The Institute of Intellectual Property Research & Practice has been established to provide education in the field intellectual property rights, their practice and enforcement, research and comparative study with an objective to make the intellectual property rights progressive, creative and beneficial to the well being of people around the world.

The Institute holds seminars, workshops and conducts extensive and indepth research in all areas of intellectual property.

Mr. Amar Raj Lall, Mr. N.K.Sharma, Dr. Leander A. Feiler, Hon'ble Minister of State for Science & Technology Shri Bacchi Singh Rawat, Mr. Richard P. Berg, Mr. Garland T. Stephens, Dr. Rer. Nat. Christoph Schon, Mr. M. P. Bhatnagar.

After the tremendous success of the Seminar organised by us in December 1999, the Institute of Intellectual Property Research & Practice, Gurgaon held another seminar in December 2000 and was once again overwhelmed by the response. The two day seminar titled " Protection of India's Intellectual Wealth in the New Millennium " was inaugurated by Hon'ble Minister of State for Commerce & Industry Shri Omar Farrukh Abdullah. Mr. Amar Raj Lall, President of the Institute addressed the audience on the state of law prevailing in India at the moment for protection of Intellectual Property and stressed on the need for patent awareness since there is a direct correlation between the level of development of a nation and the number of patents granted.

The main focus of the seminar was on drafting of patent applications in Europe and U.S. for software, chemicals and pharmaceuticals, intricate questions on patentability in the field of biotechnology and pharmacology, procedures before the EPO, international and national phases of the PCT, etc.

Keeping in view the importance and value of software being developed in India and exported to the developed countries (India's export turnover is expected to touch $ 50 billion by 2008), a need was felt that such software should be protected internationally. Current measures for protection of computer software like copyright and tradesecrets law are proving to be inadequate and patents are emerging as an additional and stronger form of protection.

The U.S. has granted more than 600 business method patents in 1999 and U.S. patent attorneys Mr. Garland T. Stephens and Mr. Richard P. Berg gave very useful practical advice on how to draft a software and business method patent for maximum protection.

India ranked 6th among the 10 developing nations filing the highest number of PCT applications in the year 1999. Dr. Schon gave a talk on the salient features of the Patent Cooperation Treaty, entering into international and national phases and the advantages of taking the PCT route for obtaining international protection.

In the chemical industries particularly in the manufacture of pharmaceuticals, there is a need to recognize protection of new molecular structures and new product compositions. In India, under the Patent Act of 1970 only novel methods for the manufacture of chemical substances can be patented and we need for our inventions to be able to protect new molecular structures and products. Dr. Leander A. Feiler, Directorate Advisor, Chemistry, EPO explained in detail the evaluation of inventive step of compounds claiming pharmaceuticals properties, breadth of claims, disclosure of chemical compounds and patentability in the field of biotechnology and pharmacology. At the seminar/workshop, the state of law in Europe and U.S.A was beautifully compared and contrasted. The speakers at the seminar/workshop gave a major insight into the practical nuances which can be used to give inventors the maximum protection. They provided clarity and reasoning to questions which without their expertise, would have remained unanswered. The seminar achieved its objective as not only the researchers and pharmaceutical industrialists benefited, but also the people who have the power to modify the law to achieve the ends.

For any questions/comments regarding the seminar please contact Mr. Amar Raj Lall, President IIPRP at lall@vsnl.com.

Whether computer software is protected by a patent, copyright or trade secret is largely due to commercial reasons. Securing a Patent for software is the strongest form of protection and the pros in favour of it weigh more strongly than the cons. Software is a field which is constantly evolving and being upgraded and improved upon. The invention protected by the patent is defined by the claim and is a combination of all the elements of a claim and if even a single element of a previously known claim is missing in the applicant's claim, the combination is considered as novel. Therefore any improvement on a previously known software can be the subject of a patent.

A Software patent application has to be drafted with utmost precision.Software is basically designed to be copied. A computer programmer structures his software so that future programmers have no difficulty in developing the program further. If a software does not interface with other software it may have to be altered to suit the operators needs. Of course a patent may take 2 to 3 years to obtain because the software has to undergo a rigorous examination procedure in order to define the scope of the patent claims and strict formalities have to be complied with. Also searching for prior art may be a difficult and tedious process considering the infinite number of combinations possible in preparing a software code. Copyright has generally been favoured till now because software has generally been regarded more as an art or as an idea and classified as a literary work. And moreso because software coding is regarded similar to any other type of writing. However though copyright has an advantage that it is effective from the moment a software program is created and lasts for 50 years plus the lifetime of the author and one does not have to prove the inventiveness of the work in question, it has its shortcomings. Copyright protects only the expression of an idea and not the idea itself. Copyright does not protect functional aspects of a program and limited copying for reverse engineering is considered as legal fair use. A competitor may magnetically copy functional aspects of a program and still escape liability under copyright law by saying that he copied only the physical machine electronics and not eye-readable symbols or data.

