Representation by Knowledge Commons

Representation on Modifying Section 4.11 of the Draft Patents Manual

1.          Scope of 3 k) and the Amendment of 2004

3 k) A mathematical or business method or a computer programme per se or

algorithms are not patentable.

The Amendment that was a part of the Ordinance in December 2004 on 3 k) above was as follows:

 3 (k) a computer programme per se other than its technical application to industry or a combination with hardware;

3 (ka) a mathematical method or a business method or algorithms;

2.           Clause 4.11.1 A computer implemented invention mean any invention the performance of which involves the use of computer, computer network or other programmable apparatus, or an invention one or more features which are realized wholly or partially by means of a computer programme/ programmes.

Comment: The Clause above introduces a new category called computer implemented invention. The Patents Act cannot make an exception for inventions merely because the performance of this invention requires a computer. There is no provision in patents law for such exceptions to be created.

3.        4.11.5 Applications related to computer inventions may broadly fall under the following categories:

(a) Method/process:

(b) Apparatus/system:

(c) Computer program product.

The following aspects should be looked into while dealing with such applications.

Comment: The way this clause is phrased, it appears to accept that computer program products can have valid claims with regards to patents. It should have been made clear in this clause that computer program(me) products are not patentable as they come under computer programme per se.

4.              4.11.6 The method claim should clearly define the steps involved in carrying out the invention. It should have a technical character. In other words, it should solve a technical problem. The claims should incorporate the details regarding the mode of the implementation of the invention via. hardware or software, for better clarity. The claim orienting towards a “process/method” should contain a hardware or machine limitation. Technical applicability of the software claimed as a process or method claim, is required to be defined in relation with the particular hardware components. Thus, the “software per se” is differentiated from the software having its technical application in the industry. A claim directed to a technical process which process is carried out under the control of a programme (whether by means of hardware or software), cannot be regarded as relating to a computer programme as such.

For example, “a method for processing seismic data, comprising the steps of collecting the time varying seismic detector output signals for a plurality of seismic sensors placed in a cable.” Here the signals are collected from a definite recited structure and hence allowable.

Comment: Here, the Draft Manual clearly deviates from the Legislative intent that was expressed in rejecting the Amendment of the Patents Act as discussed in point 1 above. The Patent Office is now bringing back the Amendment of 3 k) by an interpretation that was denied by the Parliament.

There are two major departures that it makes from 3 k). In one, it expresses “the mode of the implementation of the invention via. hardware or software, for better clarity” treating software inventions to be on par with hardware inventions. This violates 3 k), which explicitly bars software per se. The argument that any software that solves a technical problem is not software per se is not sustainable as every problem solved can be claimed to be technical in nature by virtue of suitable drafting. It then makes software patents a matter of drafting skills and not a matter of content. The statement “the “software per se” is differentiated from the software having its technical application in the industry” has the problem that software can be claimed to solve problems in the data processing or in the video gaming or in multimedia industry. This definition renders software per se as devoid of any meaning and therefore is in violation of 3 k).

Software is machine implementation of an algorithm and by implementing on a computer an algorithm cannot become patentable. We have given detailed notes on this issue and have also shown that the US is currently revising some of these notions of software patenting.

The second issue is when software is combined with hardware. Here, the Draft Manual seems to argue that if the method is connected to physical signals, this in itself is enough to make the method allowable for patenting. The key question that the Draft Manual does not address that if the method has insignificant pre or post processing activity, in that case the method does not become eligible for patenting merely because it is connected to some real structures. Otherwise, a software which cannot be patented under current patent law would become eligible merely by adding some trivial pre or post processing features. It again becomes a way of “dressing” up software to escape from the bar of 3 k) and making this a drafting art rather than real content in terms of invention. A number of applications would need to be separately shown in the Patent Application to cover all possible applications of a method or an algorithm to convert a non-patentable idea to a patentable one.

5.       4.11.10 A mathematical method is one which is carried out on numbers and provides a result in numerical form (the mathematical method or algorithm therefore being merely an abstract concept prescribing how to operate on the numbers) and not patentable. However, its application may well be patentable, for example, in Vicom/Computer-related invention [1987] 1 OJEPO 14 (T208/84) the invention concerned a mathematical method for manipulating data representing an image, leading to an enhanced digital image. Claims to a method of digitally filtering data performed on a conventional general-purpose computer were rejected, since those claims were held to define an abstract concept not distinguished from a mathematical method. However, claims to a method of image processing which used the mathematical method to operate on numbers representing an image can be allowed. The reasoning was that the image processing performed was a technical (i.e. non- excluded) process which related to technical quality of the image and that a claim directed to a technical process in which the method used does not seek protection for the mathematical method as such. Therefore the allowable claims as such went beyond a mathematical method.

