The system of patents is subjected to continuous changes in its philosophy and in its purview. The invention of new technologies is always a test for the system of patents. The objective of the patent law is to encourage and promote research and development of new innovations and technologies, had its implications on patenting many innovations. With the emergence of the two pioneer technologies of the modern world namely information technology and biotechnology the system of patents is undergoing significant changes. The fact that the philosophy of patent law is dynamic and prone to continuous changes has had its impact on patenting the inventions of these new technologies. The modern world is very much influenced by these two technologies. Research and innovation in these fields is progressing day by day. As a result many inventions with great utility and function have been claimed for patents. Though the patenting of the inventions of these two technologies generated heated debates throughout the world ultimately benefit of the society seems to be overweighing all the objections and oppositions. The versatile nature of the patent system is once again drawing attention with the new trend of patenting the inventions of information technology and biotechnology
Information technology and its inventions
Information technology can be called as the most effective media of communication in the modern day. It is the technology, which provides a platform for easy, quick and effective communication. The technology involves using of computers and computer networks for the purpose of communication and dissemination of knowledge. Continuous research in the field of information technology guaranteeing effective communication has resulted in new inventions. These inventions are being claimed for patents to reap profits with their practical application in the society at large. Inventions in this field are usually patented without any objections or oppositions.
Patenting of tangible or physical inventions in the field like computer, computer equipments and the like could be done on the satisfaction of regular requirements of patentablity. However patenting non-physical inventions like computer programs and software is a new phenomenon and is the issue for concern.
Software: Meaning and definition
Computer functions on the basis of programs which are written using algorithms. Software is a set of programmes put together to instruct the computer to perform an intended task. Software can be defined as a combination of programmes written with the help of algorithms to perform special tasks. Algorithm is defined as a set of rules for solving a problem in a finite number of steps. In general software means a set of rules or instructions on the basis of which computer function in order to generate an intended output.
Patenting the inventions of information technology
The history of intellectual property rights for protection of innovations in information technology demonstrates the complexity of such issues.1 Inventions in computer hard ware, equipment, functional components, devices etc. have been traditionally protected through patents. Common yardsticks of patentability have been applied to patenting of information technology equipments. But patenting of computer programs or software, the lifeblood of information technology was not encouraged. However, through several court decisions the framework of patent law for patenting of software has been continually evolved in the last thirty years.2 Especially in US, patent law on computer related inventions is more advanced than other countries. The US judiciary well known for its innovative and liberal interpretation of law took the initiate for patenting computer related inventions and in particular software. A review of the development of patent law in this field of technology would help to appreciate insights that have gone into arriving at legal frameworks for protection of computer related innovations. A major set of steps were taken in the US to evolve the criteria for the patentability of computer programs and software through a range of case laws.
Evolution of Law on patenting computer programs and software
Patents were granted on computer related inventions like computer equipments, computer hardware and other computer related physical objects. It was presumed that computer related objects do satisfy the requirement of patentability. But computer programs and software per se was not patentable. Software though computer related was not considered as patentable. However, in the due course of time the new approach and innovative interpretation of patent law made computer software as patentable. Indeed it can be said that judiciary has evolved the law on patenting software. Therefore, the law relating to patenting software is basically Judge made law. Earlier there were instances when patents were rejected on software under the existing patent laws. In Grottschal v. Benson3 the US Supreme Court held that a computer program whose sole objective is to generate numerical values according to an algorithm would be unpatentable. The Court considered algorithm as mental acts and held mental acts as not patentable. Since software is a set of computer programs that involves using of algorithms to make the computer function it was considered as unpatentable.
However, for the first time in In re Toma4 the US Patent Office Board of Appeals taking a complete departure from the decision of the Supreme Court in the earlier case held a software that translate one language into another as patentable. It was the first case where computer software was considered as patentable. Infact there was no statutory support for considering or patenting computer software. However, judiciary interpreted the existing patent laws in an innovative way to patent software. Further in Diamond vs Diehr5 inspired by the decision of the US Patent Office to patent software held a computer controlled process, which involved certain algorithm to perform an intended task as patentable. The Court for the first time viewed algorithm as patentable. Infact it was the presumption that algorithm which involves mathematical formulas does not qualify for patents, which had driven the Courts to consider software that involve algorithms as not patentable.