In it's modern form patenting of software was conceived in the United States in about 1983. In Apple Computer Inc. vs. Franklin Computer Corp.,( 714 F 2d 1240, 219 U.S.PQ 113 3rd Circuit 1983 ) the learned Judge held that " Apple does not seek to copyright the method which instructs the computer perform its operating functions but only the instructions themselves. The method would be protected, if at all by the Patent Law, an issue as yet unresolved ". This is where the patent law has filled the void. Trade secret licensing may also be used as an alternative means of protecting software. However it is effective only when the software program is directed to a small market. For retail software it proves ineffective. Trade secret is effective only if the product does not inherently disclose the idea or technique. Software is usually reverse engineered and the problem arises when the infringer is able to reverse engineer the software from publicly available information - the owner has no recourse in such cases.

Section 101 of the U.S. Patent's Act states that whoever invents or discovers any new and useful (1) process (2) machine (3) manufacture or (4) composition of matter, or any new and useful improvement thereof, may obtain a patent on his invention or discovery.

A "process" is defined by the Patent Act as a " process, art or method and includes a new use of a known process, machine, manufacture or composition of matter, or material ". A "machine" is defined as a "device, mechanism or apparatus".

For software to be patentable in the U.S. it has to be regarded / expressed as a tangible thing - as an article or thing in itself or by itself or as a process described in terms of the operations performed by a machine pursuant to the instructions of a program or as any machine configurations established as a result of the new program.

It is peculiar to computer software that if a concept cannot be expressed in mathematical or logical symbology it cannot be programmed. What the patent law prohibits is patenting of a mere mathematical algorithm as such. However though the mathematical algorithm itself may not be patented, the implementation of the mathematical algorithm in a computer to produce a useful, tangible result is patentable. A computer invention must go beyond simply claiming a computer program on its own.

It is pertinent to note that unlike the U.S., in Europe computer programs are not patentable by virtue of Article 52 of the European Patent Convention but computer software can be granted a patent if the software program brings about a technical effect or result and the program is not claimed as such. The U.S. finds this " technical effect " as a very restrictive standard and their standard seems to be the " useful, concrete and tangible result ".

Phenomenon of nature, mere mental steps and abstract intellectual concepts are considered not patentable. However since inventions are commonly based on such laws of nature, natural phenomena or ideas and such inventions will be statutory if the invention is a practicable or useful application of the principles and produces a "real, concrete and tangible result".

Diamond vs. Diehr case was the landmark case which opened the flood gates to patenting of software in 1981. Diehrs application claimed a method of timely opening of a mould to achieve right curing of synthetic rubber using the famous Arhenious equation. The invention in Diehrs case effected a change in state of a physical thing and was therefore was held to be patentable.

Transformation or reduction of an article to a different state or thing is a clue to patentability of a process claim irrespective of the machine employed to achieve the result.

The application was rejected in the Flook case because the invention effected a change in state of a non - physical state i.e., a number is updated.

In Gotschalk vs Benson a method of converting numerals expressed as binary coded decimal numerals to pure binary numbers was not patentable as it did not fall within the statutory definition of a process. In re Alappat a case which became a touchstone for several other cases, in which the claim comprised of elements purely in the means form was held to be patentable on the basis that what was being claimed was in fact a machine since the means in question had to have some physical embodiment.

Methods of doing business are generally regarded as mere rules for solving problems and therefore unpatentable subject matter. However a business method which is implemented by a computer has been upheld as patentable as a useful art i.e., as a process implemented by an apparatus. More than 600 software and business method patents have been granted in the U.S. in the last year alone. Examples of software and business method patents granted in the U.S in Class 705 include Banknote anti-counterfeiting, Hotel Register, Insurance System , Art of Compiling Statistics, Service charge Calculation System, Product Registration System.

In the U.S in 1999 more than 2,658 Patent applications were filed for modern business data processing such as market analysis, advertising systems, and financial processes.

In State Street Bank vs Signature Financial Group, the business method was granted a patent because the claim was in means plus function form and was essentially directed to a machine. The claim was rejected at first on the basis that the business method could be carried out by using a pencil and paper and lacked sufficient physical activity, but later it was found to be patentable when it was read properly in the light of the specification. After the State Street Bank case a number of business methods have been granted patents which till now were considered unpatentable.

Significant changes in the U.S. Patent Law have been made which came into effect on November 29, 1999. The changes in the rules will be effective in March 2001. See Guidelines.