Analyzing Patentability of Software Inventions

Dr. Kalyan C. Kankanala kalyan@brainleague.com www.brainleague.com Blog: www.sinapseblog.com

Brain League IP Services Pvt. Ltd., 2011

Invention Inventor report Invention disclosure Patent search Patent application Filing Prosecution Patent Grant Patentablity Opinion

Patent

Patentability requirements
Patentable subject matter Utility Novelty Nonobviousness Specification
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INVENTIONS

Kalyans Patent Filter Model

Subject Matter Usefulness Novelty Non-obviousness Specification

PATENTS
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Patentable Subject Matter

Process, machine, manufacture, composition of matter and Improvements Product or Process

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Exclusions
Abstract Ideas, Physical Phenomenon and Laws of Nature. Function of a machine Mental steps Mathematical Algorithm India Computer Programs Per se
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Diamond v. Diehr
Process for vulcanizing rubber Signal to open mold Physical effect Part of a process

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State Street Bank Case

ub and Spoke Software Calcuate share of profits in mutual funds Concrete, Useful and Tangible Result Business Method Exception

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Bilski Case
Method of hedging risk Machine or Transformation test

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Subject Matter?

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Utility
Current Substantial Credible

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Novelty
Known or used Patented or published Public use or On sale Abandoned Foreign priority Patented in another country
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Novelty
Derived Suppressed or Concealed Diligence Single prior art reference

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Nonobviousness
Scope of prior art Differences- invention and prior art Level of ordinary skill Secondary Indicia At the time of conception Obvious to try
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Secondary Indicia
Commercial Success Copying Praise by expert Unexpected results Long felt need

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Specification
Written Description Enablement Best Mode Claims Object: Notice and Dissemination
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Analyzing Patentablity

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Example
A software for analyzing ECG data remotely. Is it patentable?

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Thank You For more info: www.sinapseblog.com Free online IP courses: www.onlineipcourses.com
Brain League IP Services Pvt. Ltd., 2009. Private Use is Permitted.