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IP STRATEGIES TO PROTECT YOUR
CLOUD TECHNOLOGY
Dr. Florian Michalek
European Patent Attorney
June 19, 2014
2
“Idea” Generation
Assessment of “Ideas”
Product Development
Product Testing
Product Marketing
Product Distribution
[ ]*
Product becomes public*
Innovation Process
BARDEHLE PAGENBERG
3
Innovation Process
Elements necessary for converting the idea into reality, how are you
going to market it?
- product for sale
- process for producing the product
- small improvement on product
- name of the product
- package of the product
- “special ingredient”
BARDEHLE PAGENBERG
Patent
Patent
Trademark
Design
Secret
Know-how
Utility Model
4
Inventor Public
Invention
Patent = Exclusive Right
Patents: Why?
BARDEHLE PAGENBERG
THE DEAL: 20 years protection for
disclosure of the invention
…to have an industrial and commercial advantage
 Maximise return on investment in R&D
 Increase market share
 Further sources of income
Via
 A marketable asset (convert ideas to reality: buy, sell, share, license)
 Protect own technology developed inhouse
 Strategic use: blocking competition or friendly licensing
 Technology transfer instrument
5BARDEHLE PAGENBERG
Patents: Why?
6
What is a patent?
-The description has to involve a “technical teaching” instructing the skilled
person how to solve a particular technical problem using particular technical
means. The technical teaching must be sufficiently disclose to allow
reproduction of the invention
Answer: A technical solution to a technical
problem
- the prior art defines the technical problem …
- the claim features (of the independent claims) define the
technical solution
BARDEHLE PAGENBERG
Patents: How?
7
Patents: How?
Must be
– New
– Inventive
– Susceptible of industrial application
– Not expressly excluded from patent protection (for example
mathematical methods, or programs for computers as such)
BARDEHLE PAGENBERG
8
Patents: For?
Patents may be obtained for any technology
- Pharmaceuticals
- Compositions
- Synthetic methods
- Polymers
- Medical devices
- …
- …
- Cloud technology?
BARDEHLE PAGENBERG
9
Cloud Technology: What is it?
Definition:
“a model of network computing where a program or
application runs on a connected server or servers rather than
on a local computing device such as a PC, tablet or
smartphone” (source: wikipedia)
“A network of remote servers hosted on the Internet and used
to store, manage, and process data in place of local servers or
personal computers” (source: Oxford Dictionary)
BARDEHLE PAGENBERG
10
Cloud Technology: What is it?
Cloud Technology involves
- Hardware/Infrastructure
- Computing Platform
- Software/Applications
- Results obtained by cloud computing
BARDEHLE PAGENBERG
Patentability?
Confidentiality?
11
Patents: Exclusions
Art. 52 EPC:
(1) European patents shall be granted for any inventions, in all fields of
technology, provided that they are new, involve an inventive step and are
susceptible of industrial application.
(2) The following in particular shall not be regarded as inventions within the
meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or
doing business, and programs for computers;
(d) presentations of information.
(3) Paragraph 2 shall exclude the patentability of the subject-matter or
activities referred to therein only to the extent to which a European patent
application or European patent relates to such subject-matter or activities as
such.
BARDEHLE PAGENBERG
12
Cloud Platform and Software
- Use of internet
- Use of software to process data, specific applications, data bases
- Performing mathematical methods
PATENTABILITY EXCLUSION?
BARDEHLE PAGENBERG
NO:
COMPUTER IMPLEMENTED INVENTION!
13
Computer Implemented Inventions (CII)
General:
Software as such is excluded from patentability
An invention having technical character that is or may be
implemented by a computer program is not excluded from
patentability.
A computer implemented invention is one which involves the
use of a computer, computer network or other programmable
apparatus, where one or more features are realised wholly or
partly by means of a computer program
BARDEHLE PAGENBERG
14
CII: Claims?
Protection possible for:
- Computer readable medium
- Computer system
- Computer program
- Computer program product, storing a computer program
- Methods (e.g. of operating an apparatus)
- Computer implemented methods
BARDEHLE PAGENBERG
15
CII - Example
BARDEHLE PAGENBERG
16
CII: Guidance?
BARDEHLE PAGENBERG
EPO EBA decision G 3/08
-The computer program has to show a further technical effect
going beyond those effects which inevitably occur when any
program is run, independent of the prior art (= need not be
new!)
