[Fsf-friends] Suggestions to the Draft Patent Practice and Procedure

[Ramanraj K]

Friends,

The Patent  Office, India,  has published the  DRAFT MANUAL  OF PATENT
PRACTICE           &           PROCEDURE           (2005)           at
http://www.patentoffice.nic.in/ipr/patent/manual-2052005.pdf    calling
for  submission of suggestions  and to  point to  errors in  the Draft
Manual.   The following is a draft list of suggestions we may send to
the Patent Office in this regard. We have to send in the
representation before 17th August, 2005, and so please feel free to
comment, and send in points that may have been missed, asap.


Thanks,
Ramanraj.




[1] Computer programs are not patentable:
========================================

Under Article 10 of the TRIPs Treaty,

<quote>

Computer  programs,  whether  in  source  or  object  code,  shall  be
protected as literary works under the Berne Convention (1971).

</quote>

Accordingly,  the Copyright  Act, has  substanital  provisions dealing
with the  protection of computer  programs as literary works,  and the
Patents Act, 1970, has  explicitly excluded computer programs from the
scope of  patentability under Section  3 dealing with  "Inventions not
Patentable".

All conclusions,  findings, practices  and procedures proposed  in the
Draft Manual  of Patent Practice and Procedure  [herein after referred
to  as Draft  Manual] as  if computer  programs may  be dealt  with as
inventions "in  combination of hardware"  are ultra vires  the Patents
Act, 1970,  and against our International obligations  under the TRIPs
Treaty,  and therefore  need to  be corrected  and rectified  to avoid
serious ramifications  in the  software industry and  our relationship
with other law abiding nations.

Suggestion:  Please  make it  very  clear  in  the Draft  Manual  that
            computer programs are not patentable.

[2] Annexure II:EXAMINATION  GUIDELINES FOR PATENTABILITY OF COMPUTER-
               RELATED INVENTIONS and all portions incidental thereto
               in the Draft Manual

At  page 156  of the  Draft Manual,  at the  end of  Annexure  II, the
following conclusion is found:

<quote>

9.CONCLUSION

The  statute excludes  from  patentability the  software  per se.  The
inventions  relating to  the application  of the  computer  program or
software is  held patentable  under the Indian  Patent Act,  1970 when
claimed  in  combination of  hardware  and  software  components of  a
computer  which provides  a "technical  advancement "  over  the prior
art.  It is  necessary for  the applicant  to describe  the "technical
contribution"   to  the   prior  art   when  the   invention  involves
software.  The technical  problem, which  needs  to be  solved by  the
invention, should be sufficiently described  as to how the hardware is
controlled  by  the  software  to overcome  the  previously  described
problem. The "technical character"  of the invention should be brought
out clearly in the claims.

</quote>

The above conclusion is wrong for the following reasons:

(1) Computer  programs  are  excluded  from patentability,  under  the
    Patents Act, 1970 in accordance with the TRIPs Treaty, as already
    discussed herein  above under the heading  "[1] Computer programs
    are not patentable".

(2)  The Draft Manual  has placed  reliance upon  decisions of  the US
    Supreme  Court,  which  have  not taken  into  consideration  the
    provisions  of  the TRIPs  Treaty,  particularly  with regard  to
    computer programs.   The US Supreme  Court has not  discussed the
    legal  implications  or  the   national  obligations  of  the  US
    Government in the light of the TRIPs Treaty, and those judgements
    cannot  lend any  support or  reasons to  conclude  that computer
    programs are patentable.  At best, the US judgements only help to
    conclude  that   the  US  has  not  kept   up  its  international
    obligations under  the TRIPs Treaty, and India,  or other nations
    that trade with the US may  raise this issue at the WTO to compel
    the US to conform to the TRIPs Treaty.

(3)  All computer programs effectively  work only in  combination with
    hardware.  Computer programs, by their very nature, may be easily
    re-written without modifying  hardware, to enhance usability.  It
    is unscientific  to assume that  some computer programs  can work
    without hardware, and some work in combination with hardware, and
    as though they deserve a special treatment not in accordance with
    the Patents  Act, 1970.  The illustrations included  in the Draft
    make arbitrary distinctions between computer programs without any
    rational basis:

   <quote>

   3(K) a mathematical or business method or a computer program perse
   or algorithms.

   computer program product is claimed as "A computer program product
   in computer readable  medium", "A computer-readable storage medium
   having a program recorded thereon",  etc. In such cases the claims
   are  treated as relating  to software  perse, irrespective  of the
   medium of its storage and are not held patentable.

