Patent Business Lawyer in Asia
Patent Attorney practicing Patents, Corporate Law, Mergers and Acquisitions, Venture Financing, Startup Technology Law
Business productivity across nations has grown significantly due to ICT (Information and Communication technology) revolution. In essence, ICT represents intersection of multiple technologies in a manner to revolutionize the communication across the globe. With such rapid growth, ICT growth has resulted in commercial as well as legal implications.
ICT companies routinely face complex issues pertaining to corporate laws and intellectual property rights (IPR), specifically ICT patents. Since ICT patents are bound to play a crucial role in shaping up the digital future of the world, the patent expertise required to solve the ICT patent issues involves thorough understanding of communication technology, hardware devices and components, digital technology, Software as a Service (SaaS), eCommerce, Data Processing innovations, Education Technology (EdTech), Semiconductors, Antennas, Microprocessors, Microcontrollers, Financial Technology (FinTech) and Digital Content based innovations.
As the citizens of the digital age, information technology has become an integral part of our lives. From catching up on the latest news to reading the new bestseller, there is hardly anything that can be done without the crutches of technology. In a nutshell, information technology is truly our second skin.
While information technology (IT) refers to the whole gamut of computing systems aimed at the collection and dissemination of information, information and communication technology, commonly known as ICT, expands the scope of IT. In other words, one can say that ICT is an extension of IT with its focus on ‘connective communicative technologies’[i]. This is best illustrated by the definition assigned by UNESCO. As per UNESCO, ICT can be defined as a “diverse set of technological tools and resources used to transmit, store, create, share or exchange information. These technological tools and resources include computers, the Internet (websites, blogs and emails), live broadcasting technologies (radio, television and webcasting), recorded broadcasting technologies (podcasting, audio and video players and storage devices) and telephony (fixed or mobile, satellite, video-conferencing, etc.).”[ii] Given the subtleties of differences between IT and ICT, it is not very surprising that these terms are often used interchangeably.
Given the dynamic nature of ICT, constant innovation is the life blood to make the ICT industry more sustainable. The growth of the ICT industry in the past few years has led to the development of what is called as the ‘innovation economy’. The report published by the New South Wales, Australia Innovation and Productivity Council describes innovation economy as a system where any innovative “changes emerge at large scale and come to dominate or disrupt pre-existing sectors, and commerce or trade, to foster advanced and high-growth industries.”[iii] The report further states that the growth of internet and digital systems has led to a globalised innovation economy and the future of nations have recognized that the sustainable growth is heavily dependent on how innovative the said economy is.[iv] The European Commission has also in its report stated that a smart growth of the economy lies in strengthening the knowledge and innovation.[v]
For an industry such as ICT that is entirely driven by innovation, providing adequate and appropriate incentives to the innovators becomes extremely essential. One of the ways in which incentives can be provided is by ensuring a strong framework to protect the interests of the innovators and allow them to reap the commercial benefits of their invention. This is where protection through patents comes in. Foremost, granting patent protection ensures that an inventor can control the commercial use of their invention[vi]. Secondly, patent protection also contributes to the development of the technology further as the revenues generated by the innovators are used towards extensive R&D.[vii]
Of the many concerns regarding patents awarded in the ICT industry, this article focuses on the two key issues of patent thickets and SEPs.
