The Draft Manual on Patent Practice and Procedure 2008 (patent manual), put up for comments by the Indian Patent office to follow as a guideline for the patent examiners as well as patent applicants has brought forth criticism on software patenting. Section 3(k) of the Patent Act 1970, as amended by Patents (Amendment) Act 2005, provides that a mathematical or business method or a computer programme per se or algorithms are not a patentable subject matter. The patent manual through the guidelines provided under its section 4.11 defining what is excluded from patenting vide section 3(k) is thought to be changing the substantive meaning of the legislation and seeking introduction of patenting of software, as if through a backdoor, in the face of it being clearly marked as an invention not patentable
The relevant section of the patent manual elaborates on the aspects which should be looked into applications related to computer inventions. Broad categories are given under which an application related to computer invention may fall viz. Methods/process; Apparatus/system; Computer program product. The manual differentiates “software per se” from the software having its technical application in the industry. Technical applicability of the software claimed as a process or method claim and defined in relation with the particular hardware components in a way that such technical process is carried out under the control of a program which, says the guidelines, cannot be regarded as relating to a computer program as such. An invention consisting of hardware along with software or computer program in order to perform the function of the hardware may be considered patentable, e.g., embedded systems.
A major development in denial of business method patent, reports Economic Times, may have a direct impact on the ongoing debate over amendments to patent manual and may also contribute towards larger debate on software patenting. U.S. Court of Appeals for the Federal Circuit denied a business method patent in IN RE BERNARD L. BILSKI and RAND A. WARSAW 2007-1130, (Serial No. 08/833,892). The court upheld a ruling made by the Board of Patent Appeals and Interferences that denied a patent for a method of hedging in commodities trading developed by Bernard Bilski and Rand Warsaw.
The Economic Times report mentions that the Bilski judgement may be used as a reference for drafting the amendments to the patent manual as well help in the interpretation of the Patents Act, 1970, which warrants a detailed analysis of the subject matter in a dedicated post.
Meanwhile All India Peoples Science Network views that the intention of the lawmakers was clear in defining the non-patentable subject matter, therefore, through guidelines, what is not patentable under law cannot be made patentable through practices and procedures, as the draft manual proposes to do. Technical applications have as their foundation the mathematical methods and therefore the content of the patent application is not something else but the mathematical algorithm itself albeit with a narrowed scope, hence not a patentable subject matter under section 3(k) of the Patents Act 1970. The phrase “software per se”, as viewed, makes clear that software “standing alone” is not patentable. The only exception which can be read into the statute is that a software application when a part of larger system and the system as a whole is eligible for a patent, can the computer program in conjunction with special purpose hardware or equipment be patented as a whole.
The patent manual, as provided, is a tool providing information to the users of the Indian Patent System on the Patent office’s practices and procedures. It is specifically mentioned that it be regarded as a ‘handbook’ precluding any imposition of a particular line of action. To that effect though the manual is devoid of any force and effect of law and does not constitute rule making, the seemingly diametrical view of the critics reflect that the intent of the statute coupled with India’s national interest is best served when the Indian patent regime works on the presumption that patents are to be given only when there is a decisive case for patents.
Software patenting under the Patents Act, 1970, the Draft Manual on Patent Practice and Procedure 2008, the scenario after the Bilski judgement makes a concoction spicy enough, befitting SpicyIP. The dedicated post will also try to bring in the Utility Model concept considering that most utility improvements take place in the technology and software sector.
Does the author gone through Bilski case before penning down the post?
Patent office is trying to poke hole into the patent law and in that regard the following point of view seems interesting:
“The phrase “software per se”, as viewed, makes clear that software “standing alone” is not patentable. The only exception which can be read into the statute is that a software application when a part of larger system and the system as a whole is eligible for a patent, can the computer program in conjunction with special purpose hardware or equipment be patented as a whole.”
So lets suppose I make a system that automatically customizes drug for a person based on his or her genes. I know this is a fictitious case but I am trying to understand this issue just using an example. The question is what piece of this entire system will be patentable:
1. The whole system so that no one one else can “automatically” customize drug for a person. This seems like a patent on a business method.
2. Patent on the software that implements a customization algorithm. Since the software is just implementing a hard coded decision based system, the patent on it seems really frivolous.
3. Someone needs to discover that certain drugs needs to be customized if the genetic structure has certain properties. So a patent on the specific drug modifications according to certain genetic structures. This seems like the most appropriate case to me.
However, the line between this kind of patent and a business method patent seems quite thin. This is because one can enlarge the genetic structures to be just any and claim patent on the idea of drug customization rather than how it is dependent on genetic structures.
I think your view on this fictitious case will help me understand what you mean by the above statement.
Dear Sushant,
Thank you. ‘All India Peoples Science Network’ under point 17 of its comment on the draft Patent Manual 2008 bring out the exception under section 3(k) of the Patents Act, 1970. The special purpose equipment customizing certain drugs depending on the gene sequences and the synthesis of proteins would be patentable, as you think under your third point, if the whole is patent eligible. On your last observation, if at all the comment forms a part and parcel of the manual, the Patent Examiner’s role is crucial.
Kamakhya