanking the people who
contributed in the completion of it, without whose aid, contribution and help this project
would not have seen practicability.

We extend our heartfelt gratitude to our mentor and teacher of Intellectual Property Law,
Dr. Gargi Chakrabarti, Associate Professor (Faculty of Law), National Law University,
Jodhpur whose continuous guidance and support provided us with the much needed impetus
and gave us a better insight into the topic.

II
 RESEARCH METHODOLOGY

The method of research opted by the author in this project was doctrinal research from both
primary and secondary sources. Majority of research work has been done via Articles, Case
Laws available in online databases. Other sources like various works by learned authors have
also been referred.

III
 SCOPE OF THE PROJECT

This project is an attempt to understand the law relating to software patents in US and in
India by doing a comparative study. It tries to trace the statutory provisions in both the
country and also the judicial interpretations. Further, it analyses the similarities and
dissimilarities in both the jurisdictions.

IV
I. INTRODUCTION

Software is a global business. Patents are increasingly the protection of choice; as a

consequence, software patent laws are of growing importance to software vendors. The
software patenting approach in US and India are situated on different spectrums of a scale.
On one hand USA has been granting patents to software and computer related pr on the other
hand the Indian patent office has always been reluctant in openly encouraging grant of
patents to software or computer related inventions. This reluctance stems from the prohibition
of such inventions contained in both statutory language and the general guidelines that are
updated regularly by the patent office.

However, recent developments in respective jurisdictions have had great impacts on the
industries in the countries.1 Given the importance of Software in the modern IT industry and
as a driver of the economy,2 this paper is an attempt to compare the two vastly different
jurisdictions of U.S and India.

II. SOFTWARE PATENTS IN U.S.A

Software has been a major driving force of the US economy for years with the industry
accounting for 1.14$ trillion of the country’s GDP and has impact over 10.5 million jobs. 3 It
easily gets the title of the largest software and IT industry in the world. Despite of this fact
the issue of software patentability remains a highly controversial matter. Software patents
have continued to divide opinions ever since they were first granted in 1968. 4 Amidst all
these chaos and confusion that has surrounded the software patents recently, it is imperative
that the law and the interpretation of the concerned law must be analysed to be able to clear
out the murky water.

A. STATTUTORY PROVISION

1
The US Supreme court passed a judgement in Alice v. CLS Bank that is being generally interpreted as placing
a prohibition on Software patents; and as for India, the Patent office has deleted the novel hardware requirement
that was in place for a long time.
2
Why Protect Software through Patents, Bitlaw, https://www.bitlaw.com/software-patent/why-patent.html.
3
Software and Information Technology Spotlight, SelectUSA, https://www.selectusa.gov/software-and-
information-technology-services-industry-united-states.
4
The History of Software Patents in the United States, Gene Quinn, 30 November 2014, IP Watchdog,
https://arstechnica.com/tech-policy/2016/12/these-three-2016-cases-gave-new-life-to-software-patents/

1
Based on Article I of the U.S. Constitution, 5 the United States enacted the Patent Act,6 which
has been encoded in Title 35 of the United States Code; 7 § 101 of the Title requires that an
invention be novel and useful to be patentable. The language of this section enables patent
protection under four categories- a) processes, b) machines, c) manufactures or d)
composition of matter. The section leaves the window open for software patentability by
using the term “processes” in the provision. The courts have also addressed the expansive
nature of the terms and have held that Congress contemplated the patent laws would be given
wide scope.8

In the Subsequent sections, the Act lays down the conditions for patentability, which are
novelty9 and non-obviousness10. These conditions are equally enforced on both software and
tangible products. It is noteworthy that the Act doesn’t contain any section prohibiting certain
subject-matter patents. Rather, these exceptions have been created by the courts which will be
analysed in the next section.

B. JUDICIAL INTERPRETATIONS

The Act does not mention any categorical prohibition on subject-matter by the courts have
generally interpreted that there is an implicit exception for applications involving "[l]aws of
nature, natural phenomena, and abstract ideas "11 Other than these requirements, there are
some other incidental tests evolved for examining software patents that will come fore as an
analysis of the landmark cases on software patents is done.

