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Ip4inno 1 Content of the module IP for the creative industries Patented computer-implemented inventions Software Biotechnological inventions.

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Presentation on theme: "Ip4inno 1 Content of the module IP for the creative industries Patented computer-implemented inventions Software Biotechnological inventions."— Presentation transcript:

1 ip4inno 1 Content of the module IP for the creative industries Patented computer-implemented inventions Software Biotechnological inventions

2 ip4inno 2 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

3 ip4inno 3 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

4 EPC article 52: (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... in all fields of technology (EPC2000) EPC overview (1)

5 ip4inno 5 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 EPC overview (2)

6 ip4inno 6 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” EPC overview (3)

7 ip4inno 7 Example (1) 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 There is certain relationship among these restrictions; they are not applied separately but in a certain juxtaposition

8 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?

9 ip4inno 9 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.

10 ip4inno 10 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

11 ip4inno 11 In addition to ignoring any contribution from non- technical 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 (non- inventive) 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

12 ip4inno 12 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

13 ip4inno 13 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”

14 ip4inno 14 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 computer- implemented invention Case law (1)

15 ip4inno 15 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) Case law (2)

16 ip4inno 16 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)

17 ip4inno 17 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)

18 ip4inno 18 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

19 ip4inno 19 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

20 ip4inno 20 Content of the module IP for the creative industries Patented computer-implemented inventions Software Biotechnological inventions

21 ip4inno 21 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 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.) Some software specific provisions do exist in Copyright Act –such as an absolute right to make one back-up copy 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

22 ip4inno 22 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

23 ip4inno 23 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

24 ip4inno 24 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

25 ip4inno 25 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

26 ip4inno 26 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)

27 ip4inno 27 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

28 ip4inno 28 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

29 ip4inno 29 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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