Challenging Software and Business Method Patents in India


Readers will recollect that SpicyIP reported on a “computer implemented” business method patent filed by the Center for Good Governance (CGG), a government undertaking based out of Hyderabad. For those that may not have time to click on the link above, here is the abstract of the application:

“A web-based legal case status management system for tracking, updating and retrieving case-related information and method thereof. A single server configured to house a data repository server in communication with a plurality of client systems over a communication network and at least another server configured to house the application required to process information stored in said data repository server and a web-based interface application housed in said data repository server configured to sort case-related information according to specified pre-defined parameters provides a web-based system for tracking, updating and retrieving case-related information”

This post generated some excellent comments, both on the blog as well as privately. Barring a few, everyone else thought that such patents should be challenged under section 3(k) of the Indian Patents Act which prohibits the patenting of software and business methods. I therefore thought this an appropriate time to build up some momentum and mobilise a group that might wish to challenge such patents. Anyone interested?

We know that there are some fabulous civil society groups opposing pharmaceutical patents, such as IMAK and Lawyers Collective. Is there one doing software patents? If not, this may perhaps be the right time to form one or to help an existing NGO take on this additional task by providing inputs. If any of you are interested, please let us know via the “comments” section of the blog or write to me at [email protected]

H
opefully, in the coming years, SpicyIP can provide legal inputs to anyone wishing to rid India of “bad” patent applications such as this and serve as a forum for generating more discussion around this theme.

So what would be the grounds for challenging CGG’s applications?

Clearly, the most important ground would be section 3(k) which provides that “no patent can be granted to an application that claims a “mathematical or business method or a computer programme per se or algorithms.”

CCG claims a business method, albeit one that is web-based or “computer implemented”. But should the mere fact that something is web-based or involves software of some sort change things? Particularly, when software is also not patentable in India and in most cases, the software deployed is fairly routine and the real “contribution” lies in the business method.

A recent UK case (that had been blogged about earlier) sheds some light in this regard.

I enclose the extract from our earlier post:

“The court of appeals endorsed a patent office refusal to grant Australian entrepreneur and solicitor Neal Macrossan a patent for “an automated method of acquiring the documents necessary to incorporate a company. It involves a user sitting at a computer and communicating with a remote server, answering questions”.

The court summarised the invention thus: “The essence of the invention is that by means of posing questions to a user in a number of stages, enough information is gleaned from the user’s answers to produce the required documents.

Questions posed in the second and subsequent stages are determined from previous answers provided and the user’s answers are stored in a database structure. This process is repeated until the user has provided enough information to allow the documents legally required to create the corporate entity to be generated. A number of document templates are also stored and the data processor is configured to merge at least one of these templates with the user’s answers to generate the required legal documents. The documents may then be sent in an electronic form to the user for the user to print out and submit, mailed to the user, or submitted to the appropriate registration authority on behalf of the user”.

The Court set out a four-step test that examiners should use when deciding whether inventions relating to business methods and software are patentable:

i) properly construe the claim ii) identify the actual contribution; iii) ask whether it falls solely within the excluded subject matter; iv) check whether the actual or alleged contribution is actually technical in nature.

Applying this test, the court held that Macrosann’s “contribution” was nothing more than merely implementing (via computer) a job that is otherwise done by a solicitor or company formation agent. i.e. helping a client procure necessary forms and fill them out in order to incorporate a company.

Neal Macrossan appealed to the House of Lords. The IPKat, a good friend of SpicyIP, recently reported that the House of Lords refused to hear this appeal. Therefore, this is as good as a final ruling on this point of law in the UK–unless of course, the ECJ gets a reference and decides to interpret the law differently.

Applying Macrossan to the present facts, it is evident that CGG’s actual contribution is nothing more than a business method i.e. a web-based system for tracking, updating and retrieving case-related information”. It bears noting in this regard that Indian courts tend to follow British precedents in IP related cases, not least because most IP legislations in India were drawn from their UK counterparts.

