Anal yzing

Patentability of
Softwar e Inventions
By
Dr. Kalyan C. Kankanala
Brain League IP Services

© Brain League IP Services Pvt.

Ltd., 2009. Private Use is
Permitted.
Invention

Inventor report
Invention disclosure
Patent search
Patentablity Opinion
Patent application
Filing
Prosecution
Patent Grant

Patent
 Patentability
requirements

Patentable subject matter

Utility
Novelty
Nonobviousness
Specification

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
INVENTIONS Kalyan’s Patent
Filter Model
Subject Matter

Usefulness

Novelty

Non-obviousness

Specification

PATENTS
© Brain League IP Services Pvt. Ltd., 2009.
Private Use is Permitted.
 Patentable Subject
Matter
Process, machine, manufacture,
composition of matter and
Improvements

Product or Process

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 Exclusions
Abstract Ideas, Physical Phenomenon and Laws
of Nature.
Function of a machine
Mental steps
Mathematical Algorithm

India
Computer Programs Per se

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 Diamond v. Diehr
Process for vulcanizing rubber
Signal to open mold
Physical effect
Part of a process

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
State Street Bank Case
Hub and Spoke Software
Calcuate share of profits in mutual
funds
Concrete, Useful and Tangible Result
Business Method Exception

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 Bilski Case
Method of hedging risk
Machine or Transformation test

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
Subject Matter?

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 Utility

Current
Substantial
Credible

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 Novelty
Known or used
Patented or published
Public use or On sale
Abandoned
Foreign priority
Patented in another country

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 Novelty
Derived
Suppressed or Concealed
Diligence

Single prior art reference

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 Nonobviousness
Scope of prior art
Differences- invention and prior art
Level of ordinary skill
Secondary Indicia

At the time of conception

Obvious to try
© Brain League IP Services Pvt. Ltd., 2009.
Private Use is Permitted.
 Secondary Indicia
Commercial Success
Copying
Praise by expert
Unexpected results
Long felt need

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 Specification
Written Description
Enablement
Best Mode
Claims

Object: Notice and Dissemination

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
Analyzing Patentablity

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
European Patent
Convention

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Private Use is Permitted.
 Patent Law
European Patent Convention
Implementing Regulations
EPO Decisions
Directive

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 Article 52
Invention

Exclusions
“As such”
Mathematical methods
Business methods
Mental acts
Computer programs
© Brain League IP Services Pvt. Ltd., 2009.
Private Use is Permitted.
 VICOM Case

Apparatus and process for digitally

processing images
Application of mathematical method
Not Computer program as such
Patentable

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 IBM Case

Computer Program Product

Technical Character
Make computer hardware function in a
particular way
Patentable

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 ATT Case

Concrete Software from Specifications

Automation of certain steps - Call for
necessary modules
Held - Not Patentable
No technical character
Automation of mental steps of a programmer

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 HITACHI Case

Method of automatic auction

Mix of technical and non-technical steps
Held-Subject Matter
Prior Art must not be considered

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 PITNEY BOWES
Case
Method of Physical/Electronic mail
delivery system
Held - Patentable Subject Matter
Not precluded under Article 52

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 President’s Referral
Computer program
General Purpose computer
Specific device
Technical Effect
Technical Character

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 Example
A software for analyzing ECG data
remotely.

Is it patentable in Indis, USA and Europe?

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.
 Thank You

© Brain League IP Services Pvt. Ltd., 2009.

Private Use is Permitted.