The complex technological process and the surge in the volume of patent applications has led to a fragmentation of patent rights and led to patent thickets[viii]. The only formal definition of a patent thicket has been provided by Carl Shapiro in his paper[ix] and he has described patent thickets as a “dense web of overlapping intellectual property rights that a company must hack its way through in order to actually commercialize new technology”. The reason for the growth of patent thickets in the ICT industry is due to the simple reason that protections are required for several technologies which will be then utilized for the manufacture of a new product. Some commentators have argued that this leads to a large volume of patent thickets can ultimately lead to lesser innovation and higher costs for the R&D[x]. Patent thickets are also furthering competition in the industry as companies are vying to acquire and boast of the biggest patent portfolio.[xi]
Standard Essential Patents or SEPs refer to the patents which have been granted in order to implement a specific industry standard. Access to such patents is crucial in the ICT industry in order to further and promote innovation. Accordingly, the Standard Setting Organization of a nation have committed license the SEPs on such terms and conditions which are ‘Fair, Reasonable and Non-Discriminatory” (FRAND).[xii]
The FRAND terms ensures that the patent holders receive an appropriate reward for their investment in research and development and at the same time there is access to these specific patents.[xiii] Commentators have also noted that lack of a standard procedure to determine FRAND leads to disputes in cases of SEP licensing which in turn hampers the widespread use of the key standardised technologies and development of a true innovation economy.[xiv]
The surge of patenting in the ICT industry has led to a fragmentation of IP rights which has proved to be a major bottleneck of most national patenting system. Disputes and litigations arising out of the licensing terms of such patents is also another issue plaguing the industry. Reforms of the patenting system, keeping in mind the specific needs of the ICT industry, will require a true harmonization of the patenting rules. A harmonized regime can prove to be a true game changer for the patents in ICT industry.
We provide comprehensive Patent and Trademark legal services via our global network to create valuable patent portfolios and resolve complex patent disputes by providing patent litigation support services.
Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).
Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.
[iii] Page 7, The Innovation Economy: Implications and imperatives for States and Regions, Professor Greg Clark, Dr. Tim Moonen and Jake Nunley (August 2018), available at: https://www.industry.nsw.gov.au/__data/assets/pdf_file/0007/163267/IPC-The-Innovation-Economy-2018.pdf
[iv] See generally: The Innovation Economy: Implications and imperatives for States and Regions, Professor Greg Clark, Dr. Tim Moonen and Jake Nunley (August 2018), available at: https://www.industry.nsw.gov.au/__data/assets/pdf_file/0007/163267/IPC-The-Innovation-Economy-2018.pdf
[v] See generally The Innovation Union Competitiveness Report, European Commission, 2013, available at https://ec.europa.eu/research/innovation-union/pdf/competitiveness_report_2013.pdf
[vi]See generally https://www.wipo.int/ipoutreach/en/ipday/2017/innovation_and_intellectual_property.html
[viii] The Role of Patents in ICT: A Survey of the Literature, Stefano Comino et al. (2017) available at https://www.researchgate.net/publication/318040107_The_Role_of_Patents_in_Information_and_Communication_Technologies_ICTs_A_survey_of_the_Literature
[ix] Navigating the Patent Thicket: Cross Licenses, Patent Pools, and Standard-Setting, Carl Shapiro (2001), available at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=273550
[x] Are ‘Patent Thickets’ Smothering Innovation?, Stefan Wagner, 2015, available at https://insights.som.yale.edu/insights/are-patent-thickets-smothering-innovation
[xi] Ibid. The author illustrates this with the example of Google launching its operating system. At that time, the patent portfolio of Google was relatively small. However, in order to be able to compete with industry giants like Apple, Google eventually acquired Motorola in order to gain access to its patent portfolio.
[xii] See footnote 8.
[xiii]Standard Essential Patents, Dipak Rao and Nishi Shabana, April 2016 available at http://www.mondaq.com/india/x/484412/Patent/Standard+Essential+Patents
[xiv] India as an Innovation Economy: The Role of IP and ICT, Indian Council for Research on International Economic Relations (ICRIER) and European Business and Technology Centre (EBTC), June 2018 available at http://www.indiaenvironmentportal.org.in/files/file/ICRIER-EBTC_White_paper_IP-ICT.pdf
Software and Mobile App Patents are routinely granted by the Indian Patent Office and recently, following patents were granted:
(a) Google LLC filed patent application 3023/KOLP/2014 that is titled LOCATION HISTORY FILTERING. The invention is about filtering location information received from multiple computing devices . During patent examination, the patent examiner raised objections under Section 3(k) of the Indian Patents Act, wherein the examiner stated that the claims 1-14 define computer instructions stored in a memory and executable by a processor, hence these claims fall within the scope of Section 3(k) of the Indian Patent Act.
