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


In continuation of our previous post on section 3(k), this part discusses the other two section 3(k) cases.  For ease of readability, the entire post was carved in two separate parts.  Part 2 of 2 follows: Warning: Long post:    
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 mathematicalor business method or a computer programme per se or algorithms;”      
1695/DELNP/2005: Allowed
1.  A device (10) for storing personal profiles and for controlling the access, from a plurality of remote entities (16, 18, 20) within a telecommunication networksupporting a plurality of services, to
databases storing said personal profiles, characterised in that said device (10) comprises a first plurality of databases (44, 46, 48) and interfaces (24, 26) for managing and centrally controlling the access, from any of said remote entities (16, 18, 20), to said first plurality of databases (44, 46, 48) and to a second plurality of databases (50), said interfaces (24, 26) comprising:
a plurality of adapters (20) toward said first (44, 46, 48) and second (50) plurality of databases, each adapter being customized to a particular typology of database and adapted to allow the access to said
first and second plurality of databases independently from the typology of database;
a plurality of application interfaces(28) toward said plurality of remote entities (16, 18, 20) able to manage different mechanisms for accessing databases;
an authentication unit (52), for identification of said remote entities;
an authorization unit (37) for authorizing said remote entities (16, 18, 20) to use said adapters (26), by means of the verification of requirements and the management of a corresponding authorization to use;
an accounting unit (36) for tracking the accesses to said first (44, 46, 48) and second (50) plurality of databases.

This claim makes clear reference to devices, and more importantly provides use of each of the devices, when dealing with databases.  The claim, clears the initial threshold that the invention is for software even though databases are discussed. The Controller here recognizes that claims still require further qualification re the term devices and directs the applicant to include narrowing language.  “….amended to further qualify “device” (10) with its inbuilt or associated technical features  e.g.  server, processor, memories etc. together with their couplings so as to  provide for the workability of the  inventive  device.  The Controller denies other claims related to telecommunication network.  This claim, in my opinion, apart from having the correct terminology, shows that it not software/computer programme per se by including the necessary transformationof the database.  In addition, it satisfies the ‘per se’ test because the desired ‘effect’ is achieved.
5763/DELNP/2005:  Refused

1. A multi-layer graphical user interface method, comprising the steps of:
Rendering in a conventional manner one or more computer file objects of a first type (24) in a layer of a display area within a computer space (22); and
rendering in a de-emphasized manner one or more objects of a second type (930) that are different from the first type (24) in another layer of the display area,    
Wherein at least one of the one or more objects of the second Type represents users who share the computer space (22) and also Functions as a control for accessing a user interface to modify represented user’s access rights to the one or more computer file objects of the first type without a need to change a separate view or application, and wherein the de-emphasized rendering comprises at least  one of dimming, blurring, fading, shading, broken lines and water marking of the one or more objects of the second type relative to the conventional rendering.
This claim is not a clear cut case of falling under the software per se rule because at least some transformations are done to an interface.  Here the ‘technical effect’ seems to have been ignored.  There are no devices that are described in the claim.  The Controller cites to multiple US references that in their claim have some discussion about icons or graphical user interface; and does the obviousness analysis correctly, but fails to see that the references do discuss that it GUIs or their creation and manipulation are not software per se.  The Controller reasons:
“For the purpose of illustration, it is stated that a Computer programs are a  set  of instructions for  controlling  a sequence of operations of a data processing  system and are called a Computer program per se. The  claims  relating  to  software  program  products  are also nothing  but  a computer Program  per se, which is simply  expressed on a computer readable storage medium and as such are not allowable.  It closely resembles a mathematical method. It may be expressed in various forms   i.e. a series of verbal   statements, a flow chart, an algorithm, or other coded form and may be presented in a form suitable for direct entry in to a particular computer system, or may require transcription in to a different format (Computer language). For example, if the new feature comprises a set of instructions (Computer program) designed to control a known computer to cause it to perform desired operations, without special adoption or modification of its hardware components, then no matter whether claimed as “Computing Device ” or  as “A multi-layer graphical user interface  method  is not patentable as per section 3 (k) of Patent Act 1970.”  Emphasis added.
This, in my opinion, is incorrect application of the law.  Section 3(k) bars Computer programs per se.  The Controller has failed to explain why the claims are computer programs per se
Two reasons support my conclusion: (a) Partial application of law-Definition of per se should also be included while deciding on the claims;   (b)  The test of computer program per se should be the one used at the IPO, because India has adopted the European practice for section 3(k).  Given that there is a technical effect, the claim passes that hurdle.  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.  I agree with the Controller on the obviousness analysis.  