-A claim in the area of computer programs can avoid exclusion
merely by explicitly mentioning the use of a computer or a
computer-readable storage medium
-All features of a claim are considered to determine whether
the claimed subject-matter has a technical character; then it is
determined which claimed features contribute to that technical
character (may include non-technical features!)
17
CII
Computer implemented inventions involve
- Combination of technical and non-technical features
- Non-technical features may even be the dominating part
- Patentable if the overall result provided by the combination is
technical
- To be decided on a case by case basis
BARDEHLE PAGENBERG
-But: Once decided that a CII may be patentable, it still has to
pass examination with regard to novelty and inventive step!
18
CII – Cloud Technology
Platform/Software:
Cloud Computing (Platform and Software solutions) may in
principle be patentable if at least one technical feature is
involved and the subject-matter has technical character
But more importantly:
Is it novel?
Is it inventive?
Are the technical and the non-technical parts sufficiently
described?
BARDEHLE PAGENBERG
19
CII
Example: EP 2 394 222 B1
METHOD FOR TRANSMITTING VIRTUALIZED
DATA IN CLOUD COMPUTING ENVIRONMENT
BARDEHLE PAGENBERG
20
Bioinformatics
-Methods and software tools for storing, retrieving, organising
and analysing biological data
-Combination of computer science, statistics, mathematics and
engineering to study biological data and processes
-Computing may be carried out in the cloud
BARDEHLE PAGENBERG
21
Bioinformatics: T 0784/06
EPO TBA decision T 0784/06
Invention directed to an automatic genotype determination
Method of determining the genotype at a locus within genetic material obtained
from a biological sample, comprising the steps
A. Reacting the material at the locus to produce a first reaction value indicative
of the presence of a given allele at the locus
B. Forming a data set including the first reaction value
C. Establishing a distribution set of probability distributions, including at least
one distribution, associating hypothetical reaction values with corresponding
probabilities for each genotype of interest at the locus
D. Applying the first reaction value to each pertinent probability distribution to
determine a measure of the conditional probability of each genotype of interest
at the locus
E. Determining the genotype based on the data obtained from step D.
BARDEHLE PAGENBERG
22
Bioinformatics: T 0784/06
Step A: technical
Steps B to E: mental activities based on the application of
mathematical methods
Hence, combination of technical and non-technical features
Decisive question:
The mental activities interact with the technical activity so as to yield a
tangible technical result?
Answer: No!
The application failed to supply a reasonably complete and sufficient
description of the software used for the data treatment
BARDEHLE PAGENBERG
23
Bioinformatics: T 2050/07
EPO TBA decision T 2050/07
Invention directed to DNA mixture analysis
A method of analysing a DNA sample that contains genetic material from at
least two individuals to determine a probability distribution of genotype
likelihood or weight in the sample, comprising the steps:
A. Amplifying the DNA sample (…)
B. Detecting signal peak amounts (…) to produce DNA length and
concentration estimates from the sample
C. Resolving the estimates into one or more component genotypes (…) and
calculating a probability distribution (…)
D. determining, using the probability distribution of the data, a probability
distribution of genotype likelihood or weight in the DNA sample.
BARDEHLE PAGENBERG
24
Bioinformatics: T 2050/07
Steps A and B: technical because they are performed using dedicated
laboratory equipment and devices
Distinguished from the prior art only by non-technical features.
Decisive Question:
Can the non-technical features make a technical contribution?
Answer: Yes!
The application showed how the distinguishing features should be
implemented and how they interact with the remaining steps in order
to provide a common technical result: a genotype estimate with an
improved confidence
BARDEHLE PAGENBERG
25
Cloud Technology: Confidentiality?
Users are interested in the results of cloud computing (specific
molecules, etc.)
Can they be sure that their work remains confidential?
Cloud provider will offer secure environment, but is the
internet secure?
Who else is listening?
NSA, Wikileaks, Hackers, …..
BARDEHLE PAGENBERG
26
Cloud Technology: Confidentiality?
First of all:
Take all necessary measures to secure your research
Ensure
-In-house confidentiality (secure intranet)
-Secure internet access
-Secure environment for external service providers
-Control all your disclosures (press releases,
brochures, publications, etc.)