As a response to said objection, the applicant responded by proving that the claims are not related to computer programs but a computing device, enhancing its technical effect through its constructional features.
(b) ORACLE INTERNATIONAL COOPERATION filed patent application 231/KOLNP/2010 that is titled A SYSTEM AND METHOD FOR PREPARING COMPENDED BLOGS. During patent examination, the patent examiner raised objections under Section 3(k) of the Indian Patents Act, wherein the examiner stated that the claims 1-10 were computer programme per se and were thus non patentable.
As a response to said objection, the applicant responded by submitting Computer programs ‘per se’ are not non patentable as per the CRI guidelines. Since present claims provide a technical solution to a technical problem of collecting and collating information into a single blog, it qualifies to be patented.
We are experiencing a paradigm shift in technology from the use of Software to Mobile Apps (Applications) to integration with Cloud Computing, which has resulted in the emerging field of IoT, or Internet of Things.
Writing Software Patent Application is an art. An experienced patent attorney or patent agent can draft software patent claims that may have broader scope of the invention. However, the purpose of this post is to provide inventors with a general idea how to draft a patent application for a software patent invention.
First and foremost, every software patent specification must be tailored for a particular invention solving one problem in the prior art domain. There is no “one single patent formula to be followed” to write a perfect software patent application. The most important aspect of software patent writing which should be kept in mind while writing the software patent application is the patent claims, which define the legal rights of the patent owner.
It is always advisable to get professional help for writing the software invention and prosecuting the patent application before the patent office. The software inventor should provide flowcharts and/or flow diagrams of different embodiments of the software based intelligent algorithm to the patent attorney.
Conduct a patentability search of the prior art available in the public domain is advisable before filing the software patent application. The software patent strategy includes the steps of reviewing non-patent literature documents like journal, newspaper articles, magazine articles, books, conference materials, brochures, and research reports.
The online patent database (collection of granted patents and pending published patent applications available in public domain by the patent office) of USPTO, WIPO, EPO and the like should be searched to determine novelty of your software innovation. This can be done either by looking for keywords in the abstract text, specification, patent title, patent claims and by the International patent classification numbers, USPC and CPC assigned to each patent by the patent examiner.
The patentability search results of the invention will provide detailed insight to the inventor about how broadly one can claim the invention. Moreover, the patent language used by other patent attorneys to claim a similar invention provides a rough roadmap to describe your own software innovation.
The main advantage of patentability search from the viewpoint of developing a strong patent claim strategy is that the identified close prior art patent claims should be avoided. Particularly, the patent claims should be written in a manner to avoid the prior art.
Grant of Software Patents in India is possible. Patents filed for innovations relating to computer programs, software and mobile applications protect the novel and inventive features of such innovations from being copied by the competitors. Software Patents in India is granted for an embedded software in a mobile application, and/or software plus hardware combination. However, patent law in India does not allow patent protection for software per se, whereby patenting a computer program is prohibited. This provision is stated in Section 3 of the Indian Patents Act, which related to Non-Patentable Inventions.
When the set of patent claims are written for web based software just stating various method steps and without disclosing what apparatus and/or structural component are carried out by the said steps in that case the invention falls within scope of clause (m) of section (3) of the Patents Act, 1970 (as amended).
There should be structural limitations to the patent claims otherwise the subject matter of these claims is mere scheme and/or mental act and hence falls within scope of clause (m) of section (3) of the Patents Act, 1970 (as amended). Therefore web software invention claimed in said claims is not patentable.
When the patent claims do not define any structural features of the claimed product rather they define computer instructions and logic in that case the instructions and/or logics are nothing but computer program per se. Hence subject matter of said claims falls within scope of clause (k) of section (3) of the Patents Act, 1970 (as amended). Therefore web software invention claimed in said claims is not patentable.
Yes, innovations in the field of software and mobile applications can be patented in India. The Indian patent office defines software inventions under the category of Computer Related Inventions, one or more features of which are embodied wholly or partially by means of a computer program(s). Such inventions have been described in the guidelines published by the patent office for examination of computer related inventions, or CRIs.
