GOTTSCHALK V BENSON
One of the Landmark cases of the U.S. Supreme Court which can be found at 409 U.S. 63 (1972). In the present case an application for a patent for a method for converting binary-coded decimal (BCD) numerals into pure binary numerals on a general purpose digital computer was filed before the United States Patent Office. The patent examiner at the United States Patent Office, now called the United States Patent and Trademark Office or PTO, rejected the patent application as being directed to a mathematical expression. Pure mathematical expressions had been held to be unpatentable under earlier patent laws in Mackay Co. v. Radio Corp. reported 306 U.S. 86 (1939). The applicant appealed to the Board of Patent Appeals and Interferences. The Board affirmed the examiner’s rejection. The applicant further appealed to the Court of Customs and Patent Appeals. The Court reversed the Board. Finally, the Commissioner of Patents and Trademarks filed a petition for a writ of certiorari to the U.S. Supreme Court.
The United States Supreme Court ruled that a process claim directed to a numerical algorithm, as such, was not patentable because “the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.” That would tantamount to allowing a patent on an abstract idea, contrary to precedent dating back to the middle of the Nineteenth Century. The Court added “it is said that the decision precludes a patent for any program servicing a computer. We do not so hold.”
The decision was widely seen as confirming that software by itself was not directly patentable. What patent attorneys/agents had been doing in the meantime, however, was to get patent protection on software inventions by claiming the algorithm in combination with the general purpose digital computer programmed to carry out the algorithm. Thus they technically purported to be claiming a new machine and this, the lower patent court, held was patentable.
Patent Cooperation Treaty
In order to examine the Patent Cooperation Treaty (PCT) it is necessary that we should have a clear under about what PCT is and the purpose of PCT. The Washington Diplomatic Conference on the Patent Cooperation Treaty took place from May 25 to June 19, 1970. The Patent Cooperation Treaty was signed in Washington at the very end of the conference, i.e., on June 19, 1970. The Treaty entered into force on January 21, 1978 initially with 18 Contracting States. The first international applications were filed on June 1, 1978. The Treaty was subsequently amended in 1979, and modified in 1984 and 2001.
PCT is an international patent law treaty. It provides a unified procedure for filing patent applications to protect inventions in each of its Contracting States. A patent application filed under the PCT is called an international application or PCT application. An international patent application (PCT Application) has two phases: The first phase is the international phase in which patent protection is pending under a single patent application filed with the patent office of a contracting state of the PCT. The second phase is the national and regional phase which follows the international phase in which rights are continued by filing necessary documents with the patent offices of separate contracting states of the PCT. A PCT application, as such, is not an actual request that a patent be granted, and it is not converted into one unless and until it enters the “national phase”. The international application needs to be filed in one language only. At least one applicant (either a physical or legal person) must be a national or resident of a Contracting State to the PCT, otherwise no international filing date is accorded. In most member states, the applicant or at least one of the applicants of the application is required to be a national or resident of the state of the receiving office where the application is filed. Applicants from any contracting state may file an international patent application at the International Bureau in Geneva.
Upon filing the international application, all Contracting States are automatically designated. An international patent application has the same standing during the international phase as if a national or regional patent application had been filed in every contracting state of the PCT.
Eighteen months after the filing date or the priority date if any, the international application is published by the International Bureau (IB) of World Intellectual Property Organisation, based at Geneva, Switzerland in one of the eight languages of publication i.e. Arabic, Chinese, English, French, German, Japanese, Russian and Spanish.
Basmati Patent Issue
In late 1997, an American company RiceTec Inc, was granted a patent by the US patent office to call the aromatic rice grown outside India ‘Basmati’. RiceTec Inc, had been trying to enter the international Basmati market with brands like ‘Kasmati’ and ‘Texmati’ described as Basmati-type rice with minimal success. However, with the Basmati patent rights, RiceTec will now be able to not only call its aromatic rice Basmati within the US, but also label it Basmati for its exports. This has grave repercussions for India and Pakistan because not only will India lose out on the 45,000 tonne US import market, which forms 10 percent of the total Basmati exports, but also its position in crucial markets like the European Union, the United Kingdom, Middle East and West Asia. In addition, the patent on Basmati is believed to be a violation of the fundamental fact that the long grain aromatic rice grown only in Punjab, Haryana, and Uttar Pradesh is called Basmati. According to sources from the Indian Newspaper, Economic Times, “Patenting Basmati in the US is like snatching away our history and culture.”