Software patents were faced with a rocky start in the 1970s when the US Supreme Court
rejected the grant of patent in Gottschalk v. Benson.12 The Respondents claimed patent for a
method for converting binary-coded decimal (BCD) numerals into pure binary numerals. The
claims were not limited to any particular art or technology, to any particular apparatus or
machinery, or to any particular end use. They purported to cover any use of the claimed
method in a general-purpose digital computer of any type. The Court held that the idea was
too abstract to be patentable. Precisely the Court said: “Here the "process" claim is so
abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary

5
U.S. Const. art. I, § 8, cl.8.
6
35 U.S.C. § 1.
7
Id §§ 1-376.
8
Diamond v. Chakraborty, 447 U.S 303 (1980).
9
Supra Note 5, § 101.
10
Supra Note 5, § 102.
11
Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U. S. _ (2012).
12
Gottschalk v. Benson, 409 U.S. 62, 72 (1972).

2
conversion.” This decision left an impression in the minds of the readers that software can’t
be regarded as patentable subject-matter. However, the Supreme Court retracted from this
position in Diamond v. Diehr.13 The court relied on the definition of “process” given in
Cochrane v. Deener, where it was stated that it was “an act, or a series of acts, performed
upon the subject-matter to be transformed and reduced to a different state or thing. If new
and useful, it is just as patentable as is a piece of machinery. . . . The machinery pointed out
as suitable to perform the process may or may not be new or patentable” and historically,
such processes have been granted patents. Eventually the court held that a claim drawn to
subject matter otherwise statutory does not become non-statutory simply because it uses a
mathematical formula, computer program, or digital computer. The decision drew a line
between inventions that contained mathematical inventions and mere mathematical
inventions.

After the Diamond v. Diehr Case, the courts in US deliberated the issue of software
patentability for nearly two decades and culminated in the decision of State Street Bank
case14, where the court observed that a patent is eligible if “it produces a useful, concrete and
tangible result” and has some practical application. The decision has subsequently been
criticised for it leaves the window open for a large number of frivolous patents to claim
validity under the new standard. The new standard was also negatively perceived by
subsequent judicial hearings for its “potential vagueness and suspect validity”. 15 The
Supreme Court in Labcorp v. Metabolite16 also dissented from the legal test holding that such
a test would allow patents to such software which were previously not allowed patents
previously by the Court.

The position was to some extent made clear in In Re Bilski17 where the court made the test
established in State Street obsolete but did not explicitly overrule the case. But the federal
court decision was not entirely immune to criticism itself.18 The CAFC had refused to grant
the patent because “transformations or manipulations of…business risks or other such
abstractions cannot meet the test because they are not physical objects or substances….”.
This decision of the court limited the patent eligibility test to machine or transformation test.

13
Diamond v. Diehr, 450 U.S 175 (1981).
14
State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998).
15
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).
16
Labcorp v. Metabolite, 548 U.S 124 (2006).
17
In Re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385.
18
In Re Bilski, Electronic Frontier Foundation, https://www.eff.org/cases/re-bilski.

3
The case was then appealed to the U.S Supreme Court, 19 where the court still rejected the
patent but with a better reasoning. The court held that the language in the Act does not state
that the “process” must be tied to any machine or transformation test. In absence of any such
limitation it would be a violation of the canons of interpretation if the courts start interpreting
the test to be an exhaustive one for software patents. The court rejected the patent on the
ground that it was too abstract an idea to grant a patent.

After Bilski, the most unsettling case for Software applicants came in the form of Alice v.
CLS Bank. The chief claims were designed to facilitate the exchange of financial obligations
between two parties by using a computer system as a third-party intermediary. The patents in
suit claimed (1) a method for exchanging financial obligations, (2) a computer system
configured to carry out the method for exchanging obligations, and (3) a computer-readable
medium containing program code for performing the method of exchanging obligations. The
court rejected to grant patent by holding that the underlying claim was an abstract idea that is
ineligible for getting a patent.

The Alice case laid down a two-step test to determine whether a software is eligible for patent
or not. The test was to check:

1. Is the claimed invention directed to a patent-ineligible concept (e.g. an abstract idea)?

2. If the answer is ‘yes’ to step 1, does the claimed invention include an additional
element, or combination of elements, that is sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the ineligible concept itself?

The decision has led to more confusion among the lower court in absence of more clearer
guidelines from the Supreme courts. The reason for such confusion stems from the fact that
distinguishing between claims that recite a patent-eligible invention and claims that add too
little to a patent-ineligible abstract concept can be difficult, as the line separating the two is
not always clear.20 The general interpretation of the decision has led to the belief that the
Court has virtually made all software ineligible for a patent. 21 Interestingly thought, the
decision never explicitly mentioned the term “software”.