Generally, patent applications covering subject matter related to software inventions have been divided into different categories by the patent office, including, (i) Method / Process, (ii) Apparatus / System, (iii) Computer readable medium, and, (iv) Computer Program Product.
In case of patent claims claiming a method or a process, the patent office excludes business methods, mathematical formulae, algorithms, and computer programs per se. Specifically, if method claims or process claims relate to computer related innovations having novel and inventive aspects, such method claims are patentable in accordance with Indian patent laws.
In case of patent claims claiming an apparatus or a system, the patent office has stated that patents can be granted to computer related inventions wherein novelty, inventive step, and industrial applicability is found by way of hardware combined with software applications. In use, such claims may be patented in “means plus function” format.
While drafting software patents and writing patent claims, use of means-plus-function claim is common. Specifically, while drafting patent claims, means-plus-function claims can be used to express technical and functional terms of the invention to describe multiple aspects of the invention.
In case of patent claims claiming Computer readable medium, or, Computer Program Products, the Indian patent office categorizes such patent claims as computer programs per se, and hence such claims may not be patented in accordance with Indian patent laws.
Patent applications claiming computer related innovations, software and mobile applications can be patented in India if patent claims are drafted to protect the innovative aspects of such inventions. Specifically, the innovative aspects can include inventive process / methods along with inventive apparatus / system (hardware components).
Some examples of software patents granted in India are listed below:
In light of the Indian patent laws and guidelines published by the Indian patent office for examination of software patents / computer related inventions (CRIs), software patents can be applied in India by way of combination of hardware and software features, which are novel, inventive and possess industrial applications.
More specifically, the software patent applications filed in India shall claim innovative methods including all the steps of flow diagram of the software applications along with novel hardware (apparatus / system claims) claims including elements of the system architecture embodying the corresponding methods / processes.
Among multiple patent cases in India, few can be put in the category of software patent cases in India, wherein issues pertaining to software patenting in India have been discussed. Some of the important software patent cases are discussed herein below.
1. Electronic Navigation Research Institute Vs Controller General of Patents
IPAB, OA/26/2009/PT/DEL, 5th July, 2013
In this case relating to patent application no. 3624/DELNP/2005 for the invention titled “A CHAOS THEROETICAL EXPONENT VALUE CALCULATION SYSTEM”, the Indian patent office denied the patent on the grounds that said invention falls under the category of mathematical formulae even if it produces a technical effect. The invention in this case claimed a mathematical method for evaluating time series signals.
2. Yahoo v Controller of Patents & Rediffcom India Limited
IPAB, OA/22/2010/PT/CH, 8th December 2011
Section 3(k) of the Indian Patents Act was discussed in this case before the Intellectual Property Appellate Board (IPAB), wherein it the concerned patent application was held non-patentable as being the business method embodied via technology. The order passed by the IPAB in instant case stated that where technical advances are only a manifestation of a core business method, such advances shall not accord any advantage to the patentee in the allowance of the patent. In simple words, business methods disguised as technical subject matter without any innovative aspects cannot be patented in India.
In the case of Yahoo, the patent claims included features of a software tool targeting search terms relevant to Yahoo’s business. Accordingly, the IPAB concluded that the technical advance proposed by Yahoo was simply a method of doing business, even if it was a technically smarter way of doing business and, therefore, cannot be patented in accordance with provisions of Section 3(k) of the patents act.
3. ACCENTURE GLOBAL SERVICE GMBH Vs. THE ASSISTANT CONTROLLER OF PATENTS & DESIGNS
IPAB, OA/22/2009/PT/DEL, 28th December, 2012
This case relates to Indian patent application number 1398/DELNP/2003, which is now a granted patent as patent number 256171, whose present legal status at the patent office database is, “Inforce with Due date of next renewal as 21/02/2017”. This patent application was initially refused for patent registration by patent office under the provisions of Section 3(k) of the Indian patents act.
However, the patent applicant appealed before the IPAB and as per the Controller’s decision, it was held that the instant invention as claimed is not software per se but, a system is claimed which is having the improvement in web services and software. Accordingly, it was held that the invention since not falling in the category of section 3(K), viz software per se, corresponding objection was waived and the patent was granted.
