Tag Archives: section 3(k)

Patenting mathematical methods

According to the section 3 (k) of the Indian Patent Act, mathematical and business methods, computer programmes per se or algorithms are categorized as non patentable subject matter.

Why are mathematical methods not patentable?

The Manual of Patent Office Practice and Procedure provides reason as to why mathematical or business methods are not considered patentable.

With reference to section 3 (k), the manual says, and I quote:

“Mathematical methods’ are considered to be acts of mental skill. A method of calculation, formulation of equations, finding square roots, cube roots and all other methods directly involving mathematical methods are therefore not patentable. With the development in computer technology, mathematical methods are used for writing algorithms and computer programs for different applications and the claimed invention is sometimes camouflaged as one relating to the technological development rather than the mathematical method itself. These methods, claimed in any form, are considered to be not patentable.”

The interpretation of this section has generated several debates and arguments over the years. This section can be analyzed in support of a case, which may provide a better interpretation of section 3 (k) and especially inventions dealing with mathematical methods.

Electronic Navigation Research Institute vs. Controller General of Patents

On July 5th, 2013, the Intellectual Property Appellate Board (IPAB) passed a decision denying a patent to Electronic Navigation Research Institute for their invention that relates to a method for calculating Chaos Theoretical Exponent value (CTEV).  The Deputy Controller in his decision had denied a patent to the applicant on the grounds of non patentable subject matter under Section 3 (k) of The Patent Act.

In light of this case, the controller and IPAB’s considerations, while deciding denial of patents for inventions that fall under section 3 (k), especially mathematical methods, are analyzed.

 The Deputy Controller held that the above invention was based on a mathematical method for solving mathematical equations and declined to accept the technical effect theory, as he was of the opinion that Indian Patent Act does not allow patents for mathematical methods, which have technical advancements. Hence the invention was rejected as non patentable under Section 3(k) of the Indian Patent Act.

The Appellant’s invention relates to a system for analyzing a time series signal by a method based on Chaos Theory and calculating a chaos theoretical exponent value (CTEV). The conventional chaos theoretical exponent value calculation systems presumed that it analyses a system of stable dynamic. Thus the temporarily changing dynamics cannot be calculated as a significant value. The inventors claim to have invented a system which makes it possible to calculate a CTEV that could not have been so far processed in a system of temporarily changing dynamics and to perform the process thereof at a high speed and on a real time basis, and to calculate a CTEV even from a time series signal which includes noises. The complete specifications also describes that the invention calculates the average CTEV in a shorter time of two decimal orders or more.

Controller’s Decision

The Patent Office issued the First Examination Report (FER) on 11th June 2007 with the objections that the claims fall within the scope of the clause (k) of Section 3 and Section 2(1) (j) of the Indian Patent Act, 1970 as it lacks novelty and inventive step. A response to the first examination report (FER) was filed by the applicant on 9th April 2008. A hearing was also requested by the applicants along with the submissions. After considering the submissions made by the Applicant, as well as descriptions and claims as on the records, the Deputy Controller was of the opinion that the alleged invention still falls under Section 3(k) of the Patents Act. Hence a grant of patent to the above application was rejected.

Appellant’s allegations against the controller’s decisions

The Appellant (who are the applicants) then filed an appeal against the Controller’s decision before the IPAB, and one of the grounds was that the Controller had wrongly negated the ‘technical effect” holding incorrectly that the Indian Patent Law does not follow the EPC.

IPAB’s decision to the above allegation

In response to the Appellant’s allegation, the IPAB referred to a previous case Yahoo vs. Rediff, which was raised on the same grounds. The IPAB cited that “inventive step must be a feature which lies with a patentable subject matter. Otherwise, the patentee by citing economic significance or technical advance in relation to any of the excluded subjects can insist upon grant of patent thereto. Therefore, this technical advance comparison should be done with the subject matter of invention and it should be found it is not related to any of the excluded subjects…….”

The IPAB here declined the allegation by the Appellants by stating that the Controller was of the opinion that the claimed invention, although it was a technical advancement, it still was nothing more than a mathematical method based on various algorithms for which the Indian patent law does not grant a patent. The identifiable technical contribution provided by the claimed invention itself came under the excluded subject matter and so the IPAB justified the controller’s decision that a patent cannot be granted for a mathematical method according to the patent law in India and the appeal was dismissed.

