This post is in continuation to the previous post informing our readers about the new CRI guidelines. And it was necessitated because of the serious debate triggered as evinced by the several comments on the previous post. This post will provide more details on how patents relating to software are being interpreted by courts / juries in the US, and some examples from Europe are also being provided.
However, before I get into the same, I must acknowledge the stellar role played by the Software Freedom Law Center in following up on this issue with the Controller’s office and the DIPP. It is because of the sincere efforts of the SFLC, and other members in civil society in pursuing this matter with DEITY, DIPP and other government departments that these guidelines have come across. For more details see, SFLC’s site here and here.
In the previous post, I had referenced a few US cases – These included the seminal Alice Corp. case holding that “specific hardware” consisting of a “data processing unit,” a “communications controller,” and a “data storage unit” were “purely functional and generic”. We then had Microstrategy holding that claims reciting “data storage devices,” “an intelligence server,” “an object server,” “a query engine,” and “an analytical engine” covered generic computer functions. Similarly, Intellectual Ventures I LLC held as “generic” a “telephone, pager, PDA, or the like,” a “pager network,” and a “cellular network”, etc. If I were to summarize these decisions – I would say that inclusion of generic hardware elements, does not confer patentability on software using such hardware.
In all the examples pointed out in the new CRI Guidelines, I see similar logic. Generic hardware has been used but there is nothing novel or inventive in putting together known elements to come up with a new result. Standard elements have been used as defined under the Von Neumann Architecture (Input | Processing Unit & Memory | Output ) – computers, desktops, palmtops, or smartphones. Put simply, just because a machine does it, does not mean it is patentable. A new generation processor is guaranteed to be faster than a previous generation processor. However, that is because the hardware is boosted significantly – what is the role of software in increasing the performance. Viewed from the lens of statute (other than computer programme per se), the machine should benefit from this new software – for software to be patentable (i.e. it should have something extra).
Can Alice be applied to the examples given in the CRI guidelines: Under example 1, computing a compatibility score (whether done by a computer or by hand) has no benefit to the machine (generic machine is used). In example 3, just because sorting manually takes time, does not mean that if a computer does sorting faster, the software is patentable. Similarly, for example 4. In example 5, it is same old hardware determining pension benefits. Similarly, examples 6 – 13, and 15 do not have anything extra other than generic hardware to implement the software, and hence they too fall under Alice.
Example 14: Some of the comments specifically addressed MPEG codecs case – I must make it clear that the following is my academic viewpoint only. I understand encoders / decoders to be related to compression and decompression of data – i.e. they help approximate data by building numerical models having a best fit for the data. Hence the obvious “advantage to the machine” is that by using the compression / decompression technique, it uses or has to read less data. With this, let us analyze the claim (I find it easy to read a claim – if I parse it completely):
| A method of determining, |
| from transform coded data, |
| an inverse transform to generate |
| a number of bits required to represent an output value |
| which would be obtained as a result of an inverse transform |
| being performed on said transform coded data, said method comprising the steps of: |
| obtaining, at an MPEG decoder, |
| a sum of coefficient values within said transform coded data (204); |
| comparing, in the MPEG decoder, this sum to a pre-determined threshold value (206); |
| deciding, in the MPEG decoder, as a consequence of said comparison which inverse transform implementation, selected from an 8 bit inverse transform implementation, |
| and a 9 bit inverse transform implementation, should be performed when decoding said transform coded data; and performing in the MPEG decoder on the transform coded data, the decided inverse transform. |
This particular claim computes the number of bits required to represent an output value, and where such number of bits required are computed according to a set of instructions. This claim too uses generic hardware to implement known functions (Fourier Transform, etc.), and hence this too may fail under the Alice framework. There is also no benefit to the machine here.
The Per Se test:
In my view, the language in Section 3(k) is clear – that computer programmes per se are not patentable. So is the corollary – what is per se not a computer programme should be patentable. In one of my previous post, I had mentioned that “[I]n 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.”