In addition to software patents, copyright protection can also be used to protect the Intellectual Property Rights associated with the software. Essentially, copyright for software is employed by software companies to reduce and prevent unauthorized copying of the software, which is also referred to as software piracy or software infringement. In case of software offered under free and open source licenses, software owners depend upon the copyright law to enforce their legal rights.
In accordance with Indian copyright laws, computer software can be protected as literary works, wherein a “computer program” is defined as a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result.
Effectively, copyright protection for computer programs prohibits unauthorised copying and infringement of the computer program, including the structure and the design of the computer program.
In addition to the source code, additional aspects of the computer program and the software can be protected by filing appropriate copyrights for the graphics, sounds, and appearance of a computer program. Consequently, by filing multiple copyright applications to protect different aspects of the software / computer program, legal proceedings for intellectual property infringement can be initiated and IP rights can be enforced even if the source code of the software is not copied by the offending party / infringer.
In addition, it is also advisable to protect future modifications and improvements of the software and the computer program by way of multiple copyrights and patent applications, which can provide strong protection of various technical features and different aspects of the software.
An EULA is a legal contract between the author or publisher of a software program / mobile application and the user of such application. The EULA is crucial document relating to intellectual property rights associated with the software and the computer program and it is generally executed digitally wherein the users are required to click-through and accept the terms of the software license agreement. Various provisions of the license agreement are drafted to ensure the source code and other aspects of the software / computer program are not copied and / or reverse engineered by the users illegally, which may amount to intellectual property rights infringement of the author / publisher / owner of the software program.
Generally, a software license agreement is termed as EULA or End User License Agreement. EULA is aimed at defining the relationship between the software company and its customers or clients that primarily govern the rights and usage associated with the software purchased by the clients from the software development company.
Various types of software license agreements include:
Content of EULA includes important legal provisions, such as, for example, but not limited to:
In accordance with Indian laws and the Delhi High Court judgement in the case of Pine Labs Private Limited vs Gemalto Terminals India Private Limited, the author of the source code owns the original copyright of the software program and the same is required to be assigned to the owner / publisher of the software by way of Software (Intellectual Property) Assignment Contract. Furthermore, while drafting software assignment contracts, the term of assignment and jurisdiction should be clearly specified to ensure perpetual ownership of the software worldwide.
Whether computer Software or Computer Programme can be registered under copyright law?
As specified by the Indian Copyright Office, copyrights pertaining to software and computer program can be registered by way of one or more copyright applications to protect corresponding intellectual property rights (IPRs). In accordance with the Indian Copyright laws, Computer Software or programme can be registered as a ‘literary work’. As per Section 2 (o) of the Copyright Act, 1957 “literary work” includes computer programmes, tables and compilations, including computer databases. ‘Source Code’ has also to be supplied along with the application for registration of copyright for software products.
The first step to obtain copyright protection for a software / computer program is to determine if the subject matter of said software / computer program is eligible for copyright protection. An experienced copyright attorney or intellectual property law firm can assist in determining whether one or more aspects of the computer program / software are protectable by a copyright. As per copyright laws across multiple jurisdictions, a copyright protects “original works of authorship” that are in a tangible form or expression.
The Indian patent office has published a manual of patent office practice and procedure, which explains the functioning of the patent office by describing multiple steps of the patent registration process in India, including, patent application filing, patent prosecution, patent examination, issuance of patent examination report, patent hearings, patent grant, issuance of patent certificate, pre-grant patent opposition, post-grant patent opposition, and renewal of granted patents in India.
After going through the patent office manual, it can be concluded that although Indian patent laws excludes business methods, mathematical formulae and computer programs per se from patent protection, software patents can be granted in India for innovations that are able to stand the test of patentability.
Essentially, a provisional patent application based for software innovation includes:
Once, the above mentioned diagram are handy write the patent application detailed description section describing what is done at each step of the algorithm and how to do it. As required under Section 112 of US Patent Laws, describe both the best way to perform the best mode or preferred embodiment of the invention and all the possible other embodiments that you can think of to execute the software based codes to solve the problem.
