Transcript Diapositive 1

Content of the module
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IP for the creative industries
Patented computer-implemented inventions
Software
Biotechnological inventions
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Patented computer-implemented inventions
• This short introduction to patentability focuses on what
may be patentable in Europe and in the USA
• Specific questions concerning what modes of protection
may be obtained are largely ignored
• The assumption is that the inventor will consult a
professional patent attorney who will know whether
program products, with or without carrier, or data signals
are patentable in each regime
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European approach
Patentability in Europe is dictated by:
• European Patent Convention (EPC, EPC2000)
• European Patent Office (EPO) Guidelines for
Examination
• EPO Board of Appeals decisions (case law)
• National legislation and national case law,
generally harmonized with EPO law, except UK
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EPC overview (1)
EPC article 52:
in all fields of technology (EPC2000)
(1) European patents shall be granted for any inventions which are susceptible
of industrial application, which are new and which involve an inventive step.
(2) The following in particular shall not be regarded as inventions within the
meaning of paragraph 1:
– discoveries, scientific theories and mathematical methods;
– aesthetic creations;
– schemes, rules and methods for performing mental acts, playing games or
doing business, and programs for computers;
– presentations of information.
(3) The provisions of §2 shall exclude patentability ... only to the extent to which
a European patent application ... relates to such subject-matter ... as such.
(4) Methods for treatment of the human or animal body by surgery or therapy
and diagnostic methods ...
EPC overview (2)
EPC article 56 (inventive step, nonobviousness):
An invention [involves] an inventive step if, having regard to the state
of
the art, it is not obvious to a person skilled in the art.
EPC rule 29* (definition of protection by technical features):
The claims shall define the matter for which protection is sought in
terms of the technical features of the invention.
… claims shall contain:
– (a preamble) indicating … the subject-matter of the invention
and those technical features which are necessary for the
definition of the claimed subject-matter …
– a characterizing portion … stating the technical features which,
in combination with the (preamble), it is desired to protect
*rule 43 in EPC 2000
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EPC overview (3)
The EPC Articles and Rules define “invention” by a combination
of positive and negative restrictions
• Positive restrictions:
– there must be an invention
– the invention must be novel and involve an inventive step
– the invention must be industrially applicable
– the invention must be defined in technical terms
• Negative restrictions:
– the invention must not be, among other things, a method for
performing mental acts or doing business, or a program for
computer “as such”
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Example (1)
There is certain relationship among these restrictions; they are not
applied separately but in a certain juxtaposition
Consider this painting by René
Magritte:
A man looks into a mirror and sees
his own back
This painting surely involves “an
invention”
It may not be a technical invention,
but we will worry about that later
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Example (2)
There is certain relationship among these restrictions; they are not
applied separately but in a certain juxtaposition
The screen saver is not a “computer
program as such”
It can be defined in technical terms and
it solves technical problems (data
security, burn-in).
The screen saver can be used
(manufactured) in industry
By virtue of the painting the technical
screen saver is novel and inventive
Is this particular screen-saver
patentable?
Example (3)
It is not patentable because:
• The screen saver is conventional, apart from the
painting;
• The painting, which contains any novel/inventive
elements of the screen saver, does not contribute to the
technical features of the invention (its contribution is
solely aesthetic);
• Although the screen saver is not “an aesthetic creation
as such” all the technical features (the screen saver’s
functionality as regards data security and burn-in
prevention) are known from the prior art.
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Recall EPC article 52:
(1) inventions ... which are new and which involve an inventive step.
(2) The following (are not) inventions within the meaning of paragraph1:
– ... mathematical methods, aesthetic creations, schemes, rules and
methods for ... mental acts, playing games or doing business, programs for
computers and presentations of information.
