software patent requirements in Europe and India.

1. Software Patentability: US,
EU & India Perspective.
PRESENTED BY: ISHAN GUPTA (11IP60027)
RAJIV GANDHI SCHOOL OF INTELLECTUAL PROPERTY LAW

2. What is the need of software patents?
 Most prominent type of Intangible Instrument.
 Performs different complicated task in the business.

3. Why copyright or Database Right is
Good Enough ??
 Copyright protects code from copying and public dissemination.
However, the protection offered is for the particular arrangement of data,
not for the ideas represented by that data.
 Database right protects databases whether created by software or
created by human beings, for example, data tables which might be used
by a computer program to do its job. However, this offers only limited
protection to the constituent parts of the program itself.
 Patents, however, protect the concepts and methods associated with the
"Industrial Application" of computer programs.

4. Problem with the software patent…
 In United States Software’s are patentable
 In India like the European union does not allow patents for inventions
related to software.

5. US Perspective
 USPTO is granting a SW patent since early 1970’s.
 Section 101 of title 35, United States Code, provides:
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

6. patent-eligibility trilogy
 In this Gottschalk v. Benson (1972)United States Supreme Court ruled that a
patent for a process should not be allowed if it would "wholly pre-empt the
mathematical formula and in practical effect would be a patent on the
algorithm itself", adding that "it is said that the decision precludes a patent
for any program servicing a computer. We do not so hold.“
 In the parker v. flook the invention in this case was a method of calculating
alarm limits by using a "smoothing algorithm" to make the system
responsive to trends but not momentary fluctuations in process variables
(such as temperature). Because it was conceded that the implementation
of the algorithm was conventional, the Court found that the inventor did
not even purport to have invented anything on which a patent could be
granted.

7. Machine or transformation test
 In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (Fed. Cir. 2008), was an
en banc decision of the United States CAFC on the patenting of
method claims, particularly business methods. The Federal Circuit
court affirmed the rejection of the patent claims involving a
method of hedging risks in commodities trading. The court also
reiterated the machine-or-transformation test as the applicable
test for patent-eligible subject matter, and stated that the test in
State Street Bank v. Signature Financial Group should no longer be
relied upon.

8.  In the 1981 case of Diamond v. Diehr, the United States Supreme Court
upheld the CCPA's reversal of the USPTO, and ordered the grant of a
patent on an invention, a substantial part of which involved use of a
computer program which used a well-known formula (the Arrhenius
Equation) for calculating the time when rubber was cured and the mold
could therefore be opened. The Supreme Court stated that in this case,
the invention was not merely a mathematical algorithm, but a process for
molding rubber, which was therefore patentable.

9. Problem with software Patents
(EU Scenario)
 Art. 52(2) of EPC
(a) discoveries, scientific theories and mathematical
methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental
acts, playing games or doing business, and programs
for computers;
(d) presentations of information.

10. Art.52(3) of EPC
 The provisions of paragraph 2 shall exclude patentability of the subject-
matter or activities referred to in that provision only to the extent to which
a European patent application or European patent relates to such
subject-matter or activities as such.
 The European Union Directive on the patentability of computer
implemented inventions , (2002)

11. Current Position
 Since 1987, the Boards of Appeal of the EPO has
steadily developed a broader interpretation of Article
52. Accordingly, the number of software based
inventions routinely has been granted patent by the
EPO to the present time.
 Software-based patent applications have the highest
growth rate in all patent categories presented to the
European Patent Office over the past few years.

12. Requirements
According to Art. 52(1) of EPC
 The invention must be new
 The invention must involve an inventive step
 The invention must be capable of industrial application
Additional Requirement for SW Patent
 They must have technical character and solve a technical problem;
 They must involve an inventive technical contribution to the prior art.

13. EU Case Laws
 The Vicom Case (1984)
A patent application was made to a method of digitally processing images which
made use of a mathematical method incorporated in a computer program run
on an appropriate computer to do the said processing. It was the first case that
made a distinction between subject matter providing an effect that is abstract
(not patentable) and those with an effect that is technical (potentially
patentable).
 KOCH&STERZEL/ X-Ray Apparatus
In this case patent was granted to a X-ray device controlled by a computer
program so as to secure optimal exposure without overloading the X-ray tube.
Board decided that EPC does not forbid patenting inventions which consist of a
mix of technical and non-technical features.

14. Indian Perspective
 On January 1, 2005, the new Patents Amendment Ordinance, 2004 which
amends the Patents Act, 1970 has been promulgated to comply with
India's commitment under Agreement on TRIPS.
 Patent Act prohibited patenting of computer software perse, the
Ordinance qualifies this by stating that “a computer programme per se” is
not patentable “other than its technical application to industry or a
combination with hardware (Sec 3(k) of Indian Patent Act)
 Therefore, a computer programme which can possess a technical
application to the industry or a computer programme combined with
hardware would be capable of being granted a patent under the current
Indian laws.