BARDEHLE PAGENBERG
27
Disclosures on the internet – T 1553/06
EPO TBA decision T 1553/06
-Test case by Koninklijke Philips Electronics and DSM IP
Assets
-Situation: Two documents could be found before the filing
date on the internet after entering certain strings of keywords
in a public search engine; no security measurements applied
-Were the documents publicly available?
BARDEHLE PAGENBERG
28
Disclosures on the internet – T 1553/06
BARDEHLE PAGENBERG
Decision:
-That a document exists in internet goes not beyond a mere
theoretically accessability
-There must be a practical possibility of having access
-Requirements:
a)The document can be found with the help of a public search
engine by using one or more keywords which all related to the
essence of the content of that document
b)The document remained accessible for a period of time long
enough for a member of the public not bound to secrecy to
have direct and unambiguous access to the document
29
Emails – T 0002/09
EPO TBA decision T 0002/09
-Another test case by Koninklijke Philips Electronics and DSM
IP Assets
-Situation: Unencrypted email sent before the filing date
disclosing the solution to a specific problem
-Since emails might be intercepted, was it publicly available?
BARDEHLE PAGENBERG
30
Emails – T 0002/09
BARDEHLE PAGENBERG
Decision:
-Unlawful interception of an email is analogous to the breach
of a confidentiality agreement
-Lawful interception of an email by an internet service provider
is covered by law of confidence and prohibits their disclosure
-A specific instance of divulgation of the email has to be proven
31
Cloud Technology: Summary
Cloud Technology is patentable if the claimed subject-matter
has technical character, is new, and inventive
Ensure that all aspects of the invention are sufficiently
disclosed and describe interactions between the technical and
non-technical features
Confidentiality has to be ensured from both the user and the
cloud service provider, but the user has ultimate responsibility
to make sure that his research remains confidential
Data exchange between user and cloud service provider should
be covered by the law of confidentiality
BARDEHLE PAGENBERG
32
- As quick as possible (secure first filing date)
- As late as necessary (obtain enough details from a real working prototype to
ensure complete technical teaching)
- Sign non-disclosure agreement with third parties (clients, service
providers) at least for limited period to maintain confidentiality
Notes
BARDEHLE PAGENBERG
- If you suspect a confidentiality breach be fast to file a patent application
within six months after such a confidentiality breach
33
“Idea” Generation
Assessment of “Ideas”
Product Development
Product Testing
Product Marketing
Product Distribution
[ ]*
Product becomes public
GET YOUR IP EXPERT INVOLVED AS SOON AS POSSIBLE
*
Innovation Process
BARDEHLE PAGENBERG

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IP strategies to protect your cloud technology-Florian Michalek, Bardehele Pagenberg

  • 1. IP STRATEGIES TO PROTECT YOUR CLOUD TECHNOLOGY Dr. Florian Michalek European Patent Attorney June 19, 2014
  • 2. 2 “Idea” Generation Assessment of “Ideas” Product Development Product Testing Product Marketing Product Distribution [ ]* Product becomes public* Innovation Process BARDEHLE PAGENBERG
  • 3. 3 Innovation Process Elements necessary for converting the idea into reality, how are you going to market it? - product for sale - process for producing the product - small improvement on product - name of the product - package of the product - “special ingredient” BARDEHLE PAGENBERG Patent Patent Trademark Design Secret Know-how Utility Model
  • 4. 4 Inventor Public Invention Patent = Exclusive Right Patents: Why? BARDEHLE PAGENBERG THE DEAL: 20 years protection for disclosure of the invention
  • 5. …to have an industrial and commercial advantage  Maximise return on investment in R&D  Increase market share  Further sources of income Via  A marketable asset (convert ideas to reality: buy, sell, share, license)  Protect own technology developed inhouse  Strategic use: blocking competition or friendly licensing  Technology transfer instrument 5BARDEHLE PAGENBERG Patents: Why?
  • 6. 6 What is a patent? -The description has to involve a “technical teaching” instructing the skilled person how to solve a particular technical problem using particular technical means. The technical teaching must be sufficiently disclose to allow reproduction of the invention Answer: A technical solution to a technical problem - the prior art defines the technical problem … - the claim features (of the independent claims) define the technical solution BARDEHLE PAGENBERG Patents: How?