“Inventions within the meaning of paragraph 1” means that the novelty
and inventive step must reside in feature(s) not excluded in Art. 52(2)
• If the inventive step resides in a novel business method and the
technical elements for implementing the business method are
conventional, such inventive activity is excluded from patentability
considerations
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• In addition to ignoring any contribution from nontechnical features, the EPO actually cites the inventor’s
own non-technical elements as “admitted prior art”
against the technical features
• The claimed technical invention must be separately
inventive over the business method, even if the business
method is the inventor’s own
• A consequence is that the disclosed business method,
when implemented by means of conventional (noninventive) technical means, cannot be a patentable
invention, and third parties are able to carry out the
business method by using different technical means from
the ones claimed by the applicant
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• EPO’s practice to cite the applicant’s own business
method against the applicant’s technical features has
several consequences:
– the applicant/attorney should isolate technical sub-problems and
seek to patent solutions to them
– only technical features should be disclosed
– business methods should not be disclosed in an EP application,
at least not in a form which suggests the claimed technical
features
– keeping the business method secret may violate the American
requirement to disclose the best mode to practice the invention
– if the business method has to be disclosed in an EP application,
it should be disclosed as an “advantage made possible by the
technical invention”
– it is almost impossible to draft a single application which is
optimal for the EPO and the USPTO
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• The EPO generally rejects computer-implemented
business methods by:
– excluding the business method from patentability
considerations
– citing the disclosed business method against the claimed
technical features (“a person skilled in programming, with
knowledge of the business method, would have arrived at
these technical elements without inventive activity”)
• Computer-implemented knowledge-management
systems are frequently rejected as “essentially
mental acts”
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Case law (1)
Some case law suggests that inventions in information
technology are considered technical by Boards of Appeal:
• T931/95, while upholding the rejection of an application directed to a
computerized pension scheme: [The disclosed invention] lies in the
field of economy, which cannot contribute to inventive step. The
regime of patentable subject-matter is only entered with
programming of a computer system for carrying out the invention.
• T27/97, while finding a cryptography method technical: A method in
the domain of electronic information processing and
telecommunication is not excluded from patentability (published only
in French)
• But citations of individual case law rarely affect EPO examiners.
They rely on the Guidelines whose broad language permits the
rejection of virtually any application directed to a computerimplemented invention
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Case law (2)
• In T769/92 (“Sohei”) the Board decided that the requirement for
technical character is satisfied if technical considerations are
required to carry out the invention; such technical considerations
must be reflected in the claimed subject matter (formulation taken
from the Guidelines)
• The Sohei invention concerned an electronic user interface
permitting simultaneous data entry to two different business
applications. The technical problem was that when the invention was
made (1986), two different business applications required two
computers or had to be executed in succession
• The Sohei invention was not claimed via the goal to be reached
(“simultaneous data entry to two different business applications”) but
via a specific interrelation of five files and five processing means
(each meaning a specific routine controlling execution of the
processor)
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US approach
Patentability in the USA is dictated by:
• Statute (Patent Law, §101)
• Case law
• USPTO (United States Patent & Trademark
Office) rules (Manual of Patent Examination
Practice, MPEP)
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US legislation overview
US legislation similarly imposes positive and negative restrictions:
• Patent Law §101 states positively what is considered patentable: “whoever
invents or discovers any new and useful process, machine, manufacture
(=“product”), or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefore ...”
• Case law excludes abstract ideas, laws of nature and physical phenomena;
the claimed invention must produce a useful, concrete and tangible result
• Useful: must be specific, substantial and credible and specifically recited in
the claim
• Concrete: must have a result that “can be substantially repeatable or the
process must substantially produce the same result again” (concrete is
antonym of unrepeatable or unpredictable)
• Tangible: must have some “real-world result” (=antonym of abstract)
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• The attributes “useful” and “concrete” are normally not problematic
in the context of computer-implemented inventions which provide
some improvements in a business method or knowledge
management
• “Tangibility” may be ensured by explicitly citing, in the claims, acts
which cause state transformations in a physical device (memory,
output device, etc.), such as “outputting” or “storing” acts
• Although business methods have been patented quite liberally, the
Office’s attitude towards them has changed recently. Examiners do
not put anything in writing, but in personal interviews they admit that
the policy of their art unit is to refuse most business-related
applications.
• The high refusal rate is ensured by reading the applicant’s claim
elements into virtually any piece of prior art
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Comparison of EPO and USPTO approaches
• Consider this fragment of a hypothetical claim:
– obtaining data
– processing the obtained data into knowledge...
• The EPO takes a pragmatic approach: do the data and knowledge
relate to a technical process? Does the inventive processing use
technical means to solve technical problems?
• The USPTO’s published approach is more formalistic: does the
invention, as specified in the claims, produce a useful and
repeatable result which causes state transition (however mundane)
in a physical device?