19
Bilski v. Kappos, 561 U.S 593 (2010).
20
The Supreme Court’s Decision in Alice Corp. v. CLS Bank Has Taken a Heavy Toll on Patents for Computer-
Related Inventions, 16 Feb 2016, Lexology, https://www.lexology.com/library/detail.aspx?g=300e6862-012d-
49dd-bed4-ba8ae4477397.
21
Patent eligibility after Alice, Paul J Sutton, 27 Feb 2017, World Intellectual Property View,
http://www.worldipreview.com/contributed-article/patent-eligibility-after-alice.

4
Alice was heavily relied by the Court in Intellectual Ventures v. Symantec, Inc.22, the court
interpreted Alice in a way that completely prohibited the grant of patents to software even
going on to say that software patents violate the first amendment right of free speech.
However, a glimmer of light has shone again for software patents because of some recent
decisions. DDR Holdings v. Hotels.com23 was the first case since Alice where a software
patent was granted. But the decision still could not manage to overpower the legal precedent
set in Alice.

Similarly, in Enfish LLC v. Microsoft corp.,24 a refusal of patent was reversed by the Federal
circuit court as the court held that specific asserted improvements in computer capabilities is
patent eligible. Lastly, Amdocs v. Openet Telecom25 represents the most sense infusing
judgement related to software patents of late. The court observed that there cannot be “a single
universal definition of ‘abstract idea’” because “it is difficult to fashion a workable definition to
be applied to as-yet-unknown inventions.”. But the court said that such claims must be
examined by comparing prior claims at issue with prior cases involving similar claims.

C. ALICE EFFECT TOO APPARENT

Despite these recent encouraging cases, the effect of Alice is distinctly visible on the lower
courts in the US. With no proper guidance the district courts have set themselves on a trail of
ruthlessly dismissing software patents relying on Alice and the exceptional grant of patent is
heralded as landmark in the Industry. The guidelines set in the case are too vague to have
applicability in all kinds of cases. This uncertainty must be immediately cured by the
Supreme Court as no uncertain set of laws relating to property is a good sign of a healthy
legal regime.

III. SOFTWARE PATENTS IN INDIA

Section 3 of the Patents Act provides for subject matter of patents. It clarifies and set forth
things/processes which are not inventions and thus are out of the purview of patents in India.
Sub section (k) of Section 3 lists – a mathematical or business method or a computer
programme per se or algorithms. The implication of Section 3 (k) is that a computer
programme per se cannot be patented i.e. a software by itself is excluded from patentable
subject matter.
22
Intellectual Ventures v. Symantec, Inc., 838 F.3d 1307 (Fed. Cir. 2016).
23
DDR Holdings v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014).
24
Enfish LLC v. Microsoft corp, 822 F.3d 1327 (2016).
25
Amdocs v. Openet Telecom, 841 F.3d 1288, 1294 (Fed. Cir. 2016).

5
The term per se is not defined in the Act however the Guidelines for Examination of
Computer Related Inventions (CRIs)26 after referring to general dictionary meaning clarify
the term to mean “by itself” or “in itself” or “as such” or “intrinsically” - to show that you are
referring to something on its own, rather than in connection with other things. Therefore, a
computer software by itself cannot be patented unless it is in conjunction with hardware or
produces further technical effect.

The logic behind denying patents for software per se in India is to promote innovation. If
software, per se, is patented a majority of the software inventions will be owned by a
minority of firms. This scenario is unimaginable in a developing country like India, where
programmers must be given the freedom to innovate. To develop better software’s
programmers or coders must have access to the open source software. Keeping in line with
this spirit, Section 3(k) does not allow software patents without hardware applicability.27

Since the enactment is ambiguous as to whether software can be patented in India, the Office
of the Controller General of Patents, Designs and Trademarks issued Guidelines for
Examination of Computer Related Inventions (CRIs) to this effect. The aim of the guidelines
is to provide guidelines for the examination of patent applications in the field of CRIs by the
Indian Patent Office so as to further foster uniformity and consistency in the examination of
such applications. The objective of this document is to bring out clarity in terms of exclusions
expected under section 3(k) so that eligible applications of patents relating to CRIs can be
examined speedily.28

A. GUIDELINES

The first set of guidelines was issued on August 21, 201529. The determinants it provided
stated that:

A computer program, when running on or loaded into a computer, going beyond the
“normal” physical interactions between the software and the hardware on which it is
run, and is capable of bringing further technical effect may not be considered as
exclusion under these provisions.
26
Guidelines for Examination of Computer Related Inventions (CRIs), 30 June 2017,
http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/Revised__Guidelines_for_Examination_of_Compute
r-related_Inventions_CRI__.pdf
27
Can we get software patents in India?, Intepat IP Services,
https://www.intepat.com/blog/patent/software-patent-in-india/
28
Supra Note 26.
29
Guidelines for Examination of Computer Related Inventions (CRIs), 21 August 2015,
http://www.rc-iplaw.com/wordpress/wp-content/uploads/2015/10/CRI_Guidelines_21August2015.pdf

6
According to these Guidelines, software could be patented as long as it produced a ‘further
technical effect’ however the phrase ‘further technical effect’ was not defined, leaving it to
the judgment of the patent Examiners to determine whether a software invention produced a
further technical effect or not. These guidelines ran contrary to Section 3(k) of the Patents
Act, 1970. Upon receiving complaints, these guidelines were put on abeyance on December
14, 2015.

On February 19, 2016, the Government issued fresh guidelines which allowed software to be
patented in combination with a new hardware. This means that any invention has to relate to
novel software as well as novel hardware, for it to be patentable.

5. Tests/Indicators to determine Patentability of CRIs:30

(3) If the contribution lies in the field of computer programme, check whether it is
claimed in conjunction with a novel hardware and proceed to other steps to
determine patentability with respect to the invention. The computer programme in
itself is never patentable. If the contribution lies solely in the computer
programme, deny the claim. If the contribution lies in both the computer
programme as well as hardware, proceed to other steps of patentability.

As a result, a software invention is patentable in conjunction with hardware.

Computer performance is measured in terms of the number of floating point operations per
second, or FLOPS – today’s supercomputers typically clock in at several petaflops, or
quadrillions of FLOPS. The Indian Patent Office’s performance with reference to Computer
Related Inventions (CRIs) can be described by a similar term – flipflops. Not to be left far
behind by developments in computing, the IPO also reached the quadrillion mark with its
latest flipflop – amending the CRI Guidelines published in February 2016 to remove the
novel hardware requirement.31

On June 30, 2017 the Controller General revised the examination guidelines. The amendment
deleted the requirement that patents for software could only be claimed in conjunction with

30
Guidelines for Examination of Computer Related Inventions (CRIs), 19 February 2016,
http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_83_1_Guidelines-for-Examination-of-
CRIs-19-2-2016.pdf
31
Patent Office Reboots CRI Guidelines Yet Again: Removes “novel hardware” Requirement. Balaji
Subramanian, 5 July 2017, SpicyIP, https://spicyip.com/2017/07/patent-office-reboots-cri-guidelines-yet-again-
removes-novel-hardware-requirement.html

7
novel hardware. The erstwhile three-step test for patentability (whose third step specifically
stated that computer programs in themselves were unpatentable, and could only be claimed in
conjunction with novel hardware) has vanished into thin air, as have the numerous examples
of patent-ineligible claims (most notably Yahoo’s search engine claims, which were shot
down by the IPAB).32

The Examination Procedure for CRIs provided in guidelines state:33

The examination procedure of patent applications relating to CRIs is the same as that
for other inventions to the extent of consideration of novelty, inventive step, industrial
applicability and sufficiency of disclosure etc. The determination that the subject
matter relates to one of the excluded categories requires greater skill on the part of the
examiner and these guidelines focus more on this aspect.

D. ANALYSIS OF LAW IN INDIA

The inclusion of the ‘technical application’ test with regards to the patenting of software has
actually already been rejected by the Parliament back in 2004 when they rejected an
ordinance that used the words “a computer programme per se other than its technical
application to industry or a combination with hardware”.34

In Telefonaktiebolaget Lm Ericsson (Publ) vs. Intex Technologies (India) Limited, 35 the

Delhi High Court observed as under:

In the above provision [Patent (Second Amendment) Bill, 1999] it can be seen that
the words per se in Section 3(k) were missing. In fact when this bill was referred to
the Joint Parliamentary Committee, it was suggested by various experts and stake
holders that India should follow the EU/UK route and not completely exclude
computer program from patentability. The Parliament after accepting the aforesaid
proposition, added the words per se which was introduced in section 3(k) enacted by
the Patent (Amendment) Act, 2002.