To understand this efficiency proposition – consider that a motor running at certain maximum RPM, Rmaxi. As an inventor, you make a “software” that sits in between the power source, and runs on with a processor, which renders the Rmaxi to be Rmaxii (Rmaxii > Rmaxi). In my view, this software (obviously it will run on the processor and not the motor directly) is patentable.
Take another example, you have a great Amplifier at home. As an inventor, you invent a software that makes the circuits function such that the resultant power is 1.00001 times than without your software. This too is patentable.
Take another example, as inventor you have invented a software + hardware module that sits in between a vehicles engine, and is also connected to the braking system, as well as infotainment unit. If all that your module does is provide the infotainment unit precise information about the engine, then in my view it is not patentable. You may ask why – well all previous generation vehicles had all sorts of mechanical guages to inform the driver – all that you did was take out the mechanical guage, and replace it with a LCD display. However, if you module captures the information and somehow increases efficiency of the vehicle in manner, it is patentable.
Finally, some comments mentioned that negative definitions do not help. I don’t agree. I see the logic behind the negative examples, and it is similar logic.
I thank all our readers who by their incisive comments have encouraged in putting up this post. I believe, I can say this for the entire Spicyip team, that readers comments keep us on our toes, and encourage us to bring more clarity in our posts! Thank you!!
an excellent article by Mr. Rajiv and its very, very informative.
Very Nice. But the examples provided in the last bit (more specifically the vehicle engine infotainment one) don’t really reflect rejections based on computer program per se. These cases can be rejected for lack of inventive step as they are obvious or it may also invite provision for mere arranagement or rearrangement of known components (reflected from the above article, where the author says”You may ask why – well all previous generation vehicles had all sorts of mechanical guages to inform the driver – all that you did was take out the mechanical guage, and replace it with a LCD display”. I absolutely agree with the Author that negative examples have to be present for clarity but at the same time a correct definition for the term “novel hardware” is also required. In any of the positive examples above, is the hardware novel?? Software in conjunction with a processor attached to motor, vehicles, amplifiers increasing the efficiency of the hardwares makes the hardware novel and hence Patentable. Does that mean, if compressing data and presenting the compressed data enables a processor to process less information and thereby reduce the time to increase the efficiency then the processor will be considered a novel hardware as per the guidelines?? That is where the missing link is, and examples on the positive side would have helped. But thank you for this extended version of the article.
I am afraid I will have to disagree with the examples cited. I do agree that improving engine efficiency is patentable (provided it is non-obvious and novel) . As part of the submission, I think our submission was the only one that wrote in detail on physical effects with positive and negative examples. Let us take the engine efficiency case. Assume a petrol engine. Now you can change efficiency by changing air/fuel mixture, by changing timing or by varying turbo speed (if it is one of the new Formula 1 type electric turbos – very cool toys !). Other techniques are possible but will involve mechanical changes. maybe even exhaust back pressure can be changed if I have an exhaust manifold whose path/volume can be changed with actuators. The point here is that any innovation that you come up with has to do with auto engineering. Presumably you will have a sequence. say when accelerating in 3rd gear, change air/fuel mixture first and then change valve timing. This method is eminently patentable but thsi has nothing to do with SW. You can use a GP computer running SW to control the sequence or a electro-mechanical system using gears actuated by a switch on the dashboard. Giving such an example to a comp sci academic with a background in patent law and who happens to be a Formula 1 engines is asking for trouble !
The amp example suffers from the same fallacy. One assume that you are referring to a Class-D or PWM type amp (all other amp topologies are heaters first and amps second, so do not make efficiency claims). Again great area to grant claims (see the work of Bruno Putzeys, great amp designer, to see innovation in this area). But again you are talking about circuit topologies that are novel. The topology can be set by a switch to say make it go into a higher efficiency mode or digitally controlled. If the latter, then some SW is involved. But that is like saying that the caretaker who turns on your computer knows how to architect a CPU. The SW simply makes automation feasible. No novelty there. And yes, I used to design amps in my younger days (was bad at it though !). These days I just buy Bruno’s modules. I wish Indian companies innovated more in this area.