  • 7. 7 Patents: How? Must be – New – Inventive – Susceptible of industrial application – Not expressly excluded from patent protection (for example mathematical methods, or programs for computers as such) BARDEHLE PAGENBERG
  • 8. 8 Patents: For? Patents may be obtained for any technology - Pharmaceuticals - Compositions - Synthetic methods - Polymers - Medical devices - … - … - Cloud technology? BARDEHLE PAGENBERG
  • 9. 9 Cloud Technology: What is it? Definition: “a model of network computing where a program or application runs on a connected server or servers rather than on a local computing device such as a PC, tablet or smartphone” (source: wikipedia) “A network of remote servers hosted on the Internet and used to store, manage, and process data in place of local servers or personal computers” (source: Oxford Dictionary) BARDEHLE PAGENBERG
  • 10. 10 Cloud Technology: What is it? Cloud Technology involves - Hardware/Infrastructure - Computing Platform - Software/Applications - Results obtained by cloud computing BARDEHLE PAGENBERG Patentability? Confidentiality?
  • 11. 11 Patents: Exclusions Art. 52 EPC: (1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. (2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information. (3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such. BARDEHLE PAGENBERG
  • 12. 12 Cloud Platform and Software - Use of internet - Use of software to process data, specific applications, data bases - Performing mathematical methods PATENTABILITY EXCLUSION? BARDEHLE PAGENBERG NO: COMPUTER IMPLEMENTED INVENTION!
  • 13. 13 Computer Implemented Inventions (CII) General: Software as such is excluded from patentability An invention having technical character that is or may be implemented by a computer program is not excluded from patentability. A computer implemented invention is one which involves the use of a computer, computer network or other programmable apparatus, where one or more features are realised wholly or partly by means of a computer program BARDEHLE PAGENBERG
  • 14. 14 CII: Claims? Protection possible for: - Computer readable medium - Computer system - Computer program - Computer program product, storing a computer program - Methods (e.g. of operating an apparatus) - Computer implemented methods BARDEHLE PAGENBERG
  • 16. 16 CII: Guidance? BARDEHLE PAGENBERG EPO EBA decision G 3/08 -The computer program has to show a further technical effect going beyond those effects which inevitably occur when any program is run, independent of the prior art (= need not be new!) -A claim in the area of computer programs can avoid exclusion merely by explicitly mentioning the use of a computer or a computer-readable storage medium -All features of a claim are considered to determine whether the claimed subject-matter has a technical character; then it is determined which claimed features contribute to that technical character (may include non-technical features!)
  • 17. 17 CII Computer implemented inventions involve - Combination of technical and non-technical features - Non-technical features may even be the dominating part - Patentable if the overall result provided by the combination is technical - To be decided on a case by case basis BARDEHLE PAGENBERG -But: Once decided that a CII may be patentable, it still has to pass examination with regard to novelty and inventive step!
  • 18. 18 CII – Cloud Technology Platform/Software: Cloud Computing (Platform and Software solutions) may in principle be patentable if at least one technical feature is involved and the subject-matter has technical character But more importantly: Is it novel? Is it inventive? Are the technical and the non-technical parts sufficiently described? BARDEHLE PAGENBERG
  • 19. 19 CII Example: EP 2 394 222 B1 METHOD FOR TRANSMITTING VIRTUALIZED DATA IN CLOUD COMPUTING ENVIRONMENT BARDEHLE PAGENBERG
  • 20. 20 Bioinformatics -Methods and software tools for storing, retrieving, organising and analysing biological data -Combination of computer science, statistics, mathematics and engineering to study biological data and processes -Computing may be carried out in the cloud BARDEHLE PAGENBERG
  • 21. 21 Bioinformatics: T 0784/06 EPO TBA decision T 0784/06 Invention directed to an automatic genotype determination Method of determining the genotype at a locus within genetic material obtained from a biological sample, comprising the steps A. Reacting the material at the locus to produce a first reaction value indicative of the presence of a given allele at the locus B. Forming a data set including the first reaction value C. Establishing a distribution set of probability distributions, including at least one distribution, associating hypothetical reaction values with corresponding probabilities for each genotype of interest at the locus D. Applying the first reaction value to each pertinent probability distribution to determine a measure of the conditional probability of each genotype of interest at the locus E. Determining the genotype based on the data obtained from step D. BARDEHLE PAGENBERG