Basmati rice means the “queen of fragrance or the perfumed one.” This type of rice has been grown in the foothills of the Himalayas for thousands of years. Its perfumy, nut-like flavor and aroma can be attributed to the fact that the grain is aged to decrease its moisture content. Basmati, a long-grained rice with a fine texture is the costliest rice in the world and has been favored by emperors and praised by poets for hundreds of years. According to the Agricultural and Processed Food Products Export Development Authority (APEDA), India is the second largest producer of rice after China, and grows over a tenth of the world’s wheat. In 1993, Basmati rice attracted the highest premium because it is a very-long grained rice, with an aroma of its own which enhances the flavors its mixed with.
RiceTec Inc, was issued the Patent number 5663484 on Basmati rice lines and grains on September 2, 1997. In abstract, “the invention relates to novel rice lines and to plants and grains of these lines. The invention also relates to a novel means for determining the cooking and starch properties of rice grains and its use in identifying desirable rice lines. Specifically, one aspect of the invention relates to novel rice lines whose plants are semi-dwarf in stature, substantially photoperiod insensitive and high yielding, and produce rice grains having characteristics similar or superior to those of good quality Basmati rice. Another aspect of the invention relates to novel rice lines produced from novel rice lines. The invention provides a method for breeding these novel lines. A third aspect…relates to the finding that the starch index (SI) of a rice grain can predict the grain’s cooking and starch properties, to a method based thereon for identifying grains that can be cooked to the firmness of traditional Basmati rice preparations, and to the use of this method in selecting desirable segregants in rice breeding programs.”
In an official release, the government of India reacted immediately after learning of the Basmati patent issued to RiceTec Inc., stating that it would approach the US patent office and urge them to re-examine the patent to a United States firm to grow and sell rice under the Basmati brand name in order to protect India’s interests, particularly those of growers and exporters. Furthermore, a high level inter-ministerial group comprising ofrepresentatives of the ministries and departments of commerce, industry, external affairs, Council for scientific and industrial research (CSIR), Agriculture, Bio-technology, All India Rice Exporters Association (AIREA), APEDA, and Indian Council of Agricultural Research (ICAR) were mobilized to begin an in-depth examination of the case. The contents and implications of the patent are currently being analyzed in consultation with patent attorneys and agricultural scientists. The government of India is particularly concerned about the patenting of Basmati because of an earlier case where the US granted a patent to two Indian-born scientists on the use of Turmeric as a wound healing agent. This case worked in favor of India because the patent was subsequently revoked after scientists of (CSIR) successfully challenged the patenting on the ground that the healing properties of Turmeric had been ‘common knowledge’ in India for centuries. There is a clause in US patent laws that will accept any information already available in published or written form anywhere in the world as ‘common knowledge’. As a result, India was able to furnish published evidence to support their case that the healing characteristics of Turmeric is not a new invention and as such cannot be patented.
Software Patent Vs Software Copyright
Software patents, like all other patents, give an inventor the right to exclude all others from making, selling, or using an invention for a certain number of years. In return, the patentee discloses his or her “best method” of implementing the invention; thereby relinquishing trade secrets that might otherwise be enforced forever. To obtain a patent, an applicant must convince Patent Office examiners that the invention would not be obvious to a “person of ordinary skill in the art” who is familiar with all the “prior art,” which includes previous patents and publications.
In contrast, copyright inheres in books, poems, music, and other works of authorship, including computer programs, from the moment they are created. Registering one’s work with the Copyright Office is a simple, inexpensive procedure that has important benefits (it is a precondition for filing suit, for example), but the copyright itself is automatic when the work is fixed on paper or on disk.
Copyright and patent protect different things. Copyright protects expression but not underlying ideas. Patents protect useful processes, machines, and compositions of matter. Traditionally “processes” have included methods of physically transforming materials but not business methods or mental steps. Thus, computer programs fall somewhere between the traditional territories of copyright and patent.
From the 1960s to the early 1980s, the Patent Office and the courts grappled with the question of whether algorithms are patentable as either processes or machines. Early on, the some patent offices granted some patents for processes built into computer hardware that today would be contained in software, but it was reluctant to grant patents for programs per se.
