PATENTABILITY OF COMPUTER SOFTWARE IN US (By- Apsi Adithya kumar)
PATENTABILITY OF COMPUTER SOFTWARE IN US
Authored By- Apsi Adithya kumar
LL.M (IP) PhD, IUCIPRS
Brief:
Until the end of the 20th century, the
functionality of the most innovative products, especially
semiconductor-based products, was primarily embedded in hardware. There
was no doubt about their patentability. But today, increasingly sophisticated
semiconductor technologies and design tools mean that physical
objects are no longer the only foundation of innovation. In other
words, technical functionality is increasingly moving from hardware
to software. Still, in many jurisdictions, software-related inventions are either unpatentable or
have very limited scope of protection.The tremendous economic growth
and innovation potential of technology
companies developing products that combine hardware and software, and
the general software industry, is the time to rethink
IP laws and adapt them to
today's commercial reality. Suggests that has come.
Introduction
Doubt as to
whether computer what programs are properly patentable subject under section
101 have existed since the earliest days of computer science. It is unclear whether
it will be possible to overcome the crucial question that have continued to be
raised with the birth of the computer programs. It is questionable whether
computer program is violating the functioning of the human brain. It is
questionable whether the existing patent law was broad enough to recognize a
program as a patent. There are questions about the meaning of the court’s
ruling as to whether the program is patentable. There is also the question of
whether it is reasonable to protect computer programs under patent law.
Patentability Of Computer
Software In Us
35 U. S. C.
§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 the Act.[1]”
Four main requirement of Section 101 are:
·
“A” patent – means only one patent granted for
each invention. Basis for statutory double patenting rejections.
·
“Useful” – the
invention must have a specific, substantial, and credible utility.
·
“Methods, Machinery,
Manufacturing, Material Composition” “Subject Compatibility”
These categories separate patentable subjects as interpreted by
the courts.
·
“Whoever invents or discovers” - A patent
may only be obtained by the person who engages in the act of inventing.
From the
main requirement we want to understand what is process, machine and composition
of matters and also in which computer software is included:
·
Process – “an act, or series of acts or
steps”
·
Machine – “a concrete thing, consisting of
parts, or of certain devices and combination of devices”
·
Manufacture – “an article produced from raw or
prepared materials by giving these materials new forms, qualities, properties,
or combinations, whether by hand labor or by machinery”
·
Material Composition – “Any of two or more
substances and any compound object, whether as a
result of chemical association or mechanical mixing, or
whether it is, for example, a gas, liquid, powder or solid.
Composition.
From the
meaning of manufacture we can understand the computer software comes under that
meaning.
Is Computer
Software Or Program Is Protected Under Patent Law In Us?
In the
United States software is patentable. Software patents
are typically referred to as computer implemented processes.
Software can be protected in the U.S. if it is unique[2]
and tied to a machine[3].
Most importantly, for
software to be patentable, the software needs to offer some kind of identifiable
improvement[4].
It is very
unlikely that only what is known
on the computer (such as adding numbers)
will be patented. For example, US patent law excludes
"abstract ideas," which are used to reject some
patent applications, including software.
While source
code[5]may
not be patentable, it does not mean that a software invention may not be
patented. One way of determining whether a software invention will be
considered patentable subject matter or not, is by trying to judge whetherthe
software invention offers a technical solution to a technical problem. The
invention may be considered patentable subject matter if the software
invention offers a technical solution to a technical problem.
Judicial Exceptions
There are
two criteria for the subject mattereligibility for Patent. Subject matter
eligibility can be two types:
A.
Statutory categories of subject matter.
B.
Judicial exceptions.
If the
patent claims fall within one of the four categories of patentable subject
matter that is statutory categories of subject matter and that are process,
manufacture, machine or composition of matters then it falls within the
statutory exceptions or statutory categories of subject matter. If the patient
claim does not fall within these four categories, then another exclusion is
judicial exception. The judicial exception is considered by judiciary. The
claimed invention must also qualify as Patent eligible subject matter that is
the claimed invention must not be directed to a judicial exception unless the
claim as whole includes additional limitations amounting to significantly more
than exception that is judicial exception. The judicial exceptions also known
as judicially recognized exceptions or simply exceptions. The
judicial exception are the subject matter that the court has found to be
outside of or exception to the four categories of inventions add that are
limited to abstract ideas, laws of nature and natural
phenomena which may include the product of nature.
The
abstract ideas, laws of nature, and natural phenomena are exempted from the
claim of patent is because they are the basic tools of scientific and
technological works. Here the court have expressly concerned about the
monopolizing these tools
by granting
Patent rights may impede innovation rather than promote it. Other than abstract
ideas, laws of nature and natural phenomena and other terms
also be included physical phenomena,product of nature,scientific
principles, systems that depend on human intelligence alone,disembodied
concept,mental processand mathematical algorithm and formulas.