Tahir Amin of IMAK who does some excellent work in challenging “bad” pharma patents, brought another such business method case in India to my notice. A slightly worse situation since in this case, the patent has already been granted to McKinsey. For those interested, here are the details:

Application No. IN/PCT/2002/01358 (now granted Patent No. 201372) for a “Method and Apparatus for Conducting a Business Session”.

The corresponding PCT application is WO/2001/084448. The relevant claims are as below:

Claim 1: A method of conducting a bidding session, comprising the steps of : establishing a communications channel between a bidding session server and a web browser residing on a remote terminal ; transmitting bidding session status information from said bidding session server to said web browser via said communications channel; receiving a bid from said web browser via said communications channel; and in response to receiving said bid, transmitting an update of said bidding session status information to at least one web browser residing on at least one remote terminal, wherein said update has not been requested by said at least one web browser.

Claim 17: The method of claim 15, wherein said set of bidding session details comprises one or more of the following: a bidding session sponsor, a bidding session objective, a bidding session format, a bidding session date, a bidding session timer, a product being put to bid, a product specification, a required quantity, a contract duration, a contract delivery requirement, a contract performance penalty, a starting bid, a bidding unit, a minimum bid increment, a start time for bidding, an end time for bidding, a new bid time extension value, whether bid values are hidden, a number of total bidding rounds, a maximum number of bidders and a minimum number of bidders.

Here again, the claim is directed to a “method of conducting a bidding session” i.e a mere business method, albeit implemented via a computer, in much the same way as Macrosann’s application and CGG’s application.

Since this patent has already been granted, one can challenge this via the post grant opposition mechanism within a year of the grant. The patent grant was published on 2nd Feb, 2007, and any opposition has to be filed by 2nd Feb, 2008. Therefore, any challenge has to be mounted without any further delay.

Shamnad Basheer

Shamnad Basheer

Prof (Dr) Shamnad Basheer founded SpicyIP in 2005. He is currently the Honorary Research Chair of IP Law at Nirma University and a visiting professor of law at the National Law School (NLS), Bangalore. He is also the Founder of IDIA, a project to train underprivileged students for admissions to the leading law schools. He served for two years as an expert on the IP global advisory council (GAC) of the World Economic Forum (WEF). In 2015, he received the Infosys Prize in Humanities in 2015 for his work on legal education and on democratising the discourse around intellectual property law and policy. The jury was headed by Nobel laureate, Prof Amartya Sen. Professional History: After graduating from the NLS, Bangalore Professor Basheer joinedAnand and Anand, one of India’s leading IP firms. He went on to head their telecommunication and technology practice and was rated by the IFLR as a leading technology lawyer. He left for the University of Oxford to pursue post-graduate studies, completing the BCL, MPhil and DPhil as a Wellcome Trust scholar. His first academic appointment was at the George Washington University Law School, where he served as the Frank H Marks Visiting Associate Professor of IP Law. He then relocated to India in 2008 to take up the MHRD Chaired Professorship in IP Law at WB NUJS, a leading Indian law school. Prof Basheer has published widely and his articles have won awards, including those instituted by ATRIP and the Stanford Technology Law Review. He is consulted widely by the government, industry, international organisations and civil society on a variety of IP issues. He also serves on several government committees.

29 comments.

  1. AvatarShamnad Basheer

    Subsequent to the post, I found the below application in this week’s update from Big Patents India:

    SYSTEMS, METHODS AND COMPUTER PRODUCT FOR DISEASE RISK REDUCTION EDUCATION AND ASSESSMENT

    Application 1932/CHENP/2007 published 2007-09-28, filed 2007-05-07

    Systems, methods and a software product for disease reduction education and risk assessment are disclosed. In one embodiment, a system for computer-assisted disease risk assessment and education includes a processor that generates at least a plurality of questions directed to a disease risk assessment for a user. Based upon responses received from a user, the processor is further operable to generate one or more plans configured to prospectively guide the risk behavior and sexual activity of the user. At least one personal data entry and display device (PDDA) is communicatively coupled to the processor, that is operable to at least display the plurality of questions and to accept corresponding responses from the user.