However, the CCPA maintained that computer programs were patentable and overturned numerous Patent Office decisions denying patentability. The U.S. Supreme Court vindicated the Patent Office in the decision of Gottschalk Versus Benson (1972) holding that mathematical algorithms were not patentable subject matter. Still, the CCPA continued to uphold patentability in other cases. Finally, in Diamond v. Diehr (1981), a sharply divided Supreme Court upheld the patentability of a process for curing rubber that included a computer program. The majority concluded that programs that did not preempt all uses of a computer algorithm could be patented at least when used in a traditional process for physically transforming materials.
Protection by patent protection and copyright constitute two different means of legal protection which may cover the same subject-matter, such as computer programs, since each of these two means of protection serves its own purpose. Software is protected as works of literature and thus any software written is automatically covered by copyright. This allows the creator to prevent another entity from copying the program and there is generally no need to register code in order for it to be copyrighted.
Patents cover the underlying methodologies embodied in a given piece of software, or the function that the software is intended to serve, independent of the particular language or code that the software is written in. Copyright prevents the direct copying of some or all of a particular version of a given piece of software, but do not prevent other authors from writing their own embodiments of the underlying methodologies. Copyright can also be used to prevent a given set of data from being copied while still allowing the author to keep the contents of said set of data a trade secret.
In many countries, computer programs are protected under copyright. The major advantage of copyright protection lies in its simplicity. Copyright protection does not depend on any formalities such as registration or the deposit of copies in the 151 countries party to the Berne Convention for the Protection of Literary and Artistic Works. This means that international copyright protection is automatic – it begins as soon as a work is created. Also, a copyright owner enjoys a relatively long period of protection, which lasts, in general, for the life of the author plus 50 or, in certain countries, 70 years after the author’s death.
In contrast, a patent must be applied for, in principle, in each country in which you seek patent protection. In order to enjoy patent protection, an application for a patent shall comply with both formal and substantive requirements, and a patented invention shall be disclosed to the public. These requirements can be legally and technically complex, and their compliance often requires a legal expert’s assistance. Compared with copyright protection, the term of protection is much shorter, namely, in general, 20 years from the filing date of the application.
Then why do many people seek to patent their software-related inventions? One of the strongest reasons is that copyright protection extends only to expressions, and not to ideas, procedures, methods of operation or mathematical concepts as such. Although copyright protects the “literal expression” of computer programs, it does not protect the “ideas” underlying the computer program, which often have considerable commercial value.
However, due to the complex requirements for the grant of patents, the costs for obtaining and enforcing a patent may be costly. Unless you have important financial resources, it may be worth considering whether patenting your software-related innovation is the best way to protect your product. The possibility and feasibility of using other types of intellectual property, such as trademarks, industrial designs and trade secret protection, may also be considered.
Patenting of Softwares
Modern society relies heavily on computer technology. Without software, a computer cannot operate. Software and hardware work in tandem in today’s information society. So it is no wonder that intellectual property protection of software is crucial not only for the software industry, but for other businesses as well.
In order to have a better understanding of the subject, we should first have a clear understanding as to what is computer software. The term ‘Software’ in India has been defined under the Income Tax Act, 1961 and the Copyright Act, 1957. Explanation (b) of Section 80 HHE of the Income Tax Act, 1961 defines “Computer Software” to mean any computer programme recorded on any disc, tape, perforated media or other information storage device and includes any such programme or any customized electronic data which is transmitted from India to a place outside India by any means. The Copyright Act, 1957 gives a more appropriate definition, Section 2(ffc) defines “Computer Programme” as a set of instructions expressed in words, codes, schemes or any other form including a machine readable medium, capable of causing a computer to perform a particular task or achieve a particular result.
Patentability of computer software is controversial as well as debatable. Law regarding Patenting of computer software differs from country to country and the same will discussed later on. So far as the Indian Scenario is concerned, Section 3(k) of the Patents Act provides that a mathematical or business method or computer programme per se or algorithms is not invention for the purposes of Patent Act.
To summarize, it is amply clear, Patenting of Software in India is controversial and confused subject and the law regarding Patenting of Software can be better understood when the courts starts interpretation of the same. Prima facie, from a reading of the above provisions it is clear that unlike US, India has adopted a very conservative approach to patenting of software.