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| THE FIRST TWO DECISIONS BY THE
INDIAN PATENT OFFICE IN OPPOSITIONS IN SOFTWARE BASED
INVENTIONS ON THE GROUND OF INSUFFICIENCY i.e., ENABLING
DISCLOSURE |
S.
Majumdar & Co. conducted the proceedings on behalf
of the opponent and is pleased to bring out the outlines
of the oppositions.
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Patent
Applications No. 180042 (306/BOM/94) and 180043 (307/BOM/94)
Applicant:
M/s Star Precision Electronics (India) Ltd. represented
by M/s Chandrakant M. Joshi, Patent & Trademark Attorneys,
Mumbai
Opponent: M/s Premier Polytronics Ltd.
represented by
S. Majumdar & Co., Patent & Trademark Attorneys,
Kolkata & Mumbai
Decided by: M. A. Haafeez, Asst. Controller of Patents
& Designs, Patent Office Mumbai Branch
Date of decision: 31st December 2002.
 BRIEF FACTS:
The inventions of the applicant were directed to an improved
PC based tensile testing machine for textile applications.
The constructional features of the machines were claimed
with reference to arrangement of process hardware although
the inventions resided in the use of a PC in
conjunction with conventional textile machine so as to
obtain fast and automated results of tensile testing,
evaluation and graphical display.
The patents were opposed under ground of insufficiency
of disclosure amongst other grounds. The opponents relied
upon evidence of a software expert who deposed that a
person skilled in the art i.e. a software expert will
not be able to use the inventions until and unless the
supporting software is made available to him. No details
with respect to the software were found in the texts.
The expert testified on oath that the specifications contained
no details with respect to the essential software features
such as structure, procedures, functions, sequence of
process etc and no person skilled in the art will be able
to use the inventions for the intended purpose. In other
words even a skilled addressee would need to write the
software independently so as to derive the benefits of
the inventions disclosed.
The Controller upheld the opinion of the expert on the
ground of "insufficiency" and rejected the applications.
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KEY TAKINGS FROM THE
DECISION
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1. Expert evidence plays a
major role in patent litigations because the courts and
controllers are guided by expert opinion in technical matters
when the courts/controller find such evidence reliable.
Accordingly the selection of expert for a given technology is
important. Furthermore the preparation of the evidence needs
to be done with great degree of care and utmost
precision
2. While drafting a software based patent
specification the inventor ought to bring out the various
modules of the supporting software. Specifications for
software innovation should clearly describe the software based
on which the desired results are achieved. A schematic of the
basic logic used in the software should be provided. The test
of sufficiency is that a person skilled in the art would be
able to produce the product claimed by the patent holder by
following the instructions contained in the specification and
making use of his expertise for the
purpose. |
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