Strong patent claim drafting skills can make the difference for a grant of software patent application by the patent examiner. However, writing a patent specification for information technology domain, software business app or mobile applications, cloud computing or IoT (Internet of Things), and subsequently drafting the required patent claims are highly technical in nature.
As a patent drafter, the real skill is to write about all the different sections of a patent application in detail and at the same time it has to be precise, as these have to be in accordance with proper formats specified by the respective patent office. Specifically, writing patent claims is most important part of patent drafting process.
Software program is not a tangible object and they may not be patentable under the definition that a new, useful, and non-obvious process or product is a patentable subject matter under 35 U.S.C. (United States Constitution) §101.
Therefore the patent writer should be expert in patent application drafting techniques that includes strong patent claims to define the boundary of the invention, details about one or more embodiments, and drawing sections of patent applications.
As discussed earlier, software program is not a tangible object and to make software programs patentable, inventors must propose and create a tangible product which contains the invented software program. For example, when an inventor puts his sensor program, which starts the car engine with one touch finger, into a general purpose computer, this computer is not merely “a general purpose computer” anymore. This is a sensor machine, making it a patentable product even though the sensor software program itself is not patentable.
While writing the patent claims use of specialized language expressions provide better protection from patent infringers. For example, when an invention contains a particular component, patent writers need to describe it not as one component but “at least” one component.
“At least one” refers to “one or more” components and therefore if a granted patent claims contains ” one ” or “at least one” will make a lot of difference if an infringer infringes upon the patented product. This example illustrates a need for language manipulation in patent claim writing.
To Read more about writing software based patents: Click here
How to patent business technology. Contact our patent experts for reviewing your tech application.
How to patent guide for startups: Individual inventors and startups who think and dream big often come up with patentable ideas for which they wish to file international patents. The inventive concept has to be protected legally before any other party can copy it. Before beginning the process and steps to file an international patent one should ask the question when is the right time to file or apply for international patent. As a business owner if you are thinking about expanding your business in one or more foreign countries, getting an international patent under Patent Cooperation Treaty (PCT) system is a good option.
Our team of international patent attorneys are based in Asia. We would like to explain with you about international patents & how to patent innovative systems. How do you get worldwide protection for your invention? Many foreign inventors think and have a point of view that filing international patents gives and grants them protection in 140+ countries across the globe. However, this is not TRUE. The advantage of filing international patent for your invention is entering the member countries of the Patent Cooperation Treaty (PCT) system in 30 or 31 months from the first patent filing date in the home country.
The cost of applying international patents will depend on many parameters. The first important consideration is whether the patent applicant is an individual or filing international patent as business entity. The cost and fee structure of PCT before WIPO is almost four times the individual fees for the business entity.
Another very important factor is selection of international searching authority (ISA) by the patent applicant. If you have already filed and applied for patent for your invention in home country you can file a complete patent application with patent claims as international patent before WIPO, Geneva. Filing a PCT patent application will cost approximately $1500-USD 2500 depending upon the patent applicant status and selection of international searching authority (ISA). The PCT international patent provides the inventor with the legal right to enter international patent application in other countries under national phase for example in India: National Phase Patent Filling in India. So filing international patent in individual capacity can save cost for the international patent application.
Business method patent attorney will assist you understand how to protect business method by combining it with software application. A business method patent attorney is a technology lawyer & patent attorney manages the intellectual property practice at the law firm by focusing on strategic patent prosecution, drafting enforceable patent claims, writing local and international patent applications, patent counselling, patent portfolio management, and patent litigation, in the field of computer engineering, communications, and software technologies.
The patent projects begin by conducting patent prior art search, analysing patent eligibility by performing patentability analysis, drafting of the patent application, filing of parent patent application, filing PCT applications under International Phase and National Phase, responding to objections raised by patent offices, conducting patent hearings and drafting legal agreements and contracts in the business industry.
