“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]
Hopefully, 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.