Software patentability, section 3(k) and recent controller decisions at the IPO-Part 1/2


In a recent post, we had provided a list of decisions issued by the Controller, at our patent office (“IPO”).  A few of those decisions related to Section 3(k).  This post analyzes those two 3(k) decisions, and one 3(k) recent decision, issued late February at the IPO.  In addition, this post provides a list of Controller’s decisions issued in the month of February 2012.  The 3(k) decisions have been highlighted separately in the table below.  In two of the cases (January), the Controller got it absolutely correct.  The third case (Feb. 2012), sadly, in my opinion, leaves a lot to be desired as it is not clear on the law, and because it applies an incomplete definition of section 3(k) to the application/claims to reject them.  For ease of readability, the entire post has been carved in two separate parts. Part 1 of 2 follows: Warning: Long post:   

 APPLICATION #

APPLICANT

DECISION

SECTION/RULE

CONTROLLER

Sona Koyo Steering

Refused

15, 9(1)

P S Rao

Mitsubishi Electric

Allowed

15, 2(j), (ja)

C N Shashidhara

Novartis

Refused

2.j.a, 3(e), 10(4)

Dr Subramaniyan

Microsoft

Refused

3(k)

S.N.Sav

F.Hoffman-Roche

Refused

15, 2(j)/(ja)

Dr Subramaniyan

January 3(k)

TELECOM ITALIA 

Allowed

3(k)

B.P.Singh

NETOMAT,INC.,

Refused

3(k)

B.P.Singh

Before analyzing each decision, section (k) of our patent act is reproduced (with added emphasis) for ready reference.

“3. What are not inventions: The following are not inventions within the meaning of this Act, —

…(k)              a mathematical or business method or a computer programme per se or algorithms;”      

The final examined independent claims of each of the 3(k) decisions have been reproduced, with a few formatting changes, to show to our readers, the difference in application/claim style, and for easy analysis.  Each claim is individually commented upon with reference to 3(k).

1567/DELNP/2003: Refused

“1.  A method of communicating information between an author and a recipient 9 comprising:

formatting a document 115  in a code 112 compiling said code into a file of compiled code;

disseminating  said  file  through   computer  network, 119   either  by uploading said file to a server 117 or by making said file available through peer to peer networking; and

forwarding said file to a distribution channel for presenting said document on said  networked device 118, characterized in that:

the code has code for presenting said document in a predetermined manner on a networked device;

compiling said code such that a necessary element for creating or invoking a first application for presenting said document and/or for creating or invoking a second application being presented with said document is included in said compiled code; and

upon said compiled code arriving at said distribution channel, said necessary element creates or invokes said first application for presenting said document in said predetermined manner and/or creates or invokes said second application for being presented with said document.

Even to those of our readers, who have no idea about software, this claim gives some idea that information (underlined in the claim preamble) is being changed or formatted for presentation and the task is achieved by, for the lack of a better name, invoking functions within functions.  This claim falls squarely because it is software per se.  The term “per se” might be better understood from a European perspective:  In Europe, a computer program is software ‘per se’ because there may be no transformation of data/signal/input, or there is no tangible benefit to the device if this software is run on the device.  The benefit to the device may be in terms of efficiency, or increase/decrease in certain attributes.  A method implemented in a computer system represents a sequence of steps actually performed and achieving an effect, and not a sequence of computer-executable instructions (i.e. a computer program) which just have the potential of achieving such an effect when loaded into, and run on, a computer See decision of the Board of Appeal  of the European Patent Office in case T 0411/03 involving Microsoft.

The Controller recognizes this fact, and puts it very succintly:  “The claims of the instant application relates in form to an “algorithm” wherein the “characterised” clause defines the computer program and its function. No inventive ingenuity lies in any of the existing hardware. The characterisation of the principal claim reveals existence of a code within a code and compilation of such a code with a necessary element which is again a code used for presentation of information in accordance with description. Therefore, the subject matter of the patent application falls under the excluded category from patentability under Section 3(k) and is of non –patentable nature.” 

Rajiv Kr. Choudhry

Rajiv did his engineering from Nagpur University in 2000 in electronics design technology. He has completed his LL.B. from Delhi University, Law Center II in 2006, while working as an engineer at ST Microelectronics in NOIDA. After his LL.B., he went on to The George Washington Univeristy, Washington DC to do his LL.M. in 2007. After his LL.M., he has worked in the US at a prestigious IP law firm based out of Philadelphia. Till 2014, he was Of-Counsel to a Noida based IP law firm where he specialized in advising clients on wireless, telecommunication, and high technology. Rajiv is the founder of Tech Law Associates, a New Delhi based law firm specializing in IP law, with a focus on high - technology, and patent law. His core IP interest areas are the intersection of technology and IP, Indian IP policy, innovation, and telecommunications patents. He is also an inventor with pending applications in machine-to-machine communications domain (WO2015029061).

2 comments.

  1. Anonymous

    Same old story. The decisions are not consistent- which means that it totally depends on luck of applicant. Each controller runs his own fief.

    Reply
  2. POOLLA R.K. MURTI

    POOLLA R.K. MURTI
    Addressing Anonymous , it is inherent in Patent Law that DECISIONS WILL NOT BE CONSISTENT. This is the gift to us from USC 35; US Patent attorneys thrive on ambiguities in the phrase “NON OBVIOUS”. It may be emphasised that though US is a TRIPS signatory, it did not amend its USC 35 to use the TRIPS words like “INVENTIVE STEP” and “SUSCEPTIBLE to Industrial Production”. Arm Twisting India to amend its Patent Act is a different matter !!! There is absolutely no need to feel bad about our Patent Office Decisions. We would, of course, always analyse the decisions and offer critical comments because that is the stuff of Indian PATENT LAW PROGRESS.
    In any case, compared to the US, we surely do not have “Half a dozen Patents before Breakfast” !!!

    Reply

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