I can continue this ad nauseam but my line of thought should be clear. The innovation lies purely in the mechanical/HW side. The SW merely helps in the automation.
The point here is that any innovation that you come up with has to do with auto engineering. Presumably you will have a sequence.
http://www.lawzmag.com/?cat=29
POOLLA R.K. MURTI
The Author of the BLOG makes a good and explanatory Contribution. It is rewarding to read all the Comments provided by Professional Experts of the Subject.
However, I merely venture to reproduce my Comment to an earlier Contribution by the Author (It is my bad luck that my Comment received no reply)
Blog (8 March 2014) of Rajiv Kr. Choudhry “Revisiting – patentability of computer programs and Section 3(k), a different perspective”
“Earlier my answer to ‘Software patentability’ while addressing a non-tech, law oriented audience is that: Embedded Systems which use Software to drive some hardware ‘as a whole’ are patentable while the ‘Software, per se, cannot be patented’. My emphasis was that Software cannot receive a Patent in a stand-alone basis but it should go along with the hardware it drives”
I do feel this simple statement of mine contains a lot of material from the Author as also from the erudite Comments of the other Commentators.
I will look forward to Comments on my Comment!
1. It seems to me that the Author’s logic is defective when he says that:
“So is the corollary – what is per se not a computer programme should be patentable”. What is per se not a computer programme has to be examined as per the Criteria of Patentability and so the word “should” seems to me to be grossly wrong.
2. The Author says: “[I]n 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 US “Software Patentability Literature” itself is extensive in spite of the fact that USC 35 is the result of a FEDERAL Legislation. I earnestly request the Author to clarify what he means by EUROPE,
a) Is it EU Directive
b) Is it EPO procedure
c) is it some individual Country;s procedure, for example, the UK Patents ACT
3. Finally, I wish to humbly submit that let us not be too much carried away by US Jurisprudence with reference to Patents. Let us develop our own Jurisprudence: the Nation is grateful to the Supreme Court for its unique decision in the case of NOVARTIS.
I wish to buttress point 3 by saying that the US long last recognised the “first to file” criterion (as against “first to invent” criterion); also, it seems a NEW PATENT BILL may be on the anvil soon. Again, nothing like “Half a dozen Patents before break fast ….”
So I would say, appreciate ALICE but it should not be a venerable Case Law for India to follow.
Well said. The first step towards a good Indian regime is to stop referring to other jurisdictions. I frankly feel there is nothing we can learn from them. It is time we went for a technology centric regime that addresses issues that are peculiar to each branch of technology rather than a legal centric, rights oriented regime that any legal fraternity originated regime invariably devolves into ! There is a fundamental philosophical issue here, technology is not really amenable to general principles (science may be, technology is not). The legal fraternity’s attempts to do so is the reason behind the grief all patents battles cause ! Laws for technology should be evolved from examples not from general principles. If I wanted to test my idea for innovation, I want to be judged by a jury of my peers not by non-practitioners of the art.
Similarly, people who understand intellectual property and deal with it day in day out need to comment on the issues. Not technical experts, who go gaga over technology without understanding the issues involved in crediting inventors for their inventions rather than hiding under the open source blanket and allowing ppl to copy easily under the name of innovation. People around the world are not fools, if someone thinks they know everything and do not need any assistance from around the globe then stop copying from the other countries. Make your own medicines without copying the intellectual property of companies who do research day in day out. Don’t be part of WTO. Just copy and be like China who have never given any importance to IP, they just copy to do business. Everyone knows what’s happening to them now. It’s dangerous to live in isolation and it’s dangerous to have such advisors to the govt.
