Patent

Yahoo’s Patent Application Denied Due to Section 3(k)


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Yahoo filed a patent application in 2007 for a method that scheduled the appearance of users’ online presence in an Instant Messaging (IM) application. Recently, it was turned down on grounds of containing subject matter that is ineligible for patenting.

In this piece, I am going to provide you with a preliminary analysis of the judgment.
I shall go into the broader issues in a later post. Nevertheless, I have attempted to weave in all earlier pieces on the same topic into the ensuing discussion, so that the interested reader can pursue his own research.

Before going any further, let us first understand what exactly constituted Yahoo’s claims.

THE CLAIM

In order to understand what Yahoo applied for, we need to first understand the pre-Yahoo functioning of the IM applications.

Generally, when you log in to your instant messaging account, other viewers are intimated of your online presence. Similarly, when you log out, other users view you as being offline.
This information is disseminated through interfaces similar to the one below:

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As the image shows, you could also appear offline, even if you are actually online, by tweaking the settings. This, of course, requires you to put in effort to change the settings every time you wish to show a status which is inconsistent with your actual status (online or offline).

So, what’s new in Yahoo’s application?
Instead of explaining the method in my own words, I shall characterize it in the fashion that A. Raja, the Assistant Controller of Patents and Designs (the decision maker), has. He viewed the claim as consisting of 5 elements:

  1. Setting”:
    Basically the program (meaning: computer instructions) that the server follows. A server is a machine with a processor and memory that takes inputs from users and processes them according to the “setting”.
  2. A routine online schedule of the user”:
    The user sets a start and end time i.e. the time period.
  3. Preference of the user”:
    The user sets his preference to be seen as offline or online by other users in the set time period.
  4. Determining”:
    The server processes the data you provide according to the “setting” of the server.
  5. Displaying”:
    After the server processes the data, the output is displayed. Other users will see the user as online or offline according to the set schedule.

THE DECISION

This decision brings into prominence the distinction between “patent eligibility” and “patentability”, as explained by Prof. Basheer here. Subject matter should first be eligible for patenting, before we can consider questions of patentability (inventive step, novelty, et cetera).
Section 3 of the Patents Act lists subject matter that is not eligible for patenting.

Pure Software is not eligible for a patent.
This is the law and I shall deal with why the law is the way it is in another piece.
For now, I shall trudge ahead, but before doing so, let me direct your attention to earlier posts that might shed some light onto the difficulties with allowing patents for software.

The relevant part of Section 3(k) of the Patents Act reads:

“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;”

Earlier pieces on the statute can be found here, here and here.

The statute itself provides us with little.
But entry 08.03.05.10 of the Patent Manual is far more instructive.
While the statue makes it clear that “Algorithms” and “Computer Programmes per se” are precluded from gaining a patent, the manual, apart from laying down the meaning of the above mentioned terms, also prescribes the procedure for going about analyzing Section 3(k). The test consists of two stages:

A. Is it an “Algorithm”?
B. Is it a “Computer Programme per se”?

If the answer to either of these questions is a “Yes”, then the patent needs to be dismissed.
The manual lays down that the examiner is required to first check whether the claim is an “Algorithm” and only then move onto the second stage, if required.

Though Mr. A. Raja could have wrapped it up once he established that the claim was an algorithm, he chose to deal with both the prongs of the analysis. We too shall analyze both stages.

IS IT AN ALGORITHM?

To understand what an algorithm is, we need to, once again, refer to the manual.

Algorithms in all forms including but not limited to, a set of rules or procedures or any sequence of steps or any method expressed by way of a finite list of defined instructions, whether for solving a problem or otherwise, and whether employing a logical, arithmetical or computational method, recursive or otherwise, are excluded from patentability.”

Prior to penning this piece down, I first made an outline. Similarly, programmers first come up with an algorithm, before they turn into computer code. Algorithms are also referred to as “Pseudo code” and constitute a series of steps to solve a particular problem.

Moving on to the decision, Mr. Raja stated that the claim consisted of a detailing of steps in order to schedule the appearance of a user’s online status and was therefore, clearly an algorithm.

Though Mr. Raja could have concluded the discussion here, he analyzed the second prong as well.

IS IT A “COMPUTER PROGRAMME PER SE”?

Prior to moving on to the core contention, let us first understand the distinction between an algorithm and a programme. In order to understand this better, let us consider an analogy:
Algorithm=Idea;
Computer Programme=Words expressing the idea;
For a single algorithm, there can be multiple programmes in different languages.
If you wanted to tell me to buy groceries, you would essentially want to convey one thing to me.
But you could do so in multiple languages.
Similarly, computers too understand multiple languages ( such as, C++, Java, et cetera).

Now that you have a basic understanding, let us get down to the issue in the decision.

In their claims, Yahoo referred to a server.
This is significant, because a server, consisting of a processor and memory, constitutes hardware.

Therefore, the question is:
Does the presence of a server push the claim outside the ambit of a Computer Programme “per se”?

