Dear friends, The Patent Office has revised the Draft Manual of Patent Office Practice and Procedure based on comments received, including those from the FOSS community. The patent office has sought for comments on the manual to be sent by 4th December, 2010. The draft manual can be downloaded from http://patentoffice.nic.in/ipr/patent/Revised_DraftManual_PatentOffice_04November2010.pdf * *
* * SFLC is working on the comments to be sent to the Patent Office and we request you to kindly post your suggestions. The new draft manual published is a welcome change from the draft published in 2008, especially in relation to explanation provided for Section 3(k) of the Patents Act, 1970. The earlier manual tended to adopt the EPO position by considering the technical effect of computer programmes. The clauses in the previous version of the manual have been completely reworked. The new manual clearly states that “*a computer programme which may work on any general purpose known computer does not meet the requirement of patentability*”. But there is a lack of clarity in sub clauses (e), (h) and (i) of clause 08.03.06.10 . Clause (e) states "If a claim in a patent application is not directed at a computer programme per se it could be patentable, if all other patentability conditions are met. This provision thus necessitates distinguishing computer programmes per se from other types of inventions that uses or implements computer programmes." Clause (h) states “Method claims, whether independent or dependent, reciting computer programs without process limitations in the form of hardware features are not allowable. For a method reciting computer programme to be patentable, it must clearly recite into it limiting hardware integers that enable the program to function.” Clause (i) states “Claims directed at computer programs coupled to hardware, enabling the hardware to perform a certain function may be allowable, if such an invention meets all other conditions of patentability.” These clauses could be understood to mean that embedded software can be patented. This could result in patenting of embedded software where the improvement over prior art is only in the software and not in the hardware part. An additional clause that “ there should be improvement over prior art in the area of hardware for an invention to be patentable” would have clarified the position. The clauses relating to Section 3(k) as extracted from the manual are given below: ------------------------------- * Section 3(k) - **A mathematical or business method or a computer programme per se or algorithms are not patentable.* a. Under this provision, mathematical methods, business methods, computer programmes per se and algorithms are not considered as patentable inventions. In relation to computer programs, the law provides a qualification that what is not patentable is only computer program per se. b. ‘*Mathematical methods*’ are considered to be acts of mental faculty. A method of calculation, formulation of equations, finding square roots, cube roots and all other methods directlyor indirectly involving mathematical methods are therefore not patentable. With the development in computer technology, these mathematical methods are used for writing algorithms and computer programs for different applications and the claimed invention is sometimes camouflaged asone relating to the technological development rather than the mathematical method itself. These methods, claimed in any form, if in substance relate to mathematical method are considered to be not 99 patentable. c. “*Business Methods*” claimed in any form are not patentable subject matter.The term ‘Business Methods’ involves whole gamut of activities in a commercial or industrialenterprise relating to transaction of goods or services. With the development of Internet Technologies, business activities have grown tremendously through e-commerce and relatedB2B and B2C business. The claims are at times drafted not directly as business method but apparently with hitherto available technical features such as internet, networks, satellites,telecommunications, etc. The exclusions are carved out for all business methods and, therefore, if in substance the claims relate to business methods, even with the help of technology, they arenot considered to be patentable. d. Claims directed at ‘*computer programme products*’ are computer programme per se stored in a computer readable medium and as such are not allowable. e. If a claim in a patent application is not directed at a computer programme per se it could be patentable, if all other patentability conditions are met. This provision thus necessitates distinguishing computer programmes per se from other types of inventions that uses or implements computer programmes. f. The computer programmes are often claimed in the form of algorithms as method claims or system claims with some ‘means’ indicating the function of flow charts or process steps. The algorithm related claims may be even wider than the computer programme claimed by itself, for a programme represents a particular set, the algorithm expresses the principles generally and gives way for different programmes to be written based on the same algorithm and as such are not patentable. g. Essentially, combination all computer with some programmes hardware need for a their functionality. In an application for patent for a new hardware system, the possibility of a computer programme forming part of the claims cannot be ruled out. It has to be carefully considered as to how integrated is the novel hardware with the computer programme. Further, it is also to be considered whether the machine is programme specific or the programme is machine specific. *A computer programme which may work on any general purpose known computer does not meet the requirement of patent ability*. h. Method claims, whether independent or dependent, reciting computer programs without process limitations in the form of hardware features are not allowable. For a method reciting computer programme to be patentable, it must clearly recite into it limiting hardware integers that enable the program to function. i. Claims directed at computer programs coupled to hardware, enabling the hardware to perform a certain function may be allowable, if such an invention meets all other conditions of patentability. Warm regards, Prasanth Sugathan Legal Counsel, Software Freedom Law Center K-9, Birbal Road, Second Floor, Jangpura Extension, New Delhi-110014 Phone# +91-11-43587126 Fax# +91-11-24323530 Cell: +91 9013585902 www.softwarefreedom.in
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