32
Id.
33
Supra Note 29.
34
Ericsson v. Intex, part II – The Perils and Pitfalls of Software Patenting. Kartik Chawla, 27 March 2015,
SpicyIP, https://spicyip.com/2015/03/15017.html.
35
Telefonaktiebolaget Lm Ericsson (Publ) vs. Intex Technologies (India) Limited, 2015 (62) PTC 90 (Del).

8
 Thus, it is appears to me prima facie that any invention which has a technical
contribution or has a technical effect and is not merely a computer program per se as
alleged by the defendant and the same is patentable.

The Act bans the patenting of ‘software per se’, the use of the term ‘per se’ is meant to
indicate a narrow category of software which is ‘simply’ software. When the software has, in
the terms used by the judgment, a ‘technical contribution’ or a ‘technical effect’, it is no
longer ‘not merely a computer program per se’, and is therefore patentable. The Court seems
to have read the ‘technical contribution/effect’ test into the ‘per se’ part of Section 3(k).  In
coming to this conclusion, the Court has borrowed from the ‘technical features/character’
doctrine used in the European Union and the ‘significantly more’ doctrine used in the United
States.

It can be seen that the Parliament way back in 2004 refused to incorporate the ‘further
technical effect’ test and the ‘novel hardware’ requirement. However, the CRI Guidelines in
2015 stated that a software capable of bringing ‘further technical effect’ can be patented. The
2016 Guidelines amended the earlier test and substituted it with the requirement of ‘in
conjunction with novel hardware’ i.e. if a software is in conjunction with novel hardware, it
can be patented. To this effect these Guidelines were contrary to the intention of Parliament.
The 2017 Guidelines altogether remove these tests. Now in the absence of any clarification
on the issue, the only guiding and binding principle that emerges is the interpretation of
MANMOHAN SINGH, J. in Ericsson v. Intex.36 If it is treated as a binding precedent, it would
clarify to some extent the interpretation of the term ‘per se’ which has been the bone of
contention for a quite long time as there is absence of judicial pronouncements on the issue.
The interpretation adopted by the Court is wider and its approach is based upon the tests of
the European Union and the United States which are more software centric.

Therefore, the position in India which emerges is that a computer programme is altogether
not excluded from being patented. A computer programme can be patented if it is capable of
being producing further technical effect or any technical contribution. However, the
examination procedure of patent applications relating to CRIs is the same as that for other
inventions to the extent of consideration of novelty, inventive step, industrial applicability
and sufficiency of disclosure etc.

36
Id.

9
IV. DISSIMILAR YET SIMILAR: COMPARING THE TWO
REGIMES

The first noticeable difference between the two jurisdictions lies in the Act itself. The
provision of the American Patent Act only enables the patentability of software under the
term “process”. The Act contains no prohibition or limitation on the patentability of the
subject-matter. The exceptions to patents have been created by the Courts to weed out
unnecessary patent applications. The Indian Act expressly states that software can’t be
patented “per se”. This clearly indicates that the legislature’s intention to prohibit the
Patentability of software.

The U.S Courts have stated that there is an implicit bar on patentability of any invention
exhibiting laws of nature, natural phenomena or abstract ideas under the Patent Act. These
restrictions govern the patentability of software as well. In addition to these, other tests have
also been evolved to examine the patentability of software. The courts first adopted the
machine or transformation test which was later accompanied by tangible test. But this
received wide spread criticism for being too vague and inadequate. At the same time, the
Courts have held that machine or transformation test is in no way the only test to check
software patentability. More recently, a two-step test has been evolved which states that the
first thing that must be checked is that if the invention is directed towards an abstract idea and
the second step is to check if an element or a combination of elements in the ineligible
invention amounts to more than a patent upon the ineligible concept itself.

In India, the standards have mostly been established through the guidelines issued by the
Patent office. The technical effect test was the first one to be brought up which was replaced
by the novel hardware requirement. The courts have also imputed the technical effect test to
circumvent the “per se” bar placed on software. Most recently, the novel hardware
requirement has been deleted by the patent office in its latest guidelines. This leaves the
guideline and the statutory language heading in different directions which has given rise to
uncertainty.

The recent changes (positive in India and negative in U.S) has placed both the jurisdictions at
the same place in the spectrum. The Alice decision and the statutory language of the Indian
Act virtually place a blanket restriction on software patents. The paths to the eventual
destination have been vastly different in both countries but they have ended at the same place.

10
For the time being, it seems that the proponents of the side arguing against software
patentability would find favour in U.S as well as India.

