Library Catalogue
A Study on the Patentability of Financial Innovations in India
Nithyananda K.V
A Study on the Patentability of Financial Innovations in India - Bangalore NLSIU 2011 - 624p
Table of Contents
Chapter – 1: Introduction
Introduction;
Financial Innovations and the Patent Regime;
Research inquiry and objectives;
Scope of the study;
Methodology;
Sources of data;
Techniques of Data Collection;
Data Analysis;
Limitations of the Study;
Chapterization;
Chapter – 2: Financial Innovation;
Introduction;
Financial Engineering;
Financial System;
Financial Innovation;
Financial innovations ecosystem;
Features of financial services;
Nature of Financial Innovations;
Industry responses on the financial innovation scenario in India;
Categories of Financial Innovations;
Analysis of the categories of financial innovation;
Sources of Financial Innovations and rationale for such innovative activities;
Motivations for Financial Innovations;
Industry responses on motivations for financial innovation in India;
Other aspects about financial innovations;
Financial Engineer as an Inventor;
Roles assumed by the Financial Engineer;
Tools of Financial Engineer;
Financial Engineering Team;
Chapter – 3: Protecting Financial Innovations;
Introduction;
Need for protecting financial innovations;
Protecting financial innovations;
Components of financial innovation and protection;
Alternative modes of protecting financial innovations;
First-Mover Advantage;
Tacit Knowledge and Trade Secret;
Reputational Advantage;
Copyright Advantage;
Trademark Advantage;
Patents Advantage;
Sample Financial Patent granted in the US;
Industry Response on protecting financial innovations in India;
Summary;
Chapter – 4: Political Economy of Patenting Financial Innovations;
Introduction;
Part 1; Social Impact of the Financial Innovation;
Introductory Remarks;
Measuring Social Impact of financial innovations;
Concluding remarks;
Part 2; Debate on the Patenting of Financial Innovations;
Introductory Remarks;
Section 1; Rationale for Patents;
The Classical Approach to Patent Protection;
The Medieval Approach to the grant of patent rights;
The Modem Arguments for Patent Protection to financial innovations;
Summary and Conclusion;
Section 2: Debate on the Need for Patenting Financial Innovations;
Introduction;
Model adapted for the debate;
Factors considered for the debate;
1 Time taken for innovation ;
2 Investment in research and development;
3 Technological Risk;
4 Replication Risk;
5 Public funding;
6 Availability of alternative modes of protection ;
7 Importance / value of disclosure;
8 Network Effects ;
9 Clarity of Rights and Due Diligence Costs;
10 Leveraging / Misuse Potential / Anticompetitive symptoms;
11 Financial Strength of the Inventor / Investor ;
12 Cumulativeness of Innovation;
13 Effectiveness of Licensing Institutions;
14 Other Abuse Problems ;
Summary of the comparative study of biotechnology sector and financial sector ;
Findings, Observations and Conclusions of Part 2 of the Chapter;
Part 3 - Social Impact of patenting financial innovations in India ;
Introductory Remarks;
Patent System in India;
Social Impact of granting patent protection to financial innovations;
Concluding Remarks;
Conclusion to the Chapter;
Chapter – 5: Legal Position on Patenting Financial Innovations in the US;
Introduction;
Legal Position in the US;
History of Patentability of Financial Innovations;
I Pre-Gottschalk Phase;
1 Business Method Patents Prior to Hotel Security Case;
a Early Beginnings;
b [1854] O'Reilly vs Morse - The Telegraph Case;
c [1867) Munson vs The Mayor, Etc, of New York;
d [1874] Rubber Tip Pencil Company vs Howard;
e [1877) Cochrane vs Deener ;
f [1881] Waring vs Johnson;
g [1881] Dugan vs Gregg ;
h [1881] Tilghman vs Proctor ;
i [1892] Thomson vs Citizens' National Bank of Fargo;
j [1893] United States Credit System Co vs American Credit Indemnity Co;
k [1894] Johnson et al vs Johnston ;
1 [1894] Benjamin Menu Card Company vs Rand, McNally & Company;
