This document discusses patenting of software inventions in various jurisdictions. It provides an overview of the patentability requirements for software inventions in the US, EU, India, Japan and at the EPO. It discusses exclusions, such as for business methods and algorithms. It also provides examples of patentable software inventions and best practices for writing patent claims for software inventions.
2. Patent Amendment Ordinance
Patents (Amendment) Act 2002, specifying as
excluded subject-matter:
3(k) a mathematical or business method or computer
programme per se or algorithms;
by new clauses (‘04):
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 business method or
algorithms;
3. Software patents
Intel Corp. USA, No. 192439, "A method of processing a request and a computer system and
microprocessor therfore", 2004-04-24
Siemens, Germany, No. 193501, "Method for cashless payment", 2004-07-24
Canal + Societe Amonyme, France, No. 193654, "Method of download data to an MPEG
receiver/decoder and an MPEG receiver/decode", 2004-07-31
Siemens, Germany, No. 181381, "Method for transmission of digital signals in time division
multiplex channel from via a ATM transmission device.", 2004-11-29
Interl Corp, No. 192590, "Method for providing content interruption", 2004-05-08
Sun Microsystems Inc., 193708, "A computer implemented process for processing a computer
program and a computer program product therefore", 2004-08-07
Siemens, Germany, No. 194407, "A method for offering announcement in a communication
network and the communication network thereof", 2004-10-30
Siemens, Germany, No. 194087, "Method for transmission of data between a terminal and
portable data carrier over a wireless electromagnetic transmission stretch", 2004-09-25
Sun Microsystems, US, No. 194159, "An interactive computer assembly for implementing
message dispatch for an object oriented program and method therof", 2004-09-25
4. IPO
..if however the format of the program, or
the nature of the record medium (tape,
disc etc.) necessitated some non-standard
adaptation to the computer itself (this
factor being integral to the invention and
not an arbitrary unrelated addition) then
the exclusion would not apply.
5. IPO
If the implementation of a new program
requires internal modification to a
computer of such a nature that it may
reasonably be regarded as a new
computer then clearly a claim to this
computer is not excluded .. the
modification must however be inventive
itself ..
6. IPO
..a novel solution to a problem relating to
the internal operations of a computer,
although it may comprise a program or
subroutine, will also necessarily involve
technological features of the computer
hardware or the manner in which it
operates and thus, if appropriately
claimed, may be patentable.
7. IPO
…computer program product is claimed as
“A computer program product in computer
readable medium”, “A computer-readable
storage medium having a program
recorded thereon”, etc. In such cases the
claims are treated as relating to software
per se, irrespective of the medium of its
storage and are not held patentable.
8. USPTO
Computer-related non-statutory subject
matter
Functional descriptive material
Nonfunctional descriptive material
Both types are non-statutory when claimed
as descriptive material per se
9. USPTO
Since a computer program is merely a set
of instructions capable of being executed
by a computer, the computer program
itself is not a process and USPTO
personnel should treat a claim for a
computer program, without the computer-
readable medium needed to realize the
computer program's functionality, as non-
statutory functional descriptive material.
10. USPTO
When functional descriptive material is
recorded on some computer-readable
medium, it becomes structurally and
functionally interrelated to the medium and
will be statutory in most cases since use of
technology permits the function of the
descriptive material to be realized.
11. USPTO
Example
…a claimed computer-readable medium
encoded with a data structure defines
structural and functional interrelationships
between the data structure and the computer
software and hardware components which
permit the data structure's functionality to be
realized, and is thus statutory.
12. EPO
… although methods for doing business,
programs for computers, etc., are as such
explicitly excluded from patentability, a
product or a method which is of a technical
character may be patentable, even if the
claimed subject-matter defines or at least
involves a business method, a computer
program, etc.
13. EPO
…a computer program is considered to
have a technical character, if it causes,
when run on a computer, a technical effect
which may be known in the art but which
goes beyond the "normal" physical
interactions between program and
computer. Such effect may, for example,
be found in the control of an industrial
process or in the internal functioning of the
computer itself.
14. EPO
A patent application for an Internet auction system was
not granted because the system used conventional
computer technology and computer networks - which
meant it made no inventive technical contribution to the
level of existing technology. Such a system may provide
business advancement to its users, but that is not the
type of advancement required by the EPO.
On the flip side, the problem of improving signal
strengths between mobile phones is a technical problem,
even if it is solved by modifications to the phone software
rather than its hardware. Such an invention would obtain
a patent, provided that the solution is also novel and
inventive.
15. JPO
To be qualified as a "statutory invention"
prescribed in the Patent Law, the claimed
invention shall be “a creation of technical
ideas utilizing a law of nature.”
16. JPO
Example: A computer to calculate the minimum value of
formula y=F(x) in the range of a<=x<=b.
Rationale
It cannot be said that the information processing to
calculate the minimum value of formula y=F(x) is
concretely realized by the fact that the computer is used
"to get the minimum value of formula y=F(x) in the range
of a<=x<=b." This is because information processing to
calculate the minimum value of formula y=F(x) and the
computer cannot be said to be cooperatively working by
only saying "a computer to calculate the minimum
value..."
17. JPO
Examples that are patentable:
control of an apparatus (rice cooker, washing
machine, engine, hard disk drive, etc.), or
processing with respect to the control; or
information processing based on the physical
or technical properties of an object (rotation
rate of engine, rolling temperature, etc.);
these examples constitute "a creation of
technical ideas utilizing a law of nature."
18. EU/India/Japan
An invention enabling receipt of orders via
the Internet, for instance, which were
taken by fax or telephone in the past, will
not be regarded as having inventive step
Assumed to be within the scope of
ordinary creative activity of a person
skilled in the art
19. Mode of operation
US: best mode of operation
Need not update the best mode
Europe/Japan: at least one mode of
operation
Enable person skilled in the art to make the
invention
India: best mode of operation
20. Computer programs
US:
Program claims are allowed
Good description of structure and operation of
program
Snippets of source code helps
EU/India/Japan:
Mere program claims are not allowed
21. Complex software applications
Include function block diagrams
Hardware illustration
Structure of the software
Files and/or functional modules
22. Business Methods
US/Japan:
Business methods are patentable
Mere automation of an existing method is not
patentable
EU/India:
Business methods are part of exclusions
If needed, claim the method as technology
“technical character” dominates
25. General claim strategies
Diversity of claims in scope
Narrow/medium/broad
Harder to invalidate
Different claim formats
System claim
Computer readable medium
26. Claim specifics
Avoid using words that narrow the
interpretation
Critical, must, required, necessary, only,
always, never
“Comprise” better than “consisting of” or
“which consist of”
“a”/”an”
27. General claim strategies
Focus on physical aspects of the invention
Apparatus or machine claims
Physical transformation for process claims
Avoid overly broad statement without any
limitation to a specific use
Built-in responses/fall back positions
Obviousness or non-inventive rejection