analyzing patentability of software inventions

Analyzing Patentability of Software Inventions

By

Dr. Kalyan C. Kankanala

Brain League IP Services

© Brain League IP Services Pvt. Ltd., 2009. Private Use is

Permitted.

Invention

Patent

Inventor report

Invention disclosure

Patent search

Patent application

Filing

Prosecution

Patent Grant

Patentablity Opinion

© Brain League IP Services Pvt. Ltd., 2009. Private Use is Permitted.

Patentability requirements

Patentable subject matter

Utility

Novelty

Nonobviousness

Specification


INVENTIONS

Subject Matter

Usefulness

Novelty

Non-obviousness

Specification

PATENTS

Kalyan’s Patent Filter Model


Patentable Subject Matter

Process, machine, manufacture, composition of matter and Improvements

Product or Process


ExclusionsAbstract Ideas, Physical Phenomenon and

Laws of Nature.

Function of a machine

Mental steps

Mathematical Algorithm

India

Computer Programs Per se


Diamond v. Diehr

Process for vulcanizing rubber

Signal to open mold

Physical effect

Part of a process


State Street Bank Case

Hub and Spoke Software

Calcuate share of profits in mutual funds

Concrete, Useful and Tangible Result

Business Method Exception


Bilski Case

Method of hedging risk

Machine or Transformation test


Subject Matter?


Utility

Current

Substantial

Credible


Novelty

Known or used

Patented or published

Public use or On sale

Abandoned

Foreign priority

Patented in another country


Novelty

Derived

Suppressed or Concealed

Diligence

Single prior art reference


Nonobviousness

Scope of prior art

Differences- invention and prior art

Level of ordinary skill

Secondary Indicia

At the time of conception

Obvious to try


Secondary Indicia

Commercial Success

Copying

Praise by expert

Unexpected results

Long felt need


Specification

Written Description

Enablement

Best Mode

Claims

Object: Notice and Dissemination


Analyzing Patentablity


European Patent Convention


Patent Law

European Patent Convention

Implementing Regulations

EPO Decisions

Directive


Article 52

Invention

Exclusions

“As such”

Mathematical methods

Business methods

Mental acts

Computer programs


VICOM Case

Apparatus and process for digitally processing images

Application of mathematical method

Not Computer program as such

Patentable


IBM Case

Computer Program Product

Technical Character

Make computer hardware function in a particular way

Patentable


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


HITACHI Case

Method of automatic auction

Mix of technical and non-technical steps

Held-Subject Matter

Prior Art must not be considered


PITNEY BOWES Case

Method of Physical/Electronic mail delivery system

Held - Patentable Subject Matter

Not precluded under Article 52


President’s Referral

Computer program

General Purpose computer

Specific device

Technical Effect

Technical Character


Example

A software for analyzing ECG data remotely.

Is it patentable in Indis, USA and Europe?


Thank You

analyzing patentability of software inventions

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