m [1898] Safeguard Account Co vs Wellington ;
n [1903] Hocke vs New York Central & Hartford Railroad Company;
2 [1908] Hotel Security Checking Company vs Lorraine Company;
Reasoning of the court;
" Art" under Hotel Security;
"Business Method" under Hotel Security;
Synthesis;
Analysis and Interpretation of Hotel Security Case;
3 Business Method Patents Post Hotel Security Case;
a [1910] Berardini vs Tocci;
b [1911] Rand McNally & Company vs Exchange Scrip-Book Company;
c [1913] Cincinnati Traction vs Pope;
d [1930] American Fruit Growers, Inc vs Brogdex Company;
e [1934] In re Wait;
f [1939] MacKay Radio & Telegraph Co vs Radio Corporation of America;
g [1942] In re Patton;
h [1948] Funk Brothers vs Kalo Company;
i [1949] Loew's Drive-in Theatres, Inc vs Park-in Theatres, Inc;
j [1965] In re Wiechers;
k [1968) In re Howard;
1 [1972) In re Waldbaum;
4 Afterthoughts on Pre-Gottschalk Phase;
II Gottschalk to State Street Phase;
1 [1972] Gottschalk vs Benson;
Invention;
Decision in Gottschalk vs Benson;
Analysis of Gottschalk vs Benson;
2 Cases after Gottschalk vs Benson;
a [1973) In re Fox;
b [1974) In re Johnston;
c [1976) In re Chatfield;
d [1977) In re Deutsch;
e [1978) Parker vs Flook ;
f [1979] In re Maucorps;
g [1980) Diamond vs Chakrabarty ;
h [1981] Diamond vs Diehr;
i Freeman-W alter-Abele Test ;
j [1983] Paine, Webber vs Merrill Lynch ;
k [1988] Ex parte Murray;
l [1989] In re Grams;
m [1992] Arrhythmia Research Technology, Inc vs Corazonix Corp;
n [1994] In re Schrader ;
3 [1994] En banc decision in In re Alappat;
Background;
Technology in Alappat ;
Decision in Alappat ;
Analyzing In re Alappat ;
4 Afterthoughts on Gottschalk to State Street Bank Phase;
III State Street Bank and later Phase;
1 [1998] State Street Bank vs Signature Financial;
Background ;
Invention and Technology;
Decision in the State Street Bank;
Analysis of State Street Bank ;
2 Cases after State Street Bank;
a [1999] A T & T Corp vs Excel Communications, Inc ;
b [2001] Amazoncom vs Barnesandnoblecom;
c [2002] Marketel International, Inc vs Pricelinecom, Inc ;
d [2002] Keen, Inc vs InfoRocketcom, Inc ;
e [2004] Ex parte Lundgren;
f [2006] LabCorp vs Metabolite ;
g [2006] Ex Parte Bilski;
h [2007] Netflix vs Blockbuster ;
i [2007] In re Comiskey;
j [2007] In re Nuijten;
k [2008] In re Bilski;
1 [2010] Bilski vs Kappos;
m Post Bilski Phase;
Summary of the Legal Position in the US;
Chapter – 6: Legal Position on Patenting Financial Innovations in Europe;
Introduction and Background;
What can be patented in Europe;
Invention;
Industrial application;
Novelty;
Inventive Step;
Position of Mathematical algorithm;
Position of Business Method Patents;
Position of Computer Software Programs;
Historical Development of Jurisprudence in Europe;
a [1987] Vicom! Computer-Related Invention;
b [1988] Koch and Sterzel! X-ray Apparatus case;
c [1989] Merrill Lynch's Application! Automated Securities Trading System;
d [1990] IBM's Invention! Word Processing - Computer related Invention;
e [1990] IBM's Invention! Document Abstracting and Retrieving;
f [1991] Gale's Invention / New method of Calculation;
g [1993] IBM's Invention / Card Reading System;
h [1995] Sohei's Invention / General-purpose Management System;
i [1995] Pettersson's Invention / QueuMg System;
j [1998] IBM's Invention / External Interface Simulation;
k [2001] AT&T's Invention / Computer System;
1 [2001] Pension Benefit System Partnership;
m [2003] Comvik's Invention / Two identities; ;
n [2004] Hitachi's Invention / Auction Method;
o [2005] Catalina's Invention / Discount Certificates;
p [2005] Online Resources' Invention / Banking Services;
q [2006] Duns Licensing Associates' Invention / Estimating Sales Activity;
r [2006] MAN's Invention / Provision of Product Specific Data;
s [2006] ED Pool's Invention / International Transaction;
t [2007] Pitney Bowes' Invention / Undeliverable Mail;
u [2007] King's Invention / Loan System;
v [2008] Ricoh's Invention / Order Management;
