A "functionality" based approach for assessing patentability of software

In this post I try to suggest a simpler framework that feeds on existing law and rules for assessing patentability of software and that is sensitive to the technological nature of software.
Defining a machine by functionality rather than form
The whole idea of software is to avoid making specific hardware for every application. We came up with software to be able to dynamically create a new “machine” out of a standard hardware. A software allows the “new” machine to perform a “new” function based on the instructions as part of the software.
Now, saying that a software invention to be claimed must have a specific machine limitation is like asking the inventor to come up with corresponding hardware embodiment for the software based invention. It really defeats the purpose of software and it not sensitive to the protection needs of software as a technology field. Further, having the limitations of specific machine to claims allows for easy work around of inventions by changing the structure of the machine. Therefore, in my view, the law should view a standard hardware running a software as a new machine as long as the software is new (read as “as long as the functionality is new”), and apply the other requirements of patentability to the new machine as it is applied to other subjects rather than trying to distinguish between software and hardware.
Applying existing standards to a “new machine” enabled by a software
Please note that I do not mean to say that any “new machine” enabled by a software must be patentable. I say that the same standards that apply for other subject matter must must be applied for software inventions as well. The law as it is has three fundamental requirements along with other procedural requirements. The requirements and patentability analysis of a “new machine” as enabled by a software are discussed in brief hereunder:
1. Novelty: An invention is considered as new if it is not anticipated by prior publication, prior use or prior public knowledge
A “new machine” as enabled by a software is by definition new and therefore should be novel, provided the software that enables the “new machine” enables the “new machine” to perform new functionality.
2. inventive step: Inventive step is said to be there when there is technical advancement or there is economic significance attached to the invention
A “new machine” may satisfy inventive step requirement depending on its functionality. For the “new machine” to satisfy the inventive step requirement, the “new machine” must demonstrate enough technical advancement or show enough economic significance in relation to existing art.
3. industrial applicability: Invention must be capable of being made or used in an industry
A “new machine” must be capable of being made or used in an industry.
Whether a particular “new machine” as enabled by a software will be patentable or not depends on whether it will satisfy the inventive step requirement, in addition to the other requirements. Now let us consider the following examples to test the approach proposed. For simplicity, let us assume that both of them are novel and industrially applicable.
1. Cricket social networking software:
In my opinion, there is no technical advancement in a new “machine” enabled by a software that performs methods relating to social networking. Such a software may be extremely useful and provide “social” advancement. But, there is no technical (read as technological) advancement in such a software. Therefore, from a technical advancement point of view, there is no inventive step. However, such a software may have great economic significance. If there is economic significance, the software may satisfy inventive step requirement and may be patentable.
2. Telecom software:
In my opinion, there is technical advancement in a new “machine” that does packet routing based on quality of service requirements. In addition to satisfying the technical advancement requirement, the software may also have great economic significance. Therefore, the telecom software would definitely satisfy the inventive step requirement, and would be patentable.
In conclusion, what I propose is a functionality based approach that is sensitive to the needs of the software field and its inventors. In this approach, every software based invention is viewed as a “new machine”, provided the functionality is new. Such a view is consistent with the “software per se” exclusion as well. And then the standard requirements of patentability are applied on such a “new machine” to assess patentability of the invention.

By, Arun K Narasani, CEO, Brain League IP Services

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2 thoughts on “A "functionality" based approach for assessing patentability of software”

  1. Hi Arun,

    As per your view, social networking may also be get patent based on economic significance.

    Considering above, all the new software [novel] may satisfy inventive step, therefore all the new software may be allowed for patent. To my view, it should not be allowed for patent, mainly because bringing new functionality of software is much easier task than bringing new functionality of hardware [product/process].

    Therefore, there is always debate on software patents.

  2. Hi,

    Thanks for your comment. Yes, the software patents debate will continue I guess. But I would like to clarify my views a little more here.

    I am not entirely sure if a social networking based software will be able to get a patent in India. Because in my opinion social networking software may fall under the business method exclusion. I did not bring in that argument into the blog post because I did not want to discuss too many issues at the same time. Let us look at the business of a company like facebook. They are in the business of connecting people. So, their overall software is just an implementation of how they conduct their business. And business methods are not patentable subject matter. Therefore, I feel business method exclusion can be used effectively to remove the pure “applications” from patentable subject matter.

    As we see, social networking per se may not be patentable either as a method or otherwise. Now, there may be parts of software that enable this overall system like facebook as we know, and are purely technical in nature. Such parts of software may be eligible for a patent. All I am trying to convey is that software inventions also must be treated based on their merits as it is done in all other cases rather than trying to find a generic solution that involves tagging software based subject matter as either patentable or non-patentable.

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