Computer related Inventions (CRIs) Protection by filing Patents
Computer Hardware and Software Inventions can be patented subject to certain conditions. Among all intellectual property (IP) services in India, patent filing in India is most sought after specially in the case of technologies and innovations pertaining to computer hardware, software and other computer related inventions (CRIs). As per Indian Patent Office, patents are filed in India for innovations involving multiple aspects, such as, computers, computer systems, computer networks, computer related inventions (CRIs), computer hardware and software inventions, data processing systems, data processing methods, information technology, database creation, database processing, database management, software, functions, computer programs, firmware, embedded systems, technical effects and technical advancements.
After performing patent search and analyzing patent search results related to computer hardware and software inventions, it can be seen that most patents filed with patent claims defining computer hardware and software inventions can be categorized into method claims or process claims, apparatus or system claims, computer readable medium claims, or patent claims that are drafted to define a computer program product.
After filing a patent in India for computer related inventions (CRIs), computer hardware, and computer software, the provisions of Indian Patents Act requires the patent applicant to file a request for patent examination, following which the patent will be examined by the Indian Patent Office. The request for patent examination in India can be filed via Form 18 under e-filing mode or physical filing mode. The official fee to file Form 18 for patent examination request under patent e-filing mode is INR 4000, INR 10,000 and INR 20,000 for a natural person (individual patent applicant), a small entity and a legal entity respectively. For physical filing mode, official fee to file examination request vide Form 18 with the Indian patent office, the official fee is INR 4400, INR 11,000 and INR 22,000 respectively.
After filing of patent examination request for patent applications relating to computer hardware, computer software and computer related inventions (CRIs), computer hardware and software inventions, the patent office examines the patent claims for patent eligibility or patentability, including novelty, inventive step (non-obviousness), and industrial application.
In addition, the patent examiner also examines the patent claims under the subject matter of non-patentable inventions, specifically section 3(k) of the Indian Patents Act, wherein business methods and software per se are not patentable under the Indian patent laws. This implies that source code of software cannot be patented in India, and the patent laws only allow innovations satisfying the criteria of patentability to be registered as patents in India.
Software patent attorneys in India having expertise in patent searching, patent drafting and patent filing generally follow best practices for handling computer related patent matters, and computer hardware and software inventions in India. Patent lawyers and patent law firms in India handle all stages of patent process efficiently, including patent filing and registration, PCT National Phase Application Filing, and Patent Prosecution before the Indian patent office.
5 steps to obtain Patent in India for computer hardware and software inventions
The following 5 steps can be followed in India to obtain and register patents in five steps:
In the recent technology scenario, business method patents is a buzz word. Although, the word “business method patents” is not defined but in normal day use “business method patents” relates to a patent relating to a method of doing business. Examples for any kind of business method patent will include DATA PROCESSING SYSTEMS OR METHODS, SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL, SUPERVISORY OR FORECASTING PURPOSES; SYSTEMS OR METHODS SPECIALLY ADAPTED FOR ADMINISTRATIVE, COMMERCIAL, FINANCIAL, MANAGERIAL, SUPERVISORY OR FORECASTING PURPOSES, NOT OTHERWISE PROVIDED FOR.
Most business method patents fall under IPC Class G06Q. The Patent Offices worldwide use IPC patent classification to classify patents that claim a system or apparatus and corresponding methods for performing data processing operations uniquely designed for processing data between servers, & handheld devices.
IPC G06Q 10/00 Administration; Management
G06Q 20/00 Payment architectures, schemes or protocols (apparatus for performing or posting payment transactions
G06Q 30/00 Commerce, e.g. shopping or e-commerce
G06Q 40/00 Finance; Insurance; Tax strategies; Processing of corporate or income taxes
G06Q 50/00 Systems or methods specially adapted for a specific business sector, e.g. utilities or tourism
G06Q 90/00 Systems or methods specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes, not involving significant data processing
Over the years, the Patent Office have made very clear that a business method can be patented if it meets the standard requirements for patentability. The patentee of a business method patent can patent the business method if it is original, useful, and not obvious.
