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1. By:
NISHANT KEWALRAMANI

2. INVENTIONS
Subject Matter
Usefulness
Novelty
Non-obviousness
Specification
PATENTS
Patent Filter Model

3. Subject Matter Exclusions
 Abstract Ideas,
 Laws of Nature,
 Natural Phenomenon

4.  Diamond v. Diehr (US Supreme Court)
o Process of curing synthetic rubber
o Use of Arrhenious equation to determine temperature
o Alarm/Buzzer for opening the rubber molding press
o Machine Controlled by Computer Program patentable
 State Street Bank v. Signature Financial Corp.
◦ Hub and spoke financial services Config.
◦ Requirements of Internal Revenue service for avoiding
taxes on a partnership.
◦ Useful, concrete, tangible result test

5.  In Re Bilski
◦ Hedging of risks in commodity trading
◦ E.g. coal industry
◦ Machine or Transformation test
 There should be a structural limitation; OR
Should change a physical tangible object
from one form to another

6.  Public or private legal obligations
 Relationships
 Business risks
Any transformation related to these is not
covered

7.  Courts cannot read limitations into patent law
that don’t otherwise exist
 Machine or transformation test not the only
litmus test
 Machine or transformation test- important
inquiry
 Abstract idea not patentable- if not directed
towards an abstract idea, process claims are
patentable.

8.  Effect of drug dosage on human body
 Method of optimizing therapeutic efficacy for
treatment of…
 Claim tries to monopolize a natural process
 Extra steps in the process insufficient to
transform natural law into patentable process

9. Process
Claim
Natural
Phenomenon
Machine or
Transformation
Test
Abstract Idea
Other
elements that
make
process
patent eligible

10. Subject Matter Exclusions
 Discoveries
 Scientific Theories
 Mathematical methods
 Aesthetic Creations
 Schemes, rules, mental acts
 Methods of doing business
 Programs for computers
AS SUCH

11.  Resource recovery in a computer system
 “Further technical effect” which goes beyond
the normal physical interactions between a
program and the computer
 Computer program claimed by itself or
claimed as a computer readable medium- No
difference under Article 52 (2) EPC

12. Method in a digital mobile telephone system of the GSM type, in
which subscriber units (MS) are controlled by a subscriber
identity module (SIM), characterised in that the subscriber
identity module (SIM) is allocated at least two identities (IMSI
1 , IMSI 2), information thereon being stored in a home
database of the system, said at least two identities being
selectively usable, wherein only one identity (IMSI 1 or IMSI 2)
can be activated at a time, the user when using a subscriber
unit (MS) selectively activating the desired identity in said
home database from the subscriber unit, wherein the
selective activation is used for distributing the costs for
service and private calls or among different users

13.  Two parts of claim
◦ Elements contributing to Technical Character
◦ Elements not contributing to Technical Character
 Inventive step should be assessed for the elements
contributing to technical character
 Problem-Solution analysis
◦ A technical problem should be solved by the invention
◦ Non technical elements may be used in formulating a
problem
 Non Patentable as invention is obvious.

14. Software
Claim
Identification
of technical
problem
Elements
contributing to
technical character
should solve the
problem
In case of absence
of hardware-
Further technical
effect

15. Exclusion
“Software per se”

16.  Section 3 (k) amendment recommended-
 Addition of words-
“a computer programme per se other than its
technical application to industry or a
combination with hardware”
Rejected by Parliament

17.  Method claims for software inventions
 Hardware limitations allowed
 a method for processing seismic data,
comprising the steps of collecting the time
varying seismic detector output signals for a
plurality of seismic sensors placed in a cable”
 Withdrawn from circulation
 New Manual does not mention them any more

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