  • 22. 22 Bioinformatics: T 0784/06 Step A: technical Steps B to E: mental activities based on the application of mathematical methods Hence, combination of technical and non-technical features Decisive question: The mental activities interact with the technical activity so as to yield a tangible technical result? Answer: No! The application failed to supply a reasonably complete and sufficient description of the software used for the data treatment BARDEHLE PAGENBERG
  • 23. 23 Bioinformatics: T 2050/07 EPO TBA decision T 2050/07 Invention directed to DNA mixture analysis A method of analysing a DNA sample that contains genetic material from at least two individuals to determine a probability distribution of genotype likelihood or weight in the sample, comprising the steps: A. Amplifying the DNA sample (…) B. Detecting signal peak amounts (…) to produce DNA length and concentration estimates from the sample C. Resolving the estimates into one or more component genotypes (…) and calculating a probability distribution (…) D. determining, using the probability distribution of the data, a probability distribution of genotype likelihood or weight in the DNA sample. BARDEHLE PAGENBERG
  • 24. 24 Bioinformatics: T 2050/07 Steps A and B: technical because they are performed using dedicated laboratory equipment and devices Distinguished from the prior art only by non-technical features. Decisive Question: Can the non-technical features make a technical contribution? Answer: Yes! The application showed how the distinguishing features should be implemented and how they interact with the remaining steps in order to provide a common technical result: a genotype estimate with an improved confidence BARDEHLE PAGENBERG
  • 25. 25 Cloud Technology: Confidentiality? Users are interested in the results of cloud computing (specific molecules, etc.) Can they be sure that their work remains confidential? Cloud provider will offer secure environment, but is the internet secure? Who else is listening? NSA, Wikileaks, Hackers, ….. BARDEHLE PAGENBERG
  • 26. 26 Cloud Technology: Confidentiality? First of all: Take all necessary measures to secure your research Ensure -In-house confidentiality (secure intranet) -Secure internet access -Secure environment for external service providers -Control all your disclosures (press releases, brochures, publications, etc.) BARDEHLE PAGENBERG
  • 27. 27 Disclosures on the internet – T 1553/06 EPO TBA decision T 1553/06 -Test case by Koninklijke Philips Electronics and DSM IP Assets -Situation: Two documents could be found before the filing date on the internet after entering certain strings of keywords in a public search engine; no security measurements applied -Were the documents publicly available? BARDEHLE PAGENBERG
  • 28. 28 Disclosures on the internet – T 1553/06 BARDEHLE PAGENBERG Decision: -That a document exists in internet goes not beyond a mere theoretically accessability -There must be a practical possibility of having access -Requirements: a)The document can be found with the help of a public search engine by using one or more keywords which all related to the essence of the content of that document b)The document remained accessible for a period of time long enough for a member of the public not bound to secrecy to have direct and unambiguous access to the document
  • 29. 29 Emails – T 0002/09 EPO TBA decision T 0002/09 -Another test case by Koninklijke Philips Electronics and DSM IP Assets -Situation: Unencrypted email sent before the filing date disclosing the solution to a specific problem -Since emails might be intercepted, was it publicly available? BARDEHLE PAGENBERG
  • 30. 30 Emails – T 0002/09 BARDEHLE PAGENBERG Decision: -Unlawful interception of an email is analogous to the breach of a confidentiality agreement -Lawful interception of an email by an internet service provider is covered by law of confidence and prohibits their disclosure -A specific instance of divulgation of the email has to be proven
  • 31. 31 Cloud Technology: Summary Cloud Technology is patentable if the claimed subject-matter has technical character, is new, and inventive Ensure that all aspects of the invention are sufficiently disclosed and describe interactions between the technical and non-technical features Confidentiality has to be ensured from both the user and the cloud service provider, but the user has ultimate responsibility to make sure that his research remains confidential Data exchange between user and cloud service provider should be covered by the law of confidentiality BARDEHLE PAGENBERG
  • 32. 32 - As quick as possible (secure first filing date) - As late as necessary (obtain enough details from a real working prototype to ensure complete technical teaching) - Sign non-disclosure agreement with third parties (clients, service providers) at least for limited period to maintain confidentiality Notes BARDEHLE PAGENBERG - If you suspect a confidentiality breach be fast to file a patent application within six months after such a confidentiality breach
  • 33. 33 “Idea” Generation Assessment of “Ideas” Product Development Product Testing Product Marketing Product Distribution [ ]* Product becomes public GET YOUR IP EXPERT INVOLVED AS SOON AS POSSIBLE * Innovation Process BARDEHLE PAGENBERG