It is well established rule of patent law that the examiner is required to judge based on the substance of the claim, rather than the form that it exists in. Mr. Raja acknowledged this and answered the above question in the negative.

The manual states that the examiner is required to identify the crux of the claim.
If the crux of the claim lies within the ambit of hardware, then Section. 3(k) will not apply. But the mere presence of hardware does not allow the claim to escape the ambit of the statute.

The server is regular hardware with a processor and a memory. The claim, essentially, seems to concern itself with the Yahoo’s IM applications interface and the lays down the method to schedule online appearance of users. In the current scenario, it is quite obvious that the crux of the claim does not lie in the hardware.

Though, in this case, it is quite clear that the crux of the claim does not lie in the hardware, it isn’t always so simple. I shall not delve into the complexities here and once again skirt the problem by directing your attention to some perspectives provided on the topic in earlier posts:
Application of US case law to Section 3(k)
Section 3(k)- A Different Perspective
Case Review (Two Part)

CONCLUSION

The Assistant Controller’s decision is a welcome one.
The application of the law has been precise and as Prof. Basheer notes here, examiners need to go for a straightforward reading of “Computer Programme per se”. Examiners need to identify where the inventive contribution lies i.e. in the software or the hardware.
If in the former, then the patent should not be granted.

Images from here and here

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Prateek Surisetti

Alias: Suri Net Worth: 0$. NALSAR Batch of 2019. Characteristic Features: 1. Thinks he's funny. 2. Can't shut-up about having topped in Class II. 3. Takes deep personal offence when his cricketing talent is questioned. 4. Will definitely reference his status as World#1 @ Reflex Ball (A sport he invented), within 10 minutes of conversing with him. Notable Endeavours: 1. Founder Access Fitness (Movement at NALSAR that promotes utilization of public spaces for furtherance of sport and fitness) 2. Author "Good Morning Miss Hobby" 3. Travel Photographer (Antarctica, India) Details @ www.facebook.com/prateekss Contact: [email protected]

3 comments.

  1. AvatarAnonymous

    Hi,

    I think this post is quite misleading. We have several controller’s decisions which interpret section 3(k) and the guidelines in another (more progressive) manner — therefore this decision isn’t the be all end all of interpretation of section 3(k). More importantly, the analysis is in an incorrect direction

    Specifically, the last line:

    “Examiners need to identify where the inventive contribution lies i.e. in the software or the hardware.
    If in the former, then the patent should not be granted.”

    If the statute intended to grant inventive contributions i.e. inventions only in hardware, then section 3(k) would have barred “computer programs” in their entirety. Its quite simple — if only hardware inventions are permitted, then simply state that computer programs are not permitted. Why did they intentionally add ‘per se’? An invention with contribution in the hardware is a hardware invention and in any case is no where near 3(k). It only a software or computer program related invention that would invite an analysis to distinguish between computer programs (allowed) and computer programs per se (not allowed). The set is computer programs which has 2 sub sets – one which is per se and one which isn’t. This set is distinct from hardware inventions. Simply put – some software inventions which have no inventive hardware may also be permitted

    Regards,

    Reply
    1. AvatarPrateek Surisetti Post author

      Hello.
      Appreciate you putting across such an articulate response.
      Firstly, let me confess that I am not incredibly well versed with S. 3 (k).
      Which is why I promised a more detailed post at a later point.
      I confined myself to summarizing the decision, which I had access to, rather than establish the law on the matter conclusively. I would be grateful if you could point me towards some of these more “progressive decisions”. I promise to go through them and get back with another post.
      With regards to your “Per se” analysis. I am not too sure about it.
      Could you please provide me with some supporting material?
      As far as I have read (Largely articles on SpicyIP and the Patent manual), software itself cannot be patented. Section.. 3 (k) exists to only ensure that essentially hardware inventions with a supplementary computer program are not denied (which you disagree with).
      Please check the last few paragraphs of this article:
      https://spicyip.com/2008/11/patenting-software-and-business-methods.html

      The patent manual says the following: Page 93; Entry 08.03.05.10;
      “f. If the claimed subject matter in a patent application is
      only a computer programme, it is considered as a
      computer programme per se and hence not patentable.
      Claims directed at ‗computer programme products‘ are
      computer programmes per se stored in a computer
      readable medium and as such are not allowable. Even if
      the claims, inter alia, contain a subject matter which is
      not a computer programme, it is examined whether such
      subject matter is sufficiently disclosed in the
      specification and forms an essential part of the invention.”
      The link for the manual is this:
      http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_28_1_manual-of-patent-office-practice_and-procedure.pdf

      Reply
  2. AvatarAnonymous

    Sure I would be happy to do that.. Please send me your email address

    Also you would know both the manual and the cri guidelines have changed several times and are also contradictory at different sections.. Using just the manual is therefore basing your analysis on very shaky grounds.. There are still several stakeholder meetings going on which discuss the intent of the legislature with a reading of the statute and are now moving towards producing a clearer document more in sync with these aspects

    Reply

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