V. CONCLUSION

The American Patent Act only enables the patentability of software under the term “process”.
There is no prohibition or limitation on the patentability of the subject-matter. The exceptions
have been created by the Courts. The Indian Act expressly states that software can’t be
patented “per se”. This clearly indicates that the legislature’s intention to prohibit the
Patentability of software in India. The US follows the 2 step test whereas the position in India
is that a computer programme is altogether not excluded from being patented. A computer
programme can be patented if it is capable of being producing further technical effect or any
technical contribution.

Both the countries though have different approaches initially, the development of law in both
the countries is going in the same direction that is in favour of granting software patents if the
software is capable of producing further technical effect.

By analysing the law in both jurisdictions, it emerges that there is still ambiguity as to
whether software should be granted patents or not. The initial approach was that it should be
excluded from the subject matter of patentability. However, with the advancements in
Information Technology in the 21st Century, there is a need to grant software patents and thus
the law is evolving in this direction apparently though not expressly.

11
 BIBLIOGRAPHY

Articles

Can we get software patents in India?, Intepat IP Services,......................................................6

Ericsson v. Intex, part II – The Perils and Pitfalls of Software Patenting. Kartik Chawla, 27
March 2015, SpicyIP, https://spicyip.com/2015/03/15017.html...........................................8
Patent eligibility after Alice, Paul J Sutton, 27 Feb 2017, World Intellectual Property View,
http://www.worldipreview.com/contributed-article/patent-eligibility-after-alice.................4
Patent Office Reboots CRI Guidelines Yet Again: Removes “novel hardware” Requirement.
Balaji Subramanian, 5 July 2017, SpicyIP, https://spicyip.com/2017/07/patent-office-
reboots-cri-guidelines-yet-again-removes-novel-hardware-requirement.html.....................8
Software and Information Technology Spotlight, SelectUSA,
https://www.selectusa.gov/software-and-information-technology-services-industry-united-
states.......................................................................................................................................1
The History of Software Patents in the United States, Gene Quinn, 30 November 2014, IP
Watchdog, https://arstechnica.com/tech-policy/2016/12/these-three-2016-cases-gave-new-
life-to-software-patents/.........................................................................................................1
The Supreme Court’s Decision in Alice Corp. v. CLS Bank Has Taken a Heavy Toll on
Patents for Computer-Related Inventions, 16 Feb 2016, Lexology,
https://www.lexology.com/library/detail.aspx?g=300e6862-012d-49dd-bed4-
ba8ae4477397........................................................................................................................4
Why Protect Software through Patents, Bitlaw, https://www.bitlaw.com/software-patent/why-
patent.html..............................................................................................................................1

Cases

Amdocs v. Openet Telecom, 841 F.3d 1288, 1294 (Fed. Cir. 2016)..........................................5
Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U. S. _ (2012).................2
Bilski v. Kappos, 561 U.S 593 (2010)........................................................................................4
DDR Holdings v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014).................................................5
Diamond v. Chakraborty, 447 U.S 303 (1980)..........................................................................2
Diamond v. Diehr, 450 U.S 175 (1981).....................................................................................3
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).........................................................3
Enfish LLC v. Microsoft corp, 822 F.3d 1327 (2016)................................................................5
Gottschalk v. Benson, 409 U.S. 62, 72 (1972)...........................................................................2

12
In Re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385........................................................................3
Intellectual Ventures v. Symantec, Inc., 838 F.3d 1307 (Fed. Cir. 2016)..................................5
Labcorp v. Metabolite, 548 U.S 124 (2006)..............................................................................3
State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368
(Fed. Cir. 1998)......................................................................................................................3
Telefonaktiebolaget Lm Ericsson (Publ) vs. Intex Technologies (India) Limited, 2015 (62)
PTC 90 (Del)..........................................................................................................................8

Constitutional Provisions

U.S. Const. art. I, § 101..............................................................................................................2

U.S. Const. art. I, § 102..............................................................................................................2
U.S. Const. art. I, § 8, cl.8..........................................................................................................2

Other Authorities

Guidelines for Examination of Computer Related Inventions (CRIs), 19 February 2016,........7

Guidelines for Examination of Computer Related Inventions (CRIs), 21 August 2015,..........6
Guidelines for Examination of Computer Related Inventions (CRIs), 30 June 2017,...............6
In Re Bilski, Electronic Frontier Foundation, https://www.eff.org/cases/re-bilski....................3

Statutes

The Patent Act, 35 U.S.C. § 1....................................................................................................2

The Patent Act, 35 U.S.C. §§ 1-376...........................................................................................2

13