Business method patents relates to a way of doing business which generates revenue for the company and at the same time provides user experience via user interface of the handheld device. Some recent examples of business method patents are:
United States Patent 9514462 granted to Google for content purchasing on a computing device. In one implementation, a computer-implemented method includes receiving, at a computing device and from a computer server system, digital content that is for sale and that is received without having yet been purchased by a user of the computing device; storing the digital content locally on the computing device in a manner that prohibits user access to the digital content; after storing the digital content: receiving user input that indicates the user is purchasing at least a portion of the stored digital content; and in response to the received user input, storing information that indicates the user purchased the portion of the digital content and providing the user with access to the purchased portion of the digital content; and in response to detecting that the computing device is communicatively connected to the computer server system over a network, providing the stored information to the computer server system.
United States Patent 8856922 granted to Facebook for management of reports related to imposter accounts in a social network system. In use, imposter account reports received by a social networking system are put into a report management process that routes the reports into other handling processes based upon the comparison of the probability of fraud in an alleged imposter account versus the probability of fraud in an alleged authentic account. The account determined to be most probably fraudulent is enrolled in an account verification process. In the account verification process, the account-holder is asked to verify their identity automatically. If the automatic verification fails to verify the identity of the account-holder, a manual process for verification is initiated.
Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter
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Top rated and highly experienced patent lawyers in New York can be found by searching USPTO database or by reviewing patent law firms comprising patent attorneys (patent agents) registered to practice before USPTO. Inventors in New York can personally interview multiple patent lawyers before selecting the patent attorney best suited to address their needs. Clients can also explore cities in the vicinity of New York, including, Brooklyn, Cedarhurst, Elizabeth, Garden City, Flushing, Bronx, Jamaica, Staten Island, Hackensack etc. and can also research patent attorneys practicing related areas, like Intellectual Property, Copyrights, Trademarks, Trade Secrets, Cyber Laws, Technology Laws, and the like.
As it is well known, New York is the financial, business, trademark, and fashion focal point of the world, and hence, many global businesses and financial corporations are headquartered there. New York is a great place to launch innovative products due to the tech savvy residents. Recently, it was reported that a mobile application has been launched to apply for Food Stamps in New York. It is well known that about 1.7 million people in New York City receive food stamps and to qualify, they must produce dozens of documents to prove their eligibility, including birth certificates, pay stubs, leases and children’s school records. It is really problematic to gather, copy and bring the documents to a social services office, and then wait to be seen by a worker. New York city’s welfare agency, the Human Resources Administration, plans to ease this step with the help of a new cellphone app, wherein those seeking food stamps can take pictures of the required documents with their phones and upload the photos to the mobile application.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech)
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
Law office of Rahul Dev is a niche technology and research based law firm focusing on next generation business and legal issues faced in India and outside India during international business and cross-border technology transactions. We assist our clients in close collaboration with our associates and counsels within India and outside by providing custom engagement models to address our client’s needs.
Practice areas include drafting and filing patent applications, patent prior art searches, patent prosecution, patent filing in India, PCT national phase entry in India, PCT international applications with WIPO, freedom to operate searches, patentability analysis and patent strategy to create a valuable patent portfolio.
Patent attorney Rahul Dev works with clients providing expert legal services in the field of innovative pharmaceutical products, branded drugs, generic drugs, molecular biology, immunology, cell biology, regenerative medicine including ESCs, iPSCs, pSCs, diagnostics, therapeutics, theranostics, drug delivery systems, host-vector systems, high throughput screening, bioinformatics, diagnostic imaging, ancillary services (PET, CT, MRI, ultrasound, greenlight, lithotripsy, radiation therapy, cyber-knife, nuclear camera, clinical lab, pathology, physical therapy and dispensing prescriptions).
Patent attorney and technology lawyer Rahul Dev works closely with USPTO licensed patent attorneys to assist clients with patent reexaminations, patent prosecution, drafting USPTO office action responses, patent infringement litigation, patent claim mapping and patent licensing. For international patent filings, we have an established network of global patent attorneys to provide reliable and cost effective services to our clients.