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).

9 comments.

  1. Anonymous

    Dear Rajiv
    Thats a good analysis.However why should anyone go by the assumption that india follows EPO approach wrt “per se” .Will such assumptions hold good in a court of law or even before a controller?

    Reply
  2. rajeev

    Dear Sir,
    Regarding 1695/DELNP/2005, I submit the following
    Upon reflecting on the claims it may not be correct to say that the invention is for s/w. These claims pertains to a device within a telecommunication network facilitating remote access. The first test is to judge in what way the inventions effects functionality. The invention solves the technical problem by technical means in that remote access to polarity of databases is made accessible from plurairty of remote entities within a telecommunication network. The focus of judgment is on “device” and not on transitions induced by s/w. Further in the judgment , the Controller has declined to pass the claim wherein the telecommunication network was inadequately defined. The “per se” test is subordinate to the fact that claims provided a general telecommunication network with a further functionality of accessing polarity of databases through remote access.
    Regarding 5763/DELNP/2005
    The Controller seems to be right. The contention in the post seems to stem from the fact that s 3(k) is being applied “per se” and not through the prism of tests viz. Firstly how the functionality is being effected. The h/w performance part of the GUI is not effected by the claimed invention. Manipulation of screen visual id solely a method introduced in the algorithm which can be changed producing the same effect. Careful reading of the Microsoft judgment would make this apparent. This is not a method which on performance gives an effect. It vis simply a method in form of computer instructions which when loaded gives a manipulated picture
    R.K.Jain
    Patent Agent

    Reply
  3. Rajiv Kr. Choudhry

    Mr. Jain: With respect to 1695, the Controller is correct to ask for narrowing of claims. He is also correct in not allowing the omnibus ‘network’ claim. The per se test is NOT a subordinate test. It is a primary test in determining whether claims are directed towards software/computer program as such/per se.

    I am not sure I follow your logic for the 5763 case. It seems that you agree with the controller on the 3(k) aspect. I would disagree on account of the reasons given in the post.

    Reply
  4. Rajiv Kr. Choudhry

    [email protected]:24AM: There are at least two sources at give a hint that per se would be according to the European practice.
    1. The debates in 2002 when the Current law was enacted.
    2. Our patent office manual-current version-Section 08.03.05.10 points e and f discusses in detail the ‘per se’ part. Plus, the previous version of the Manual refers to the Vicom case-that was decided at the EPO.

    Reply
  5. Anonymous

    Thanks for the clarification Rajiv.

    The EPO guidelines are more lucid than defining Per se in terms of computer programme products.The absence of examples makes life more difficult. I am not sure if we can rely on previous version of manual,even though it is correct.

    Reply
  6. Rajiv Kr. Choudhry

    [email protected]:30AM: True, our manual lacks examples, and our life becomes more difficult. But to the extent that both the current and previous versions of the manual discuss the criteria in more detail, it can be used (read cited) while prosecution of the application.

    Reply
  7. Anonymous

    @Rajiv, u said correctly that “manual lacks examples, and our life becomes more difficult.”

    Why these are done by the patent office and its officers? This is done just to get bribes/favours from patent agents/industrial houses. See the case of Delhi Patent Office—most of the officers are outright corrupt. If you need name, i can provide u with the associated patent case numbers. They sought bribes in different forms. Similarly, senior officials of Kolkata and Mumbai patent offices are outright corrupt. Do you know that the network of corruption is extended to the hands of ministry?

    In order to keep alive the life of rampant corruption patent office “manual lacks examples, and our life becomes more difficult”.

    Reply
  8. Anonymous

    @Rajiv, u said correctly that “manual lacks examples, and our life becomes more difficult.”

    Why these are done by the patent office and its officers? This is done just to get bribes/favours from patent agents/industrial houses. See the case of Delhi Patent Office—most of the officers are outright corrupt. If you need name, i can provide u with the associated patent case numbers. They sought bribes in different forms. Similarly, senior officials of Kolkata and Mumbai patent offices are outright corrupt. Do you know that the network of corruption is extended to the hands of ministry?

    In order to keep alive the life of rampant corruption patent office “manual lacks examples, and our life becomes more difficult”.

    Reply
  9. Anonymous

    @Mr. Rajiv,

    Why don’t u release my earlier post relating 2 ur comments on “patent office manual”?

    Reply

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