Patent

Determination of Patent Eligible Subject Matter: A Comparison of US and India


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This post compares a current US case law relating to patent eligibility of computer implemented methods and compares with an example Indian case decided by a Controller.  It is startling to see how far the US patent law has come in defining abstract things (US 101) that are not patent eligible.  Let me explain more, for example, the US Federal Circuit has defined that claims dealing with data collection / identification of unwanted files / collection and analysis of information is directed to an abstract idea, and hence patent ineligible.

This position of defining unpatentable subject matter from the US should be a wake up call (and smell the coffee)  for those who take the position that Indian patent law is anti-innovation.  Surely what is good is the most pro-patentee jurisdiction in the world should be good for us. But then these very folks would comment on how the pro patentee US patent law has been diluted by the 3As: AIAAlice! That is a matter for a different post.

I also take this opportunity to question the current (2017) CRI guidelines that are verbose and do not add any value or clarity to Section 3(k).  It is a fact that the CRI guidelines have been amended thrice in three years.  It is highly questionable that something that is amenable to serial amendments provides any clarity at all?

Long post follows.

Last month, the US Federal Circuit in Intellectual Ventures v. Erie Indemnity Co. issued its decision affirming a district court decision that the claims of US 7757298 (hereafter the ‘298 patent)  did not meet the eligibility requirements of 35 U.S.C. § 101.

The US Supreme Court in Alice Corp. v. CLS Bank Int’l had provided a two part test to determine whether claims pass under § 101:  One, a determination be made to decide whether the claim/s are directed to excluded subject matter.  These exclusions cover laws of nature, natural phenomenon, or an abstract idea.  Then, a further determination needs to be made if the claim elements cumulatively surmount the exclusions.

In the case of computer implemented methods, …a generic computer implementation of an otherwise abstract process does not qualify as  overcoming the exclusions.  In contrast, a claimed improvement to a computer or technological process is generally patent-eligible.

Consider the claims of the ‘298 patent:

The District Court applied the Alice test and found that the ‘298 patent claims “… a computerized solution to a longstanding problem that exists outside of computers: identifying and categorizing illicit files, the possession of which might subject an individual or organization to liability.”

 

It is interesting to see the District Court’s analogy to “a librarian tasked with marking and removing books containing pornographic material from a library.”  But the Court did not point out the librarian’s methods to marking / removing illegal books / content.

The Federal Circuit reviewed the claims and applied the Alice test: The claims were directed to computer networks and were applicable to identification / removal of unwanted files and because the claim elements taken together did not surmount the exclusions under section 101 and hence not patent eligible.

The claims of the ’298 patent teach a method for “identifying and characterizing” files based on one of three selection criteria. ’Taken together, the claims are directed to the identification of unwanted files in a particular field (i.e., a computer network) and otherwise concern data collection related to such identification, such that they are directed to an abstract idea under our precedent. See Elec. Power, 830 F.3d at 1353–54 (explaining that collection and analysis of information is directed to an abstract idea); accord Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (discussing abstract idea precedent related to the collection, recognition, manipulation, and storage of data); Symantec, 838 F.3d at 1314 (characterizing materials “based on a known list of identifiers” is an abstract idea). …

The parties dispute whether the third criteria, noting information beyond an end of data file marker, has a manual analog. …We have found the idea of performing a search to ferret out sources with unwanted material “based on characteristics” of the source to be directed to an abstract idea, see Symantec, 838 F.3d at 1314 (footnote omitted), and the idea of “recognizing certain data” within a set, without regard to the individual criteria, to be abstract, see Content Extraction, 776 F.3d at 1347. As such, the third criteria and the claims, considering “their character as a whole,” are directed to a patent-ineligible abstract idea.

As I commented earlier, in my view, the US has reached a position where certain things have already been ruled to be patent ineligible – and the tests are applied accordingly.  For example, in this case the third element of the claim–using the nature of the source material–as being directed to an abstract idea.  It is for these reasons that patent owners / parties want the US Supreme Court to have a relook at the Alice case and Inter Partes Review proceedings – but that is subject matter of a different post.

The Indian patent law has specific eligibility provisions inbuilt into the Patent Act itself under Section 3.  This is very unlike the US Patent Act that provides that anything man made under the sun is patent eligible: 35 USC 101:  Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

And hence the need for guidelines?

Example Decision in 2275/MUM/2009 – Refusal

Before I comment about the case, I must state that this is a totally random decision that I looked up to see the Indian position.  There may be other cases – but I believe that this is a fair representation of the interpretation of Section 3(k) – (and holds notwithstanding any of the three guidelines).

If one sees this claim, this too is collection and analysis of information.

In the decision issued by the Controller, each element of the claim is analyzed.

What is striking (to me) is that the logic of the controller is the same as that of the US Federal Circuit.  The result, obviously, should be the same.

“As recited by the applicant on page 9 of the complete specification, the invention i.e., the
recommended application evaluation system (RAE) is a tool to easily and quickly evaluate a
recommended application to validate that the recommended application implements a particular functionality.

…Now, regarding inventive step, the applicant’s assertion that the features of the tool that “all the four sub-regions within a single recommended application evaluation area in a single graphical user interface” and “the first query is performed against only help documentation that provides trusted descriptions of Application Programming Interface (API) calls, and wherein the second query includes the first query and an API descriptor retrieved from a first set of search results corresponding to the first query” are not derivable from D1 or from D2 is not persuasive.   The preferential place of display of concept query display, a concept distribution display and a source code display within the recommended application evaluation area which may be derived from the figures 12 and 13 has no inventive technical character…

“…All the above arguments are however not applicable here since the invention is nothing but a computer program though it solves a technical problem. Technical advancement, technical solution and technical effect characteristics of the invention are not applicable since the claims 1-5 relate to a method which includes various steps performed by a processing means. These steps are implementation of logics which are nothing but algorithm underlying the computer programs.”

 

Rajiv Kr. Choudhry

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 a co-founder of RHA Legal, 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).

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