? Groupings
of abstract ideas are defined as:
• 1) Mathematical
concepts – mathematical relationships, mathematical formulas or equations,
mathematical calculations;
• 2) Certain
methods of organizing human activity – fundamental economic principles or
practices or commercial or legal interactions or managing personal behavior or
relationships or interactions between people; and
• 3) Mental
processes – concepts performed in the human mind (including an observation,
evaluation, judgment, opinion).
Cases
1. Bilski v. Kappos[6]:
Fact.
The petitioner has developed a method for hedging price fluctuations in the energy market. This included a simple mathematical concept and a well-known statistical approach. The applicant applied for a patent for the claimed invention, but the examiner dismissed the application, claiming that it contained an abstract idea and was not implemented on a particular device. The petitioner appealed, and the Federal Circuit Court of Appeals upheld the appeal.
The petitioner has developed a method for hedging price fluctuations in the energy market. This included a simple mathematical concept and a well-known statistical approach. The applicant applied for a patent for the claimed invention, but the examiner dismissed the application, claiming that it contained an abstract idea and was not implemented on a particular device. The petitioner appealed, and the Federal Circuit Court of Appeals upheld the appeal.
The Federal Circuit has determined
that the §101 test for patentability is a machine or
conversion test.
(1)
The claimed
method was associated with a particular machine.
(2)
Or (2) the
process converted the item to something else.
One of the dissenting judges claimed that it failed
because it was the way to do business. The second
dissenting judge argued that the invention was an abstract idea and
therefore unpatentable. The third opponent would have been
in pretrial detention to determine patentability under other
provisions. The petitioner has filed an appeal, and
the US Supreme Court has granted a discretionary
appeal.
Judgement:
Machine or conversion tests are not limited to
patentability tests under Section 101. Section 101 of the Patent Act
defines the eligibility of a patent,
except for natural law, physical phenomena, and abstract ideas.
Section 101 is a threshold test and the claimed invention must also
be new, not trivial, and fully described. The invention is claimed here
as the method of § 101. The procedure is
defined in the patent law of § 101 (b). The Federal
Circuit Court of Appeals has adopted the machine or
conversion test as the only test of what
constitutes the process. Section 100 (b)
specifically defines the procedure and does not require
further definition or limitation of the Federal Circuit Court of Appeals and is
not applicable here. Adopting such exclusion rules creates
uncertainty about the patentability of computer software and other
emerging technologies. Similarly, process definitions do not exclude
business methods. Federal law specifically envisions at least some
business method patents as a process that can be
patented under Section 101. Novelty,
non-obviousness, and restrictions on full
description protect against unjustified patents. However, the
applicant's procedure must not be based on Article 101,
as it asserts an abstract idea. Case law upholds this
limitation. approved.
2. Gottschalk v. Benson[7]:
Fact.
Benson (plaintiff) has filed a claim on how to
convert binary coded decimal (BCD) numbers to pure binary
numbers. Claims were not limited to any particular art
or technique, equipment or machine, or end use. They
claimed to cover all uses of this method in all
types of general-purpose digital computers. Defendant has
filed a proceeding against the refusal of the patent claim.
Judgement:
Formulas without important practical exceptions
related to digital computers are not patentable. Ideas cannot be
patented. In this case, the formula that converts the binary code to pure
binary is the result of a patent. The method of solving
a particular type of mathematical problem
is called an "algorithm". The method presented
in the claims is a generalized formulation for a
program to solve a mathematical problem that transforms a
number in one form into another. A patent on a
mathematical formula leads to a patent on the algorithm itself.
This will cause serious problems that
only parliamentary committees can handle. looked back.
3. Parker v. Flook[8]:
Fact:
Respondents have filed patents for alarm systems related to catalytic processes. The patent examiner rejected the application, stating that the formula was the only difference between the respondent's allegations and the prior art. The examiner concluded that the claim did not explain the patented findings. The petitioner, the Deputy Commissioner of the Patent and Trademark Office, upheld the examiner's refusal, and the novelty of the method claimed by the petitioner is the expression described in the claim, which is the subject of non-patentability. Or concluded that it is in the algorithm. The lower court has reversed. The applicant requested a review of the decision.