    Reply
  2. AvatarPatent

    Such patents should not have been granted in the first place. This shows the efficiency of the Indian Patent Office which has been simply granting almost all applications without proper scrutiny.

    Reply
  3. AvatarShamnad Basheer

    Thanks Ravi,

    You’re right. Focussing on improving the quality of examination is far better than attempting to make amends once the damage is done. But resources are limited and people make mistakes–so both these initiatives (improving patent examination and challenging bad patents) should go hand in hand. In fact, more challenges to bad patents will make the patent office more sensitive to these concerns…

    Reply
  4. Avatarmedicherla.ravi

    shamnad
    to learn (to be sensitive) we need not make mistakes ourselves we can learn from the mistakes of other patent offices. sir Hugh Laddie’s comments are relevant in this context
    “Whether IPRs are a good or bad thing, the developed world has come to an accommodation with them over a long period. Even if their disadvantages sometimes outweigh their advantages, by and large the developed world has the national economic strength and established legal mechanisms to overcome the problems so caused. Insofar as their benefits outweigh their disadvantages, the developed world has the wealth and infrastructure to take advantage of the opportunities provided. It is likely that neither of these holds true for developing and least developed countries”(http://www.iprcommission.org/papers/text/final_report/execsumhtmfinal.htm)

    Reply
  5. Avatarmedicherla.ravi

    ….and one of the remedies suggested are
    ” Developing countries should, within the constraints of international and bilateral obligations, provide a pro-competitive patent system that limits the scope of subject matter that can be patented; applies strict standards of patentability; facilitates competition; includes extensive safeguards against abuses of patent rights; and encourages local innovation.”

    Reply
  6. AvatarShamnad Basheer

    Ravi,

    In an ideal scenario, where the patent office is the most enlightened institution on the face of this earth, we might have the perfect patents. Sadly, we don’t live in an ideal world and our examiners are but human–and are prone to making mistakes. When they do so, it may make sense to for us to let them know it….

    Reply
  7. AvatarPatent

    In the Indian Patent Office, Assistant Controllers are the final authority when it comes to granting patents. Therefore, even if an examiner gives a negative report, the Asst Controller can waive it off and grant a patent and vice versa in the case of a positive report.This is different from other Patent Offices where the examiner is the deciding authority. So,Asst Controllers should be held responsible for grant of bad patents.

    Reply
  8. AvatarShamnad Basheer

    Chandra and Ravi,

    Thansk for the references. Chandra–I will be posting soon on India’s attempts at becoming an international search authority.

    Ravi–the person writing the article is heading a law firm unit in India–and if I remember right, was the ex-Director of the Institute for Intellectual Property Devt (IIPD) in India. Given his present posn and bias, I’m not surprised that he advocates a less stringent patent regime

    Reply
  9. AvatarVaibhav Vutts

    The idea of opposing/contesting against bad patents is a good idea. At the same time to be critical about the Indian Patent Office is not such a good idea. The IPO is doing its job and the IPO is also trying to get in grips with the rapidly evolving laws. One must also not forget that there are only a handful of patent case laws for the IPO to go by.

    It is too easy to blame the IPO, but is it also not the fault of the attorneys to actually file and prosecute patents which they know should not be granted. It may be that the attorneys are bound because they have taken the work from their client and have no other option. But that does not acquit the lawyers to be guilty of encouraging grant of bad patents. I believe that charity begins at home and we have to change our own outlook, than except others to change.

    In any case, I will support this program not because of any deficiencies in the IPO or any other reason, but because we need precedents and interpretations which will help progress Indian patents laws to evolve and be helpful to all ranging from the lawyers to IPO to academicians

    Reply
  10. AvatarPatent

    Shamnad,
    Its not entirely surprising to know that the role of Asst Controllers(AC) in granting patents is not known to many people. Sections 12-21 of the Indian Patents Act deal with the roles of Examiners & Asst Controllers. The role of an Examiner ends with submitting a search report to the AC which is tranmsitted to the applicant as a First Examination Report(FER). However subsequent reports of Examiners based on the reply/amendments by applicant are written on notesheets(which are supposedly confidential and not covered by RTI)and can be over ruled by the AC.