Analysis of the European Position on the Patentability of Financial Innovations Determining Technical Character;
Determining inventive step;
Skilled Person;
Determining Non-obviousness of an invention
Conclusion to the chapter
Chapter – 7: A Look at the Financial Innovation related patent applications in the US and
Europe;
Introduction;
Data Selection;
Analysis;
Chapter – 8: Legal Position on Patenting Financial Innovations in Other International
Jurisdictions;
Introduction;
Argentina;
Australia;
Brazil;
Canada;
China;
Japan;
Malaysia;
Mexico;
Singapore;
South Africa;
South Korea;
Taiwan;
Conclusion;
Chapter – 9: Legal Position on Patenting Financial Innovations as per TRIPS Agreement Position of TRIPS;
Technical invention as the subject of Patent Protection;
Invention;
Technicality;
Patent Types;
Product Patents;
Process Patents;
Implications of TRIPS agreement on certain kinds of inventions;
Discoveries;
Computer Software;
Exclusion from Patentability on the grounds of Public Interest;
Ordre Public;
Protection of Morality;
Conclusion
Chapter – 10: Legal Position on Patenting Financial Innovations in India;
Introduction;
What can be patented in India?;
Utility;
Novelty;
Obviousness;
Specification;
Non-Patentable Inventions;
Patents for Business Methods, Mathematical Algorithms and Computer Programs;
Introduction and Evolution;
Computer Software Patents in India;
Conclusion;
Analysis of the patents granted for financial innovations in India;
Summary of the data analysis;
Chapter -11: Summary, Conclusions and Recommendations;
Summary;
Conclusions and Recommendations;
Scope for future research;
Appendix;
Appendix 1 - Strategic Framework for protecting financial innovations;
Appendix 2 - Questionnaire used to collect the Primary Data;
Appendix 3 - List of financial innovations carried out in the western world;
Appendix 4 - Patent applications filed with the IPO;
References;
Financial Innovation - Patenting Financial Innovation - Protection Patenting Financial Innovation - Social Impact - India
A Study on the Patentability of Financial Innovations in India - Bangalore NLSIU 2011 - 624p
Table of Contents
Chapter – 1: Introduction
Introduction;
Financial Innovations and the Patent Regime;
Research inquiry and objectives;
Scope of the study;
Methodology;
Sources of data;
Techniques of Data Collection;
Data Analysis;
Limitations of the Study;
Chapterization;
Chapter – 2: Financial Innovation;
Introduction;
Financial Engineering;
Financial System;
Financial Innovation;
Financial innovations ecosystem;
Features of financial services;
Nature of Financial Innovations;
Industry responses on the financial innovation scenario in India;
Categories of Financial Innovations;
Analysis of the categories of financial innovation;
Sources of Financial Innovations and rationale for such innovative activities;
Motivations for Financial Innovations;
Industry responses on motivations for financial innovation in India;
Other aspects about financial innovations;
Financial Engineer as an Inventor;
Roles assumed by the Financial Engineer;
Tools of Financial Engineer;
Financial Engineering Team;
Chapter – 3: Protecting Financial Innovations;
Introduction;
Need for protecting financial innovations;
Protecting financial innovations;
Components of financial innovation and protection;
Alternative modes of protecting financial innovations;
First-Mover Advantage;
Tacit Knowledge and Trade Secret;
Reputational Advantage;
Copyright Advantage;
Trademark Advantage;
Patents Advantage;
Sample Financial Patent granted in the US;
Industry Response on protecting financial innovations in India;
Summary;
Chapter – 4: Political Economy of Patenting Financial Innovations;
Introduction;
Part 1; Social Impact of the Financial Innovation;
Introductory Remarks;
Measuring Social Impact of financial innovations;
Concluding remarks;
Part 2; Debate on the Patenting of Financial Innovations;
Introductory Remarks;
Section 1; Rationale for Patents;