Comment: By virtue of the above, the Draft Manual is stating that the allowable claim goes beyond a mathematical method as it specifies a physical entity (signals) and the technical process (image processing) and therefore can be patented. Simply put, what the patent office is claiming is that while a mathematical method cannot be patented, however its application to a specific technical field – image processing in the Vicom case – is patentable.

The problem with this approach is that while the patent office may regard image or signal processing as a technical application, what is being patented is still a mathematical method. The mere fact that it is a mathematical algorithm applied to a specific application with specific physical entities does not change the content of what is being patented, which is still the mathematical algorithm. Only the scope of the patent is being narrowed by limiting it to image processing.

If the above is accepted, all that would be required for securing software patents for the actual mathematical method is to file separate applications for each of the application of the mathematical method, in this case the digital filtering algorithm. This is merely changing the form of the patent application and not its substance. We find such an interpretation completely contrary to the patent law that has been framed in this country.

The Image Processing case is particularly important, because if it is accepted, all compression techniques would also be patentable on similar grounds. Already, the practices of USPTO and EPO have led to a situation that a number of standard formats such as MPEG (MPEG4) and GIF have come under patents. Since any company that uses digital pictures – cameras, images on the web, etc., can be sued for infringing such patents, the potential economic consequence of such patents is enormous. This is why software patents under any garb, are particularly pernicious.

One of the earliest software patents was that of the LMZ compression, which was used in the GIF format. It is now widely accepted in the software industry that such patents are in fact patents of mathematical algorithms. It was because the GIF format came under a patent threat that other formats became popular. However, similar threats now exist for other formats for image processing. In most such cases, the software industry has had to file review applications in USPTO to invalidate such patents. We see no reason why we should follow this tortuous path, when we have a clear law on this on our statute books disallowing software patents.

The Indian Government has taken numerous policy decisions to promote open source software wherever it is available. One of the major threats to open source software is patents and the use of these patents in proprietary formats such as the GIF example noted above. This will effectively mean that Open Source software will be threatened by such patent claims making interoperability between two formats difficult to achieve. This will strike a body blow against the policies that the Government has been promoting on open source software in the country.

Instead, what needs to be done is to define the software in any invention in the manner of prior art. If the inventive criteria are satisfied outside of the software then the invention would be considered patent eligible. In the next para we have defined what in our view constitutes software per se, which is not patent eligible and allows for devices to be patented even if they have software as a component provided certain criteria are satisfied.

6.               We give below what we believe is a clear and an unambiguous definition of software per se, which is therefore not patentable. This should replace the entire section 4.11.

 Computer programme per se in clause 3 k) Computer programme per se in the relevant clause means (a) any computer programme in the abstract, (b) any computer programme expressed in source code form, including source code recorded on an information storage medium, or (c) any computer programme that can be executed or executes on a general purpose computer, including computer programme object code designed for execution on a general purpose computer that is recorded on an information storage medium. An information storage medium means any disc, tape, perforated media or other information storage device, which, if fed into or located in a computer or computer based equipment is capable of reproducing any information, other than an information storage medium that itself represents an inventive contribution to the art. A general-purpose computer here means a device capable of running multiple unrelated programs, often simultaneously for different purposes. It will comprise at least of: (1) one or more central processing units, (2) one or more input devices that are not specific to any one program, (3) memory, (4) one or more non volatile mass storage devices, and (5) one or more output devices. However, a general-purpose computer does not include a device that itself represents an inventive contribution to the art.

Under the foregoing definitions, a claim that merely recites software elements without any reference to hardware is per se unpatentable. If a claim recites both software elements and hardware elements, but the hardware elements amount to nothing more than reference to the components of a general purpose computer on which the software is executed, or an information storage medium in which the software is stored, such that the only possibly inventive aspect of the claim resides in the software elements, then the claim is not patentable. If the software/general purpose computer is combined with other hardware, and the inventive contribution resides primarily in the software or in the software in combination either with components of the general-purpose computer or in an information storage medium, then the claim is not patentable. If the claim recites software elements and hardware elements, and the hardware elements themselves are an inventive contribution to the art, then the claim may be patentable, provided that the claim as a whole is such that the pre-requisites of novelty, non-obviousness and utility are met.