I happen to be an expert on sw patents, advise patent law firms, the govt. and other entities apart from being a technologist. So I am well aware of these issues from a legal perspective. I worked mostly outside India, so have been exposed to the SW patent nonsense way back. I filed my first algorithm patent bin the mid 90s when I was a bit naive on these issues and have refused to file patents on my inventions after that. By my estimate, I would have filled 50 to 100 patents. So I am speaking from a position of strength. In fact this email discussion came up in a meeting last week ! The point is that if you look at the actual SW contributions worthwhile contribution is minimal. Again please use examples. Let us look at the 8 Ericsson patents and examine their novelty and then discuss on the need for SW patents. That would benefit this forum. You are commenting on SW patents without understanding on the nature of SW. Read the entry in groklaw on this issue. All SW is pure math. It is essentially modelled by something called a Turing machine. Do you even know that at the highest level, if you want error free SW all SW is written as logic equations ? So even the distinction between SW and algorithms and mathematics is in a sense arbitrary. Only laypoersins make that distinction. A sensible legal test would be , if it runs in a Turing machine it is not patentable. All digital HW in fact is pure SW and in fact pure math. So the novel HW part will also be problematic. The patent office is well aware of all these and are grappling with an ambiguously worded law. In that respect I admire their tenacity in battling the MNCs in arriving at a logically tenable CRI guidelines. By the way, India is innovating quite a lot in the area of SW and of late in HW too. See the Brain inspired computing program funded by one of the Infosys CO founders. So nobody is interested in copying , we just want others to copy our inventions freely ! You are more than welcome to attend my lectures on comp sci or innovations !
I have read lot of comments on these guidelines at Spicy IP. There are lot of good things spoken about on this platform both technical and non-technical. I may not be in the best position to understand and comment on most of it but as far as the per se term is concerned, I think we can look at some other forms of IP to try and find the answers. IP also includes, designs, copyrights, trademarks and others. Like the definition of design excludes artistic work which qualifies as a copyright, the intention behind insertion of the term “per se” could be that the subject matters protected under copyright may be excluded from Patents. Computer program per se is subject matter of Copyrights and not Patents (that is why referred to as non patentable subject matters under section 3k). Copyright protects the expression of idea and not the idea itself. The solution to a problem may not be protected under copyright but the codes used to define that solution are in written form, so they are protected as literary work under Copyright. Idea if novel and inventive gives rise to invention and becomes a subject matter of Patents. In terms of Softwares, its still a grey area and most of us may not be having absolute clarity on it. But if we take one step more on this line and try to understand that solution to a problem is nothing but an idea to solve a problem. There is a clear understanding that codes used in the software to solve the problem are just written literary work (expression of idea, codes are well known to the experts from IT) and cant be protected under patents. But then what happens to the solution?? Should the solution be disregarded as a mere software solution to a problem?? There can be different codes written to achieve the same result (to provide the same solution) but the individual who conceived the idea first (i.e the solution first), shouldn’t he get recognition under Patents provided the solution is novel and inventive?? Modification of codes (to be considered as different expression here) to achieve similar results can overcome copyright infringement but shouldn’t the idea which solves the problem be credited?? Should it be disregarded and not given any recognition?? If that will be the case then it may be easily passed to the open community which would give rise to unfair competition. I would like to say that this in just another line of thought to try and get some understanding on what may be considered as patentable and what may not be. I feel novelty and inventive step should be the prime criteria. Further, the guidelines also mention about “contribution of software”, I think the contribution of software in an invention (if any) can only be tested if novelty and inventiveness of the solution to the problem can be tested. Again, I am just trying to look at another perspective without wanting to be assertive.
I usually do not comment on my own posts, but do so only when they add value to the discussion. I agree with your statement -on Embedded Systems, and the example you referred to in the prior post.
I had extracted a decision from the EPO on patentability, and I was referring to that decision. The reason I extracted US law, is – If you read the 301 Trade Reports, India figures low on the totem pole. If US and Indian law is similar in application, how can India get an adverse report on protection of IPR, and that when the standards are the same? Second, my post specifically said, ” India had the patent law in place correctly from the beginning, and ventures to apply law from other jurisdictions was ill conceived.”
“it effectively means that depending on the judges you get, that will determine the outcome of your case on claim construction. And because the claim construction outcome is going to then be incredibly instrumental in everything else that occurs, you can say to no small degree that the identity of the judges at the Federal Circuit can in many cases determine the outcome of your entire case from top to bottom based on this issue of claim construction.” Professor R. Polk Wagner, Penn Law Univ
So much so, I would say, there is nothing to be proud of the US Jurisprudence in Patent Law – It is a Judge Aberration law!!!Other Countries should at least wake up now and start developing their own Jurisprudence.