• But the USPTO’s unpublished practice makes prosecution of
applications unpredictable
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Content of the module
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IP for the creative industries
Patented computer-implemented inventions
Software
Biotechnological inventions
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Software copyright (1)
Essential method for protection of software:
• Without copyright there is no software industry
– as copying is easy and free, but development is very expensive
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Somewhat artificially selected as a protection method
– in the absence of more suitable or more specific protection method the
international community decided to treat software as any work of art or work of
literature (books, paintings etc.)
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Some software specific provisions do exist in Copyright Act
– such as an absolute right to make one back-up copy
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To achieve copyright protection software needs to be original (very generic
code does not receive protection)
Copyright protection is achieved automatically for the period of 70 years
from the death of the author (i.e. the coder)
– no registration process is required
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Software copyright (2)
Copyright holder has an exclusivity to govern:
• Production and copying
• Distribution and licensing
• For software practically also for modification
– since any modification requires making copies of the software
• Infringement entitles the holder to receive:
– reasonable compensation for the unauthorized use
• to be payable even if no negligence exists
– damages in addition to the said compensation (provided, however, that
negligence exists)
• Use of the software in contradiction with the license terms and
conditions constitutes both breach of contract and copyright violation
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Software copyright (3)
• Original author can only be an individual person
• Copyright to software is, however, automatically
transferred to employer provided, that
– it is created within an employment relationship and in connection
with the normal duties of the employee
• In the event the software is created outside the
employment relationship (i.e. by subcontractor, hired
resources etc.) the transfer of copyright must be based
on contract
• No ”works for hire” –doctrine in most of the EU countries
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Software copyright (4)
• The essence of the software copyright is that
– any use of software requires that copies are made of the software and is
therefore always subject to license from the copyright holder
• Copyright protects
– appearance of the artwork
– in software the code
• Copyright does not protect
– ideas or methods
– same idea can be exploited when coding a new software from beginning
• Ideas and methods should be protected by confidentiality obligations
and/or patents
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Software licensing
• Unless otherwise agreed:
– sale of the software copy does not mean sale of copyright
– sale of copyright does not mean that the recipient would receive
the right to modify the product
– copyright cannot be sold further
• These restrictions have to be taken into consideration
when negotiating license agreements
• Note! - License rights used in the industry differ greatly
between standard software and customized software
products
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Typical features of license agreements
• Limitations in the license scope
– term of license
• perpetual vs. limited term
– license covers only limited type and amount of users or entities
– scope limited to certain technical environment or operating
method
– license tied to maintenance being in force
• Open source
– non-commercial and provided free of charge, but aimed to
protect the continued free right to use – cannot be changed to
commercial product
– many different types of open source licenses exist – some even
extend their license to cover more than the original code (GPL)
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Different types of license agreements
• End User License Agreement (EULA)
– governs the use of the end user (i.e. the last link in the
distribution chain)
– usually perpetual for fixed fee
• Click Wrap / Shrink Wrap License
– EULA that is entered into by either clicking an icon when
installing the software (click wrap) or by opening the box (shrink
wrap).
• Distribution License Agreements
– VAR, OEM and ODM License Agreements
– Value Added Reseller, Original Equipment Manufacture, Original
Design Manufacture
– depending on the role in the distribution value chain
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Piracy (1)
• Copying or using the copyright protected software against the
express written approval (i.e. license) of the copyright holder is a
violation of copyright
• Piracy – systematical criminal violation of copyright by copying and
distribution without the consent of the copyright holder
• Intentional violation constitutes a criminal act
– penalty from fine up to 2 years of imprisonment
– obligation to pay damages and reasonable compensation
– prohibition to use, copy or distribute
• Piracy acts are performed non-commercially by using peer-to-peer
networks (i.e. sharing your data, music or software with others via
Internet) or commercially by organized crime
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Piracy (2)
Protection against piracy:
• DRM (Digital Rights Management)
– encoding the product or its distribution media against illegal copying
– license keys – use of the product requires periodically provided license
keys that are available only from the copyright holder
– dongles – physical attachment (similar to USB-stick) to the computer
authorizing the use
• Increasing enforcement
– illegalizing import and export of pirate products
– enforcement activities by authorities and other organizations (such as
Business Software Alliance) that seek and punish the users of pirate
copies
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