[Commons-Law] Re: [Fwd: software patents: apparent good news for India]

Fri Apr 22 13:28:04 IST 2005

I would disagree completely  with the interpretation, what the phrase means
is that yes a computer program per se is not patentable but the question
then is what are not computer programs per se? And if you loook at the
development of cases in the uS on software patents, the expansion has been
on the basis of proving that the invention in question is not a computer
progam per se or as such

I am including my notes on cases on software patents if it helps

Lawrence

SOFTWARE PATENTS

The grant of a patent depends on:
1. Utility 
2. Novelty 
3. Non Obviousness (Inventive Step)

Gittschalk v. Benson, the Supreme Court first considered the patentability
of a computer program. The patent application involved a method of
programming a general-purpose digital computer to convert signals from
binary-coded decimal BCD form into pure binary form.

The Supreme Court reinstated the rejection of the claims under § 101. In its
opinion, the Court noted that the application attempted to claim a
mathematical formula and the analytical steps involved in solving the
formula  The Court pointed out that the claims were "not limited to any
particular art" and that conversion of BCD numerals to pure binary numerals
"can be done mentally" through use of the table shown above

The Court found that the claims fell within one of the limited exceptions to
the definition of patentable subject matter under § 101. In its review of
precedents, the Court found that as a general rule that "phenomena of
nature, though just discovered, mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work."

The Court concluded that the claims in question would have the "practical
effect" of wholly preempting any use of the mathematical steps in the
conversion formula.

In Re Flook 

method claim was for updating an alarm limit of at least one variable
involved in a process for the catalytic conversion of hydrocarbons. The sole
novelty in Flook's claims resided in the mathematical algorithm for
calculating the updated alarm limit.

The PTO contended that the only novelty was the use of a newly-identified
formula that *23 permitted calculation of the appropriate alarm limit for
the catalytic process under varying conditions.

Flook urged that his method was not applicable to all updating processes but
only to those related to the catalytic conversion process recited in the
preamble of his claim. Flook also argued that his post-solution activity,
i.e., the adjustment of the alarm limit to the figure computed according to
the formula, would make his process patentable. The Court rejected these
arguments, holding that a claim need not wholly preempt all uses of a
mathematical algorithm to be nonstatutory.

The Flook decision is based on two rationales. First, applying the so-called
"point of novelty test," the Supreme Court held that the discovery of a
"phenomenon" such as Flook's mathematical algorithm "cannot support a patent
unless there is some other inventive concept in its application."

Diamond v. Diehr: 

First decision of the Supreme Court specifically holding a computer process
to be statutory subject matter within the definition of § 101. Diehr claimed
an invention related to a "method of operating a rubber-molding press" by
using the well-known Arrhenius equation to control the cure time of
synthetic rubber. 

Prior efforts to predict, accurately, cure conditions were limited by the
inability to assess instantaneous changes in the temperature inside the
molding press. Diehr's invention "continuously measure [ed] the actual
temperature in the closed press through the use of a thermocouple," and,
then, using the instantaneous value of temperature in a known standard
formula, calculated continuously the predicted time when the cure should be
completed. Diehr urged that his method represented an improvement over the
prior art.

The PTO rejected the claims under § 101. On reversing, the CCPA held that
the claims as drawn recited an improvement in the process previously done
manually by the addition of the computer program.

The Supreme Court affirmed the claims patentability under § 101. The Court
enunciated a set of guidelines for distinguishing statutory and nonstatutory
inventions and then applied its guidelines to the Diehr invention. First,
the 
Court defined nonstatutory subject matter as,
Excluded from such patent protection are laws of nature, physical phenomena
and abstract ideas (citations omitted). An idea of itself is not patentable.
A principle, in the abstract, is a fundamental truth; an original cause, a
motive; these cannot be patented, as no one can claim in either of them an
exclusive right. [FN50]

Court noted that an algorithm programmed for execution by a general purpose
digital computer was like a law of nature, which cannot be the subject of a
patent. The algorithm in question was narrowly defined as one for "solving a
given type of mathematical problem." On the other hand, a "claim drawn to
subject matter otherwise statutory does not become nonstatutory simply
because it uses a mathematical formula, computer program or digital
computer." [FN51] While excluding laws of nature and ideas of themselves,
the Court stated that
An application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.

To determine whether the algorithm in question is directed to such an
application, the 
Court offered the following guidelines:

In determining the eligibility of respondents' claimed process for patent
protection under Section 101, their claims must be considered as a whole. It
is inappropriate to dissect the claims into old and new elements and then to
ignore the presence of the old elements in the analysis. This is
particularly true in a process claim because a new combination of steps in a
process may be patentable even though all the constituents of the
combination were well known and in common use before the combination was
made. The "novelty" of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter
of a claim falls within the section 101 categories of possibly patentable
subject matter. [FN52]

³Their process admittedly employs a well known mathematical equation, but
they do not seek to pre-empt the use of that equation. Rather, they seek
only to foreclose from others the use of that equation in conjunction with
all of the other steps in their claimed process. These include installing
rubber in 
a press, closing the mold, constantly determining the temperature of the
mold, constantly recalculating the appropriate cure time through the use of
the formula and a digital computer, and automatically opening the press at
the proper time.