Respondents have filed patents for alarm systems related to catalytic processes. The patent examiner rejected the application, stating that the formula was the only difference between the respondent's allegations and the prior art. The examiner concluded that the claim did not explain the patented findings. The petitioner, the Deputy Commissioner of the Patent and Trademark Office, upheld the examiner's refusal, and the novelty of the method claimed by the petitioner is the expression described in the claim, which is the subject of non-patentability. Or concluded that it is in the algorithm. The lower court has reversed. The applicant requested a review of the decision.
Judgement:
The court found that
without other new or invention concepts in an
individual's patent application, the activity resulting from
the resolution of the formula or algorithm cannot convert the
formula from a non-patentable principle to a patentable
process. Judge Potter Stewart wrote a dissenting opinion
arguing that the
method of updating the alarm limit would not lose
its patentability simply because thesteps of the
method were not patentable. Judge Warren E. Burger
and Judge William H. Rehnquist agreed with the dissenting
opinion.
4. Alice Corp. Pty. Ltd. v. CLS Bank
Int'l[9]:
Fact:
Alice Corporation (Alice) is an Australian company with
patents for '479, '510, '720 and '375.
All of this is related to a computerized trading
platform where third parties settle debts between two people to
settle financial transactions to eliminate risk. In
reconciliation. Settlement risk is the risk that each
party on an
exchange will only fulfill its obligations. Alice's patent
addresses this risk by using a third party as a guarantor.
On May 24, 2007, CLS Bank International (CLS) sued Alice in a non-infringement and invalidity confirmation decision for the '479, '510, and '720 patents. Alice argued for infringement and argued. CLS sought summary judgment, arguing that there was no possibility of infringement in the United States, and that Alice's allegations were based on prohibited items. Alice filed an objection and the district court dismissed both motions. Meanwhile, the '375 patent was processed and Alice amended her case to include this patent. Both parties have updated their opposition movement. For the purposes of these allegations, the district court issued summary judgment to CLS, assuming that all alleged patent claims require electronic enforcement. The district court said that Alice's patents are invalid because they deal with abstract ideas, and these claims preempt the use of abstract concepts by neutral agents to facilitate exchange and eliminate risk. I have ruled that there is a possibility of doing so. This has been confirmed by the United States. Federal Circuit Court of Appeals.
On May 24, 2007, CLS Bank International (CLS) sued Alice in a non-infringement and invalidity confirmation decision for the '479, '510, and '720 patents. Alice argued for infringement and argued. CLS sought summary judgment, arguing that there was no possibility of infringement in the United States, and that Alice's allegations were based on prohibited items. Alice filed an objection and the district court dismissed both motions. Meanwhile, the '375 patent was processed and Alice amended her case to include this patent. Both parties have updated their opposition movement. For the purposes of these allegations, the district court issued summary judgment to CLS, assuming that all alleged patent claims require electronic enforcement. The district court said that Alice's patents are invalid because they deal with abstract ideas, and these claims preempt the use of abstract concepts by neutral agents to facilitate exchange and eliminate risk. I have ruled that there is a possibility of doing so. This has been confirmed by the United States. Federal Circuit Court of Appeals.
Judgement:
Judge Clarence Thomas
wrote his opinion in
a unanimous court. The court ruled that patent law
should not limit abstract ideas that
are "components of human ingenuity," and that all
of Alice's allegations are non-patentable. It is
essentially a component of the modern economy, as the use
of third parties to eliminate settlement risk is a basic and widespread
practice. The court said that Alice's allegation only
requires a general computer to implement this abstract idea
of ??interim billing by performing common computer
functions, and patents the abstract idea. We have found that it is
not enough to convert to a certain invention.
Judge Sonia M. Sotomayor wrote a consensus, arguing that claims that merely explain business methods should not be patented. In this case, Judge Soto Mayor agreed that the assertion of the method in question was related to the abstract idea. Judge Ruth Bader Ginsburg and Judge Stephen G. Breyer agreed to the approval.
Judge Sonia M. Sotomayor wrote a consensus, arguing that claims that merely explain business methods should not be patented. In this case, Judge Soto Mayor agreed that the assertion of the method in question was related to the abstract idea. Judge Ruth Bader Ginsburg and Judge Stephen G. Breyer agreed to the approval.
Alice test:
Alice case
was determined by two step tests and they are:
1.
Determine whether the claim as whole is directed to a
patent ineligible concept.
2.
Determine whether the claim element considered have
both individually and reduce combination transform the nature of claim
independent eligible application.
Conclusion
But like other new technological advances, the
judiciary and legislature took time to adapt the law to meet the
needs of these advances. Still, both state and federal
software vendors are becoming more and more successful in
recovering products that have spent a great deal of time
and money developing. Despite this fact, owners must be aware
of potential obstacles to the legal protection of their
products and take independent steps to prevent copyright
infringement by others.