The Classical Approach to Patent Protection;
The Medieval Approach to the grant of patent rights;
The Modem Arguments for Patent Protection to financial innovations;
Summary and Conclusion;
Section 2: Debate on the Need for Patenting Financial Innovations;
Introduction;
Model adapted for the debate;
Factors considered for the debate;
1 Time taken for innovation ;
2 Investment in research and development;
3 Technological Risk;
4 Replication Risk;
5 Public funding;
6 Availability of alternative modes of protection ;
7 Importance / value of disclosure;
8 Network Effects ;
9 Clarity of Rights and Due Diligence Costs;
10 Leveraging / Misuse Potential / Anticompetitive symptoms;
11 Financial Strength of the Inventor / Investor ;
12 Cumulativeness of Innovation;
13 Effectiveness of Licensing Institutions;
14 Other Abuse Problems ;
Summary of the comparative study of biotechnology sector and financial sector ;
Findings, Observations and Conclusions of Part 2 of the Chapter;
Part 3 - Social Impact of patenting financial innovations in India ;
Introductory Remarks;
Patent System in India;
Social Impact of granting patent protection to financial innovations;
Concluding Remarks;
Conclusion to the Chapter;
Chapter – 5: Legal Position on Patenting Financial Innovations in the US;
Introduction;
Legal Position in the US;
History of Patentability of Financial Innovations;
I Pre-Gottschalk Phase;
1 Business Method Patents Prior to Hotel Security Case;
a Early Beginnings;
b [1854] O'Reilly vs Morse - The Telegraph Case;
c [1867) Munson vs The Mayor, Etc, of New York;
d [1874] Rubber Tip Pencil Company vs Howard;
e [1877) Cochrane vs Deener ;
f [1881] Waring vs Johnson;
g [1881] Dugan vs Gregg ;
h [1881] Tilghman vs Proctor ;
i [1892] Thomson vs Citizens' National Bank of Fargo;
j [1893] United States Credit System Co vs American Credit Indemnity Co;
k [1894] Johnson et al vs Johnston ;
1 [1894] Benjamin Menu Card Company vs Rand, McNally & Company;
m [1898] Safeguard Account Co vs Wellington ;
n [1903] Hocke vs New York Central & Hartford Railroad Company;
2 [1908] Hotel Security Checking Company vs Lorraine Company;
Reasoning of the court;
" Art" under Hotel Security;
"Business Method" under Hotel Security;
Synthesis;
Analysis and Interpretation of Hotel Security Case;
3 Business Method Patents Post Hotel Security Case;
a [1910] Berardini vs Tocci;
b [1911] Rand McNally & Company vs Exchange Scrip-Book Company;
c [1913] Cincinnati Traction vs Pope;
d [1930] American Fruit Growers, Inc vs Brogdex Company;
e [1934] In re Wait;
f [1939] MacKay Radio & Telegraph Co vs Radio Corporation of America;
g [1942] In re Patton;
h [1948] Funk Brothers vs Kalo Company;
i [1949] Loew's Drive-in Theatres, Inc vs Park-in Theatres, Inc;
j [1965] In re Wiechers;
k [1968) In re Howard;
1 [1972) In re Waldbaum;
4 Afterthoughts on Pre-Gottschalk Phase;
II Gottschalk to State Street Phase;
1 [1972] Gottschalk vs Benson;
Invention;
Decision in Gottschalk vs Benson;
Analysis of Gottschalk vs Benson;
2 Cases after Gottschalk vs Benson;
a [1973) In re Fox;
b [1974) In re Johnston;
c [1976) In re Chatfield;
d [1977) In re Deutsch;
e [1978) Parker vs Flook ;
f [1979] In re Maucorps;
g [1980) Diamond vs Chakrabarty ;
h [1981] Diamond vs Diehr;
i Freeman-W alter-Abele Test ;
j [1983] Paine, Webber vs Merrill Lynch ;
k [1988] Ex parte Murray;
l [1989] In re Grams;
m [1992] Arrhythmia Research Technology, Inc vs Corazonix Corp;
n [1994] In re Schrader ;
3 [1994] En banc decision in In re Alappat;
Background;
Technology in Alappat ;
Decision in Alappat ;
Analyzing In re Alappat ;
4 Afterthoughts on Gottschalk to State Street Bank Phase;
III State Street Bank and later Phase;
1 [1998] State Street Bank vs Signature Financial;
Background ;
Invention and Technology;
Decision in the State Street Bank;
Analysis of State Street Bank ;
2 Cases after State Street Bank;
a [1999] A T & T Corp vs Excel Communications, Inc ;
b [2001] Amazoncom vs Barnesandnoblecom;