   Examples in respect of other categories of subject matter are

   Scheme or method of bookkeeping.
   Business method in the field of accounting.
   Method of tax collection.
   A contents display method for displaying contents on a screen,
   A method for controlling an information processing apparatus, for
        communicating via the Internet with an external apparatus,
   A method for transmitting data across an open communication channel on
        a wireless device that selectively opens and closes a communication
        channel to a wireless network, and each wireless device including a
        computer platform and including a plurality of device resources that
        selectively utilizes a communication channel to communicate with other
        devices across the network

        All the above methods though utilise computer programs for its
operation,
        are not computer programs as such and hence allowable

        On the other hand,
        A method of executing a computer program, in which at least part of the
        copy of the program available for execution is analysed to determine
        whether or not any change has been made thereto, and in the event that a
        change is detected, a further copy of the program is retrieved
and caused to
        be executed instead of the first copy,
        A method for generating a new computer program using a software
        development tool,
        These are the programs solely intellectual in its context and hence not
        allowable.
   The Guidelines for examination of Computer-related inventions are given in
   Annexure 2
   <\quote>

   "A  scheme or  method of  bookkeeping" is  a mere  business method
   clearly not patentable.

   "Method of tax  collection" is not at all  patentable, because tax
   collection methods are  a sovereign function of the  state, and no
   individual could claim any  monopoly against the State in exercise
   of  sovereign  functions.  In  any  event,  they  fall within  the
   category  of  "business  methods"   excluded  from  the  scope  of
   patentability.

   All the remaining illustrations,  that include any claims over any
   computer program,  algorithm, mathematical or  business method are
   not  patentable,  as all  computer  programs  could  work only  in
   combination  with hardware,  and more  specifically,  any computer
   program  could  be  reduced  into  an  algorithm.   Both  computer
   programs  and algorithms are  claims falling  within the  scope of
   Section  3  and  therefore  could  not be  treated  as  patentable
   inventions.

(4) Under  Section 3  of  the Patents  Act,  mathematical or  business
   methods, algorithms, a presentation  of information, a mere scheme
   or rule  or method of performing  mental act or  method of playing
   game are all not patentable.  Any useful computer program could be
   reduced into an algorithm, and when  Section 3 is read as a whole,
   it is  abundantly clear that computer programs  are not inventions
   and are not patentable.

(5) Under Article  51 of  the Constitution of  India, the  State shall
   "foster respect  for international  law and treaty  obligations in
   the dealings of organised people  with one another", and the Draft
   Manual ought not to dilute and water down well intended provisions
   in the Patents Act, to invite shame and ignomity to our country in
   the international arena.

Suggestion: Scrap Annexure II and the incidental references to it from
           the  Draft  Manual.  Computer  related  inventions may  be
           treated and  processed like any  other claim that  may not
           fall within  the scope of  Chapter II of the  Patents Act,
           1970.

Conclusion:
==========

India has contributed significantly to the science of computation, and
has a responsibility to take  the lead in the right direction.  Number
system  originated  from India,  and  many  fundamental insights  into
computing  have been  achieved only  because of  the freedom  and high
standards  ingrained  in  our   traditions,  that  abjure  trading  or
monopolisation  of  knowledge.   India  has been  the  clearest  voice
against monopolisation  and has advocated for the  greatest freedom in
trading practices, in the light of our own history, before the WTO and
other International organisations. The  TRIPs Treaty itself is a great
compromise against  our own  highest national aspirations  and deepest
desires, and  the least the Patent  Office may do  is, therefore frame
practices and  procedures, within  the scope and  ambit of  the Patent
Act, 1970.

For  all the  above  reasons, we  request  the Patent  Office to  make
changes in the light of the  above suggestions, and to publish a fresh
draft seeking  fresh suggestions, before publishing  and enforcing the
practice  the Draft  Manual.