2) “If you read the 301 Trade Reports, India figures low on the totem pole. If US and Indian law is similar in application, how can India get an adverse report on protection of IPR, and that when the standards are the same”
I would say GOD did not appoint US as the high Constable of the World to apprehend Countries at the Low end of the totem pole !
You mean our own jurisprudence to allow copying of ideas ?? Read this article in TOI today http://www.pressreader.com/india/the-times-of-india-new-delhi-edition/20160317/282527247547616
It appears the NGO has got it wrong or they wanted to influence the decision of the Patent office to allow easy copying of ideas. The author of this article is one of the most eminent IPR professional of this country. She happens to be a Senior advocate of the Supreme Court as well. People who have been advocating to be speaking on behalf of the companies should read this article. You can cut off from the rest of the world and to trade with them at the same time. The situation is really bad, I hope a representation to the Govt is made on this to make them understand the difference between computer program codes (per se) and the inventions involving software to solves a problem (patentable ideas), rather than listening to people who want to make everything available for copying.
I did read this article and find it extremely amusing that a member of the legal fraternity wants to hold an opinion on SW innovation ! I am not formally qualified to comment on her legal acumen or her knowledge of patent law but I think she should refrain from commenting on SW innovation. Unless you stand in the shoes of a SW professional who writes original SW, you will not have have a clue on how innovation works. In fact just last week, one of the inventors of the spreadsheet was commenting on how meaningless SW patents are. I think he is a little more qualified to talk on SW innovation, would you not agree ? If yiu look at teh companies that are innovating – Google, Facebook, Ebay, Twitter, Dropbox, Cloudera to name a few, do not rely on SW patents for their success. In fact you will not find one major piece of SW that is getting adopted in a major way that owes its success to SW patents. The companies that oppose the new CRI guidelines are coincidentally the likes of MS, IBM, Oracle etc. Notice the pattern ! Even in India the opposition is from are the old school services companies (not exactly the bastion of innovation) . The companies creating products (including the likes of Flipkart) are OK with the new CRI guidelines. Seriously whose opinion do you think is more significant, the inventor of the spreadsheet or the person you quote ?
I threw a challenge to a few of the companies opposing the CRI guidelines. Show me you top 3 SW patents and justify why they are germane to SW innovation at large. I advise most of these companies as a technical expert and hence they cannot just brush me off ! All I have got so far is a lot of hemming and hawing and more of “You see, you have to see our opposition in the right context ” !
The reality is that patents hinder innovation in SW. We got along splendidly till the mid 80s till the US supreme court committed intellectual hara kiri (or was it the court of appeals, I forget ). Even MS and its ilk were opposed to patents back then. To conclude, please ask MS why they now support Ubuntu in their OS when that very code was characterized as cancer by Mr. Ballmer. Simple reason, Ubuntu innovates more than MS in the OS space.
As a last example look at UC Berekeley’s reputation. They gave us modern TCP/IP newtorking, BSD OS, RISC CPUs – the list goes on – but they do not file patents in these areas. UCB by the way has a dedicated parking lot for Nobel Laureates, which is a reasonable indication in my book of innovation.
So to conclude, if you want to go spouting on SW innovation, try writing some code and then you will get an appreciation on what kind of protection SW needs.
Similarly, a legal person can interpret the intention of statue better than a technical person. Can you also throw some light on your understanding of copyright and Patents?? What is the difference between copyright protection and a patent protection in terms of software?? Why the Copyright acts give protection to a program and the Patent act excludes it?? Doesn’t it suggest, the protection you get in copyright is excluded from patents?? So, what u get in copyrights for softwares?? Its literary work..U think the ppl who framed the law to include the term “per se” in patents are fools. They understand this difference. What you get in copyright, you dnt get it in patents which is codes. No one talks about the functionality. The solution. That is why there is a distinction. Anyways.. the argument can keep going on. The worry is about India being isolated on this front as well.