Conclusion

In light of the above discussion, one of the ways of analyzing patentability of inventions that involve mathematical methods is by adopting a “problem and solution” approach of analysis. One may try to define the technical problem the invention is trying to solve, and thereafter identify the technical solution that addresses that problem. Further, one can try to determine whether that technical solution itself is the “mathematical method” or is it beyond the “mathematical method”. Inventions that propose and claim a technical solution that is beyond a “mathematical method” have a higher probability of having a patent granted. 

We hope you found this article useful. You may be interested in reading our articles:

What can be patented and what cannot be patented    
Are software inventions patentable in India?     
Issues concerning patentability of discoveries in India    
Issues Concerning Patenting Inventions Relating to Plants, Animals and Microorganisms    

Feel free to write to us at contact@invntree.com

Best regards – Team InvnTree

What can be patented and what cannot be patented

Some time back I was asked by one of the readers of my article, if I can tell him what can be patented and what cannot be; hence this article.

This question appears to the one with a straightforward answer.  However, the answer to it is something that is highly debatable, and also varies depending on the country in which one wants to secure a patent.
 
A simple answer however is, anything that qualifies to be an invention can have a patent granted to it.
 
In the above answer, the word “invention” is the key word that requires definition.
 
In US, any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may have a patent granted to it, provided it satisfies all other requirements of patentability.
 
In India, an invention means a new product or a new process that involves technological advancement and/or has economic significance, which makes that new product or process non-obvious to a person who is skilled in the technology to which the product or process belongs. Additionally, the new product or process should be capable of being made or used in an industry for it to qualify as an invention.   
 
Most of the patent offices provide a simple definition of the word invention. However, they also provide a list of exclusions, which are not considered as inventions. This list is the one that often stirs up debates.
 
In India, section 3 provides a list of exclusion, and the list with examples is provided below:

1.      an invention which is frivolous or which claims anything obviously contrary to well – established natural laws: (Ex:

 
2.      an invention the primary or intended use or commercial exploitation of which would be contrary to law or morality or which causes serious prejudice to human, animal or plan life or health or to the environment; (Ex: A method of hacking into email accounts)
 
3.      the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature; (Ex: E = mc2)
 
4.      the mere discovery of any new form of a known substance which does not result in the enhancement of the known efficacy of that substance or mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such process results in a new product or employs at least one new reactant. (This exclusion has been at the forefront of most debates in the pharmaceutical sector)
 
5.      a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance. (Ex: Mixture of sugar and colorants in water, which only produces aggregation of properties and synergistic properties)  
 
6.      the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way; (Ex: A known type of torch connected to a know type of pen. Note, both the pen and torch work independently of each other)
 
7.      a method of agriculture or horticulture; (Ex: a method of growing plants)
 
8.      any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products; (Ex: process of carrying out a surgery. Note: processes in this case are not considered inventions. However, systems and apparatuses are still considered as patentable subject matter)
 
9.      plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals; (Ex: Cloning of animals)
 
10. a mathematical or business method or a computer program per se or algorithms; (this exclusion has been debated to great lengths. The debate is essentially because of the “computer program per se” exclusion. Note that, not all software related inventions are considered as “computer program per se”. Hence, the debate is relating to what should be considered as computer program per se, and what should not be)
 
11. a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions; (Ex: movies, poems etc.)
 
12. a mere scheme or rule or method of performing mental act or method of playing game; (Ex: Method of playing chess)
 
13. a presentation of information; (Ex: Presenting information in the form of a graph)
 
14. topography of integrated circuits; (Can seek protection under Semiconductor Integrated Circuit Lay-out Designs Act)
 
15. an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or componenets. (Usage of Nilgiri oil for reducing aches)
 
Some of the exclusions are straightforward; however, a few are debatable (section 3(d) and 3(k)).
 
Similar to India, most of the countries have provided with a list of exclusions. Some of the exclusions put forth by other countries may be similar to the ones provided above. It is important to be aware of the exclusion set forth by a country you are interested in before deciding on the patent specification drafting and filing strategy.
 
To know more about what can and cannot be patented in India, you may read our articles listed below:
 
I hope you found this article helpful. Please feel free check our patent services page to find out if we cater to your patent requirements.
 
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Team InvnTree