The Court defined the term ‘algorithm’ to mean: “a fixed step by step procedure for accomplishing a given result usually a simplified procedure for solving a complex problem.” The Court considered algorithm as a defined process or set of rules that leads and assures the development of a desired output from a given input.” It was also opined that algorithm involves a sequence of formulas and or algebraic/logical steps to calculate or determine a given task”. Once the Courts started considering software as patentable the picture started becoming clear. In particular in nineteen nineties the decisions of the Courts were more clear and comprehensive in patenting software. In Arrythmia Research Technology Inc v. Carasonix Corp6 a computer process for diagnosing heart attacks was given patent on. The claim was for the process to analyze electro cardiac signals to determine specific heart activity, which involves the use of an algorithm. Through the process data pertaining to electro cardiac signals can be transferred to computer for determining patient’s vulnerability to heart attacks.
When we observe the approach of the judiciary it can be said that a novel computer program, which makes a technical contribution to the society is patentable. Computer programs or software prima facie is not patentable however software along with its specific function is patentable.7 It seems the function or the practical utility of the software renders it patentable. It is a pre requisite under the patent law that an invention must have a specific function, which is useful in order to patent it.8 There should be some functional relationship between software and the computer in order to grant a patent on the claimed software. The functional relationship should involve a series of steps to be performed on a computer with the aid of the software. The invention must be a ‘useful computer process’ with a definite function to be performed on the computer.
Meanwhile the US patent office brought up new examination guidelines for computer related inventions issued in 1996.9 In fact it was an attempt of the US patent office to give statutory support to the approach of the judiciary in patenting computer programs and software. In the light of new examination guidelines issued to regulate patenting software in State Street Bank and Trust Co. v. Signature Financial Group10 computer software used for conducting methods for doing business was held to be patentable. The claim was for software running on a general-purpose computer that produces a useful concrete and tangible result. It was also held that using a mathematical formula with the aid of a computer would be patentable if it produces a useful, concrete and tangible result. Eventually the decision overruled the presumption that mathematical algorithms are not patentable.
In the light of innovative trend of patenting software, there is an expected growth in the software industry. The birth of Internet in 1990’s and vast usage of Microsoft windows has had huge impact on the modern world. As a result of which day-by-day patents on software are increasing.11 Today many patents are being issued on methods of doing business.12A patent was issued for reverse-auction system of conditional offers to multiple sellers.13A method of advertising over Internet, method of placing an order online with a single mouse click once the item desired is displayed is also given patent.14 The current trend says that any business method implemented through software whether over the Internet or otherwise might be patentable.15
When we observe the developments in the field of patent law it suggest that computer programs or software per se without any functional relationship with the computer are not patentable. Further data structures, mathematical algorithms without specific function and compilation and arrangement of non-functional information are also not patentable. Meanwhile computer programs with function, which establishes inter relationship between computer machine and computer program are patentable. Computer related inventions such as software, which controls the working of machines in an industry, programs that controls manufacturing process are patentable. On the same line methods of doing business such as: software controlled business practices/management, financial practice/management, cost price determination are patentable. The function of the software satisfies the requirement of utility under the patent law. New software involving an inventive step with function is patentable if it is described in written form. There is a possibility of claiming both process claims and as well as product claims on computer programs. When a computer programme is claimed in a process where the computer is executing the computer programs instructions the claim may be treated as a process claim. When a computer program is recited in conjunction with a physical structure such as computer memory, the claim may be looked upon as a product claim. 16
It is estimated that by the end of 2020 there will be around 3, 00,000 software patents across the world. Following the upsurge of software patents in US, Europe and as well as in Japan they witnessed growth in software patents. In 1985, the EPO issued guidelines for governing patenting of software. The EPO issued many software patents on the basis of technical contribution by the software to the society. 17 Many giants in the field of information technology obtained software patents on different computer related inventions in particular on software. The IBM Company alone has obtained 1200 software patent in the year 1998.18 Major share of information technology patents goes to software on networking/communication, operating systems and image processing.