c [2002] Marketel International, Inc vs Pricelinecom, Inc ;
d [2002] Keen, Inc vs InfoRocketcom, Inc ;
e [2004] Ex parte Lundgren;
f [2006] LabCorp vs Metabolite ;
g [2006] Ex Parte Bilski;
h [2007] Netflix vs Blockbuster ;
i [2007] In re Comiskey;
j [2007] In re Nuijten;
k [2008] In re Bilski;
1 [2010] Bilski vs Kappos;
m Post Bilski Phase;
Summary of the Legal Position in the US;
Chapter – 6: Legal Position on Patenting Financial Innovations in Europe;
Introduction and Background;
What can be patented in Europe;
Invention;
Industrial application;
Novelty;
Inventive Step;
Position of Mathematical algorithm;
Position of Business Method Patents;
Position of Computer Software Programs;
Historical Development of Jurisprudence in Europe;
a [1987] Vicom! Computer-Related Invention;
b [1988] Koch and Sterzel! X-ray Apparatus case;
c [1989] Merrill Lynch's Application! Automated Securities Trading System;
d [1990] IBM's Invention! Word Processing - Computer related Invention;
e [1990] IBM's Invention! Document Abstracting and Retrieving;
f [1991] Gale's Invention / New method of Calculation;
g [1993] IBM's Invention / Card Reading System;
h [1995] Sohei's Invention / General-purpose Management System;
i [1995] Pettersson's Invention / QueuMg System;
j [1998] IBM's Invention / External Interface Simulation;
k [2001] AT&T's Invention / Computer System;
1 [2001] Pension Benefit System Partnership;
m [2003] Comvik's Invention / Two identities; ;
n [2004] Hitachi's Invention / Auction Method;
o [2005] Catalina's Invention / Discount Certificates;
p [2005] Online Resources' Invention / Banking Services;
q [2006] Duns Licensing Associates' Invention / Estimating Sales Activity;
r [2006] MAN's Invention / Provision of Product Specific Data;
s [2006] ED Pool's Invention / International Transaction;
t [2007] Pitney Bowes' Invention / Undeliverable Mail;
u [2007] King's Invention / Loan System;
v [2008] Ricoh's Invention / Order Management;
Analysis of the European Position on the Patentability of Financial Innovations Determining Technical Character;
Determining inventive step;
Skilled Person;
Determining Non-obviousness of an invention
Conclusion to the chapter
Chapter – 7: A Look at the Financial Innovation related patent applications in the US and
Europe;
Introduction;
Data Selection;
Analysis;
Chapter – 8: Legal Position on Patenting Financial Innovations in Other International
Jurisdictions;
Introduction;
Argentina;
Australia;
Brazil;
Canada;
China;
Japan;
Malaysia;
Mexico;
Singapore;
South Africa;
South Korea;
Taiwan;
Conclusion;
Chapter – 9: Legal Position on Patenting Financial Innovations as per TRIPS Agreement Position of TRIPS;
Technical invention as the subject of Patent Protection;
Invention;
Technicality;
Patent Types;
Product Patents;
Process Patents;
Implications of TRIPS agreement on certain kinds of inventions;
Discoveries;
Computer Software;
Exclusion from Patentability on the grounds of Public Interest;
Ordre Public;
Protection of Morality;
Conclusion
Chapter – 10: Legal Position on Patenting Financial Innovations in India;
Introduction;
What can be patented in India?;
Utility;
Novelty;
Obviousness;
Specification;
Non-Patentable Inventions;
Patents for Business Methods, Mathematical Algorithms and Computer Programs;
Introduction and Evolution;
Computer Software Patents in India;
Conclusion;
Analysis of the patents granted for financial innovations in India;
Summary of the data analysis;
Chapter -11: Summary, Conclusions and Recommendations;
Summary;
Conclusions and Recommendations;
Scope for future research;
Appendix;
Appendix 1 - Strategic Framework for protecting financial innovations;
Appendix 2 - Questionnaire used to collect the Primary Data;
Appendix 3 - List of financial innovations carried out in the western world;
Appendix 4 - Patent applications filed with the IPO;
References;
Financial Innovation - Patenting Financial Innovation - Protection Patenting Financial Innovation - Social Impact - India