FITT Toolbox: Software Patents


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This document recalls the definition of patent and copyright and as far as computer programs are concerned and explains what elements can be protected by a patent or by a copyright. Concerning software patents, the practice of the French patent office, the European Patent Office, the United States Patent and Trademark Office and the Japanese Office are detailed. Several examples are mentioned to illustrate the different cases.

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FITT Toolbox: Software Patents

  1. 1. Software Patents FITT– Fostering Interregional Exchange in ICT Technology Transfer – www.FITT-for-Innovation.euExcept where otherwise noted, this work is licensed under a Creative Commons Attribution 3.0 License.
  2. 2. Introduction Diversity of IPRs Intellectual Property Rights (IPRs) are essential assets for valorisation and technology transfer activities. Many different IPRs exist, offering each a particular set of legal protection for different kind of assets:  Patents  Trade marks  Copyright  Designs (registered and unregistered)  Trade secrets Only patents and copyrights are reviewed in this document2 | May 2010 Software Patents
  3. 3. Introduction Some IP found in a mobile phone Trade marks:  Made by "Nokia”  Product "N95”  Software "Symbian", "Java” Patents:  Data-processing methods Designs (some of them registered):  Semiconductor circuits  Form of overall phone enclosure  Chemical compounds  Arrangement of buttons in this oval shape Copyrights:  Three-dimensional wave form of buttons  Software code  Instruction manual Trade secrets: ?  Ringtone3 | May 2010 Software Patents
  4. 4. IPRs general approach Any inventor, creator and/or right holder are rewarded with a (bounded) monopoly on the intangible creation they relate to.  Intellectual Property (IP) relates to the ownership of intangible assets There are several types of IPRs: Literary and artistic creations, protection logic Criteria = original creations Copyright Signalling & commercial Industrial-focused Patents Trademarks protection logic invention logic Criteria = technical nature, Criteria = type of novelty, industrial application good/service the brand relates to4 | May 2010 Software Patents
  5. 5. From IPRs to IP management General Approach Technical issue idea Technical Solution Code Development Brand Market Patent Copyright Trademark IPRs create a framework Patents, Trademarks & Copyrights do not protect the same thing. They are not bound by the same obligations in order to be granted, neither do they grant the same rights:  Registration is required (patent, trademark), or not (copyright)  Scope of protection is different  Duration and nature of monopolies are different An efficient IPR management strategy needs to play on such IPRs complementarities 5 | May 2010 Software Patents
  6. 6. From IPRs to IP management The case of software6 | May 2010 Software Patents
  7. 7. IPRs in ICT: From Copyrights to Patents  Software components PROTECTED by copyright  The program (architecture, object code + source code)  The specifications if there is an original document  An eventual prototype  Screens and interactivity functionalities if they are original  The user manual  Software components NOT PROTECTED by copyright  Functionalities and algorithms (patent rights)  The executable code  Programming languages  The name, logo (trademarks)7 | May 2010 Software Patents
  8. 8. IPRs in ICT: Patents on computer implemented inventions A patent is an IP monopoly that grants its owner:  the privilege of stopping others from making, using or selling the claimed invention  this privilege being:  temporary  valid on a given territory  on an invention related to a process, a product or a device  in compensation of the enrichment of the technological patrimony (published)  resulting from the publication of the invention8 | May 2010 Software Patents
  9. 9. IPRs in ICT: The European patent application The European patent application consists of : • Request for grant • Description of the invention – a summary of the prior art, a disclosure of the invention and what problem it is supposed to solve • Claims – determine the extent of protection conferred by a patent • Drawings (if any) referred to in the description or the claims – the description and drawings are used to interpret the claims • Abstract – around 150 words that can be used as a search tool for other patent applications9 | May 2010 Software Patents
  10. 10. IPRs in ICT: Software patents A patent (on software) grants the right holder:  Right to prevent third parties from commercially exploiting an invention without authorisation • Not a right to use – instead a patent protects an invention by giving the owner of the patent the right to stop anyone from making or using the invention without their consent  Rights conferred by a European patent are the same as the rights would be if conferred by a national patent in each contracting state in respect of which it is granted  Right to assign or transfer ownership of a patent and to conclude licensing contracts  Maximum term of patent protection is 20 years10 | May 2010 Software Patents