Biotechnology and its inventions
Biotechnology is a study relating to the practical application of living beings in different fields.19 Basically it is a study relating to living organisms in the industrial utilization.20 It is the technology, which uses living organisms or its parts for specific commercial use.21Modification and application of living beings for different practical purposes is possible through biotechnology. Today biotechnology is being used in different fields for better results. 22 It may not be untrue if it is said that there is no field where biotechnology has got no application.23 The progress of the modern world is dependant on the development of biotechnology due to its diverse and significant application. Research in biotechnology has given rise to many inventions with enormous utility and commercial value
Patenting the inventions of biotechnology
Since biotechnology inventions involve living beings and their life, their patenting gives rise to monopoly over life or living beings or over living processes. The inventions of biotechnology were viewed as against the moral and ethical considerations of the society, as these inventions involve tinkering with life and as well as monopoly over life. Societal concerns state that life is not patentable and living beings should not become a subject of patent monopoly. However, with the emergence of biotechnology capable of producing non-natural living beings patenting of living beings or life gained significance in the modern era. Infact patenting of life was never considered as possible due to the presumption that life is a creation of God and human being could get exclusive rights over it. However, the practical application of non-natural living beings and its utility influenced the system of patents in modifying its premises. As a result today the inventions of biotechnology are patentable with due consideration to their benefits. Accepting the traditional approach the new premise of patent law states that natural life is the creation of God, but non- natural life is the creation of human being. Creations of God or the creations of nature could not be patented however creations of man, which involves the application of human intelligence to natural things, could be patented. These changes in the premises of patent law were prompted with the decision of the Supreme Court of America in Diamond v. Chakraburty24 where a patent was granted on a micro-organism, a living being. The applicant claimed patent on a non-naturally produced bacteria, capable of performing certain non-natural functions. The inventor genetically modified the bacteria to inject capacity to clean up oil spills, which it cannot in its natural form. The inventor succeeded in convincing the court that his claimed invention is non-natural and man made. He could demonstrate that his invention does not exist in the nature in the claimed form. The Court observed that the bacteria naturally were not having capacity to eat up oil spills and intellectual efforts of the inventor made it to possess the same. Therefore, the capacity to eat up oil spills renders it non-natural and man-made which could be patented. As per the US patent law any new, non-obvious and useful process, machine, manufacture, composition of matter is patentable.25 The Supreme Court of America interpreted the phrase ‘composition of matter’ to encompass ‘non-natural living beings’. The implication was that an invention involving life could be patented if it is non-naturally produced. The decision was first of its kind to grant patent on living beings in the background of several unsuccessful attempt to patent life and decisions of Law Courts rejecting claims on life in different parts of the world.26Based on the above decision of the US Supreme Court, in Europe in Genentech-I/Polypetide Expression case a patent was granted on plasmid, a micro-organism genetically modified to express foreign proteins. The European Patent Convention, which is binding law on patent throughout the European Union states that naturally produced living beings such as plant, animal and microorganisms, are not patentable. Patent was granted on plasmid by interpreting the above provision of the convention to exclude non-natural living beings.