    Reply
  11. Avatarmedicherla.ravi

    shamnad
    the last link given by me has an excellent comment by Chennai Highcourt in the present context
    “”The patent controllers are all experts having undergone considerable training abroad in this field… If the patent controller, exercising his statutory power, wrongly rejects the patent application on the ground that the drug is excluded under the amended section then such a decision could always be corrected by the appellate authority and then by the higher forums.””

    Reply
  12. AvatarShamnad Basheer

    Vaibhav,

    One of the points you raised was :

    “At the same time to be critical about the Indian Patent Office is not such a good idea.”

    And pray, why not?? Are you suggesting that we not point any fingers at the patent office at all? I was querying a friend of mine who prosecutes before the Indian patent office as to why the patent office in India got away with so much–and why attorneys never complained about their inefficiencies. His answer was simple–we don’t want to anger the patent office–and get a negative order in our next case.

    Is this sentiment a subtle undercurrent in your response too?

    This is not to say that the patent office alone is responsible for all problems associated with patents. No doubt, a variety of factors are responsible–but if an examiner ignores a provision in the Patents Act and does not apply his/her mind to examination, I think we need to call him/her on this–else we may never get to the kind of accountability that we desire.

    Reply
  13. Avatarchandra

    shamnad
    a look at the 2005-06,2004-05,&2003-2004 annual reports of the patent office
    indicate Very high acceptance rate of patent applications.as
    a matter of fact the Refusals U/s 15 of the Act during 2005-06 were just 5.where is the need for any one to complain

    Reply
  14. AvatarVaibhav Vutts

    Hi Shmanad

    What I meant was that we do not need to be “overly” critical about the Patent Office and simply blame the office for its inefficiencies or inadequacies. The changes are important and they will come slowly but steadily. The present lot of Examiners are young and some of them give the attorneys a run for their money. These are officers who are technology savvy and do not hesitate to check the records of WIPO, USPTO etc during the discussions. In fact patent attorneys are averse to go before such officers because they play by the book and are willing to refuse application if such applications do not satisfy the criteria of patentability. These are the lots who very soon would be taking over the reins as controllers, which in my view should augur well for everyone.

    India has been an easy country for foreign companies to get patents which have not been granted in other jurisdictions. As Chandra has rightly pointed that a very high percentage of patents are granted in India (conversely very low percentage is refused), shows that our practice has miles to go before the standards of western countries are matched. Therefore, it is important that we as practitioners require being constructively critical about the patent office as well as ourselves.

    I have been prosecuting in the IPO as well and my experience has shown that the IPO is not averse to changes. In fact, I am of the opinion that if there is a good case and the patent office does not accept it, then we should appeal to rectify the situation or in converse be prepared to be corrected by a higher forum. Either case, the winner is going to be the practice.

    Reply
  15. AvatarShamnad Basheer

    Dear Ravi, Patents and SKR,

    Thanks for all your comments and links provided.

    ALthough I’m happy that India has been chosen as an ISA, I’m still concerned about how they managed this, despite having such a poor record.

    Reply
  16. AvatarSudhir Kumar

    Dear Chandra,

    Thanks for your stat, please appreciate that Patent office prefers issuing abandonment letter under Section 21 than rejection letter under section 15, further under section 15 detailed reasons are to be given why response was not upto satisfaction of the examiner/ controller. And giving detailed reasons is more difficult than raising objections in FER.

    As to file notes of Examiner they can not be challanged by Assistant Controller, and for overriding them he has to give reasons in writing, which nobody prefers. There are number of other ways by which Controller can make Examiner mend his way amicablly.

    Reply

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