  11. 11. IPRs in ICT: Patentability criteria Under the European Patent Convention (EPC), patents are granted for: any inventions in all fields of technology provided that they are: new (does not form part of the state of the art) involve an inventive step (is not obvious to someone skilled in this technology field) susceptible of industrial application (useful in some way)11 | May 2010 Software Patents
  12. 12. IPRs in ICT: What cannot be patented ? (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 … as such12 | May 2010 Software Patents
  13. 13. IPRs in ICT: What cannot be patented ? (2) Why “as such”? A patent claim directed solely to an item listed in previous slide will not be considered an invention and therefore will not be patentable, but … This applies only if the patent claim relates to that subject-matter or activities directly ("as such”) A patent claim that includes a mix of patentable, technical, and excluded, non-technical, subject-matter can be regarded as an invention and may be patentable after all13 | May 2010 Software Patents
  14. 14. Software patents The case of programs for computers (1) Program for a computer "as such" is excluded from patentability, but… Not excluded from patentability if, when running on a computer, it causes a further "technical effect" going beyond the "normal" physical interaction between the program (software) and the computer (hardware) Programs for computers are therefore not automatically excluded from patentability14 | May 2010 Software Patents
  15. 15. Software patents The case of programs for computers (2) An invention will be considered patentable if :  It is related to a technical domain  It is a technical solution solving a technical problem  It manipulates technical data with the help of technical functionalities  The claims have technical characteristics15 | May 2010 Software Patents
  16. 16. Software patents The case of programs for computers (3) Examples Counterexamples Patentable inventions Non-patentable inventions Process and/or system for speech recognition Accounting software Process and/or device for charging control with power control Syntactic sorting software Process and/or device for cryptography Software for establishing Process and/or system for a financial transaction video compression16 | May 2010 Software Patents
  17. 17. Software patents The case of “Products computer programs”  Claims relating to “products computer programs” as computer programs stored on a data medium are tolerated (not considered as not patentable), but…  For this, the claims: Should be preceded by process claims Should be based on a technical process which is new and inventive, and which could be implemented by a computer program17 | May 2010 Software Patents
  18. 18. Software patents Software protected by a patent Software components Software components not protected by a patent protected by a patent Functionalities as such The program (architecture, object code + source code) The specifications if there is an The algorithms as such original document An eventual prototype, The device(s) and technical executable code system(s) Screens (unfair competition) The process (and its technical The user manual and utilisation) programming language18 | May 2010 Software Patents
  19. 19. Why?Rationale: The present document aims to recall on patentability criteria and describes the differences between patents and copyrights in the field of ICT  Copyright aims at protecting software as such  Patent can protect the functionalities of a software as long as they satisfy patentability criteria Both types of protection can/should be used for software IP management activities; However:  Patents offices in USA, Japan and Europe have different practices  Different protections have different costs19 | May 2010 Software Patents
  20. 20. Suggested ReadingLink to bibliography:“La brevetabilité des logiciels” - Aurelie Jung, Centre dEtudes Internationales de la Propriété Industrielle, UniversitéRobert Schuman de Strasbourg, 2006“Beware of your creations: software patents”, Eugenio Archontopoulos, European Patent Office,“Abstract Patent ans Software”, in: “Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators atRisk”, James Bessen and Michael Meurer, Princeton University Press, 2008“Patenting software in the European Union”, José Ramon Cardeno-Shaadi, Les Nouvelles, Licensing ExecutiveSociety International, September 2007“Patents for software: European law and practice”, presentation from European Patent Office,$file/patents_for_software_en.pdf“Autour de la brevetabilité du logiciel”, presentation of Emilie Rollet, Département Brevets, INPI on the conference Intech’Sophia2008,“Patent teaching kit; core module 2: How patents work”, presentation from European Patent Office,$file/patent_teaching_kit_en.pdf Those two last presentations have served to write the present one.Link to code book: exploitation, valuation, maturation, royalties, licensing, copyright, patent20 | May 2010 Software Patents