The decisions to grant patent on non-natural living beings in the above cases not only initiated patenting of non-natural micro-organisms through out the world but also provided encouragement for patents on non-natural plants. For the first time in Ex parte Hibberd27 a patent was granted on a non-naturally produced mutant of maize plant. The inventor contended that the maize mutant plant does not exist in the nature in the claimed form and his efforts of ingenuity altered the plant properties to possess certain features, which naturally it does not have. Adopting the philosophy of the Chakraburty case patent was granted on the satisfaction that the claimed plant is non-natural and human made. Meanwhile in Europe in Ciba Geigg’s case the European Patent Office’s Board of Appeals granted patent on the seeds of a genetically modified plant. In Plant Genetic Systems28 a patent was granted on genetically modified plant and plant cells. In the background of patents on non-natural plants patents are claimed on non-natural animals. In light of this development the US Patent Office issued a policy statement expressing its concerns in patenting non-natural animals. Based on its policy statement in Oncomouse Case29 patent was granted on oncomouse, a non-natural animal. The inventors genetically modified the mice to become susceptible to cancer, which was useful in cancer research. Following the decision of US patent office in Europe also patent was granted on oncomouse.30
The trend of granting patents on non-natural living beings took an interesting turn with claims for patents on human genetic material. In John Moore Case patent was granted on the cell lines of human being useful in producing cancer-fighting proteins31 followed by patents on human genetic materials like DNA and RNA in Amezan Inc Vs Chugai Pharmaceuticals32, In re Bell33 and in In re deuel.34 Meanwhile, the European Patent Office also started granting patents on human genetic material. In Biogen vs Medeva a patent was granted on DNA molecules. Further in Novarties case35 it was made clear that DNA, RNA and human cells could be patented. However human being though genetically engineered or non-naturally produced could not be patented. It was highlighted in Pioneer Hibred International case36 that human cloning and human being is not patentable. Going a step ahead the European Union brought up a Directive where it prohibited non-natural human being and human cloning from patenting.37 The Directive was followed by the US legislative action to prohibit human cloning and human being from patenting.38
Patenting biotechnological processes
Non-natural or genetically modified living beings are the results of non-natural and genetically modified biological processes. Addition of human ingenuity to the natural processes renders it non-natural. Biotechnological processes being non-natural processes have been claimed for patents since patents are available to products as well as processes. The task ahead for the inventors of biotechnological processes was to convince the patent offices that biotechnological processes are non-natural and there is a role of human agency or human ingenuity, which differentiate a natural process and biotechnological process. In Hybertech Inc v. Monoclonal Antibodies Inc.,39 a patent was claimed for process of utilizing proteins to fight against diseases. The inventors convinced the Court that the method is non-natural since it utilizes proteins produced inside the body on human prescription and obtained patent. Further in In re Wands40 patent was granted on a process of detecting viruses causing hepatitis-B disease. In case of In re Farrell41 invention was a process to produce foreign proteins in bacteria in a non-natural way. Meanwhile in Europe in Chiron Corporation case42 upholding the new trend of patent law a patent was granted on a process of producing proteins through in vitro propagation of Hepatitis-C virus in a non-natural and biotechnological way.
The current trend in the patent law states that non-natural life; living beings and non-natural living processes are patentable. Biotechnological process and microbiological processes are non-natural processes, which involve addition of human intelligence to the natural processes in producing non-natural and genetically modified living beings. The inventions of biotechnology ranges from non-natural micro-organisms like; bacteria, plasmid, non-natural plant, non-natural animal and non-natural human genetic material which are undoubtedly patentable in the present scenario. Besides, biotechnological process could also be patented in the upsurge of the new trend in patent laws.
Conclusion:
The development of the society depends on the development of science and technology. The development of science and technology to a large extent depends on the encouragement and support provided through rewards. Patent is a reward for the efforts and labour in producing new and novel innovations. Patents encourage further research and development in the concerned field, which ultimately benefits the society at large. Today patent law has reached unprecedented and unforeseen destinations. The current trend of patent law in patenting intangible things like computer programs and software at the same time patenting non-natural living beings and living processes has been able to reward the efforts and innovations in the field of information technology and biotechnology. In a way it stimulated further research and development in the fields which resulted in inventions with enormous utility and commercial value. Since information technology and biotechnology have been considered as the driving force of the modern world, patent grants for the inventions in these fields may serve the benefit of the society at large.