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Software patents

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:
 3(k) a mathematical or business method or computer
programme per se or algorithms;
 by new clauses (‘04):
 3(k) a computer programme per se other than its
technical application to industry or a combination with
 3(ka) a mathematical method or business method or
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
 ..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.
 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 ..
 ..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.
 …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.
 Computer-related non-statutory subject
 Functional descriptive material
 Nonfunctional descriptive material

 Both types are non-statutory when claimed
as descriptive material per se
 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 computer-
readable medium needed to realize the
computer program's functionality, as non-
statutory functional descriptive material.
 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.
 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.
 … 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.
 …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.
 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.

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

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

 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
 Need not update the best mode

 Europe/Japan: at least one mode of
 Enable person skilled in the art to make the

 India: best mode of operation
Computer programs
 US:
 Program claims are allowed
 Good description of structure and operation of
 Snippets of source code helps

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

 Different claim formats
 System claim
 Computer readable medium
Claim specifics
 Avoid using words that narrow the
 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

 Built-in responses/fall back positions
 Obviousness or non-inventive rejection