What can be determined from the Court's decisions in Benson, Flook,
Chakrabarty and Diehr are the following:
1. computer programs are not per se, unpatentable subject matter,
2. Claims should be considered as a whole,
3. § 101 should be construed broadly to determine patentable subject matter,
with only laws of nature, *30 physical phenomena and abstract ideas as being
nonstatutory, and 
4. courts are admonished from reading into § 101 exceptions to patentable
subject matter. However, as discussed below, these admonitions have not
always been followed faithfully.

Freeman-Walter-Abele Two-Step Test.
A. Freeman: The Initial Statement of the Two-Step Test.

1. First, it must be determined whether the claim directly or indirectly
recites an "algorithm" in the Benson sense of that term, for a claim which
fails even to recite an algorithm clearly cannot wholly preempt an
algorithm. 
2. Second, the claim must be further analyzed to ascertain whether in its
entirety it wholly preempts that algorithm.

The court clarified that the algorithm of concern in Benson was limited to a
mathematical algorithm, as opposed to a broader definition of an algorithm
as any step-by-step procedure for solving a problem.

Similar to the Abstraction and Filtration test in Copyright Law

In Re Alappat 

Dismissed the test established and stated that the test used to determine
subject matter of patentability is under § 101. Without mentioning the
freeman-Walter-Abele test by name, the Federal Circuit stated that § 101
determinations must be made in accordance with the primary authorities, that
is, the statutory language of § 101 and the trilogy of Supreme Court
decisions benson, [FN97] Flook [FN98] and diehr. [FN99] In diehr, the
Supreme Court identified three categories of unpatentable subject matter:
Excluded from such patent protection are laws of nature, natural phenomena,
and abstract ideas (citations omitted). An idea of itself is not patentable.
A principle, in the abstract, is a fundamental truth, an original cause, a
motive; these cannot be patented, as no one can claim in either of them an
exclusive right. [FN100]
While excluding laws of nature and ideas themselves, the Court stated the
following:
An application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.
To determine whether the algorithm in question is directed to such an
application the "claims must *45 be considered as a whole." [FN101] Clearly,
an analysis of the claim recitations must be made to determine the
relationship of the claimed mathematical algorithm to the other steps of the
process or elements of the apparatus. The "transforming or reducing an
article to a different state or thing" is key evidence of statutory subject
matter. [FN102]
Judge Rich, writing for the majority in alappat, notes the use of "any" in
§ 101 requires an expansive analysis of what is a statutory process,
machine, article of manufacture or composition of matter. The intent of the
Supreme Court is to extend § 101 to include "anything under the sun that is
made by man." [FN103] However, Judge Rich warned that,
Despite the apparent sweep of § 101, the Supreme Court has held that certain
categories of subject matter are not entitled to patent protection.
In diehr, its most recent case addressing § 101, the Supreme Court explained
that there are three categories of subject matter for which one may not
obtain patent protection, namely, "laws of nature, natural phenomena, and
abstract ideas." diehr, 450 U.S. at 185. [FN104]
Without reference to the freeman-Walter-Abele test, Judge Rich notes that
the Supreme Court has held that "certain mathematical subject matter is not,
standing alone, entitled to patent protection." [FN105] Noting the
misgivings of Judge Rader in arrhythmia [FN106] and Judge Newman in *46
schrader, [FN107] Judge Rich cautions that the Supreme Court has not
clarified whether mathematical subject matter is rendered unpatentable
because it represents laws of nature, natural phenomena, or abstract ideas,
much less what kind of mathematical subject matter is nonstatutory. [FN108]
The mathematical algorithm, whatever its definition may be, is not a "fourth
category" of nonstatutory subject matter, but according to Judge Rich,
Rather, at the core of the Court's analysis in each of these cases lies an
attempt by the Court to explain a rather straightforward concept, namely,
that certain types of mathematical subject matter, standing alone, represent
nothing more that abstract ideas until reduced to some type of practical
application, and thus that subject matter is not, in and of itself, entitled
to patent protection. [FN109]
In an analysis of Alappat's sole independent claim, Judge Rich acknowledged
that *47 each of its four means clauses recited mathematical calculations.
However, such calculations did not render the claim nonstatutory. [FN110]
Having found a Diehr transformation and, based upon such transformation,
that the recited calculations were applied to a practical application, Judge
Rich commented:
[C]laim 15 is limited to the use of a particularly claimed combination of
elements performing the particularly claimed combination of calculations to
transform, i.e., rasterize digitized waveforms (data) into anti-aliased,
pixel illumination data to produce a smooth waveform.

On 4/22/05 6:06 PM, "Aniruddha Shankar" <karim at sarai.net> wrote:

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> Lawrence Liang wrote:
>> So if the left is saying that the amendment to expand has been stalled has
>> succeeded, then that is correct but if they seem to be suggesting that there
>> will be no software patents then they are completely mistaken, that battle
>> we have already lost.
> 
> Well, the plot thickens. I called up A K Gopalan Bhawan in New Delhi,
> the HQ of the CPI(M), which publishes People's Democracy. I just got off
> the phone with Dr. Amit Sengupta, to whom I was referred. He is of the
> opinion that the 2002 amendment, which states that "a mathematical
> method or a business method or a computer  programme per se or
> algorithms" is "non-patentable subject matter" should be interpreted to
> mean that software patents are not grantable. His reasoning is simple -
> computer programme = software, i.e, software comes under non-patentable
> subject matter.
> 
> Lawrence, I'm a a bit sheepish about asking for this but can you explain
> how s/w patents can be granted after the 2002 Amendment?
> 
> cheers,
> K
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