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Software Patents

FITT

(Fostering Interregional Exchange in ICT Technology Transfer)

2 | May 2010 Software Patents

IntroductionDiversity 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 copyright are reviewed in this

document


IntroductionSome IP found in a mobile phone

Trade marks: Made by "Nokia”

Product "N95”

Software "Symbian", "Java”

Patents: Data-processing methods

Semiconductor circuits

Chemical compounds

Copyrights: Software code

Instruction manual

Ringtone

Designs (some of them registered): Form of overall phone enclosure Arrangement of buttons in this oval shape Three-dimensional wave form of buttons

Trade secrets: ?


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

IPRs are plural

Copyright

Patents Trademarks

Literary and artistic creations protection logicCriteria = original creations

Literary and artistic creations protection logicCriteria = original creations

Signalling & commercial protection logicCriteria = type of good/service the brand relates to

Signalling & commercial protection logicCriteria = type of good/service the brand relates to

Industrial-focused inventions logicCriteria = technical nature, novelty, industrial application

Industrial-focused inventions logicCriteria = technical nature, novelty, industrial application


From IPRs to IP managementGeneral Approach

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 not 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

Technical issue idea Technical Solution Code Development Brand Market

PatentPatent CopyrightCopyright TrademarkTrademark


From IPRs to IP managementThe case of software


IPRs in ICT explained 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)


IPRs in ICT explained 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 invention


IPRs in ICT explained The European patent application

The European patent application consists of :


IPRs in ICT explained Software patents

A patent (on software) grants the right holder a

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 years


IPRs in ICT explained Patentability criteria

Under the European Patent Convention (EPC), patents are granted for:


IPRs in ICT explained What cannot be patented ? (1)

Discoveries, scientific theories and mathematical

methods Aesthetic creationsSchemes, rules and methods for performing mental acts,

playing games or doing business, and programs for

computers Presentations of information

… as such


IPRs in ICT explained 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 both patentable, technical, and excluded, non-technical, subject-matter can be regarded as an invention and may be patentable after all


Software patentsThe 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 patentability


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 characteristics


Software patents The case of programs for computers (3)


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 program


Software patents Software protected by a patent


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 costs


Suggested Reading

Link to bibliography:

“La brevetabilité des logiciels” - Aurelie Jung, Centre d'Etudes Internationales de la Propriété Industrielle, Université

Robert Schuman de Strasbourg, 2006“Beware of your creations: software patents”, Eugenio Archontopoulos, European Patent Office,[email protected]

“Abstract Patent ans Software”, in: “Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk”, James Bessen and Michael Meurer, Princeton University Press, 2008

“Patenting software in the European Union”, José Ramon Cardeno-Shaadi, Les Nouvelles, Licensing Executive Society International, September 2007

“Patents for software: European law and practice”, presentation from European Patent Office, http://documents.epo.org/projects/babylon/eponet.nsf/0/a0be115260b5ff71c125746d004c51a5/$file/

patents_for_software_en.pdf

“Autour de la brevetabilité du logiciel”, presentation of Emilie Rollet, Département Brevets, INPI on the conference Intech’Sophia

2008, http://www-sop.inria.fr/intech/protection_logiciel/slide_inpi.pdf

“Patent teaching kit; core module 2: How patents work”, presentation from European Patent Office, http://documents.epo.org/projects/babylon/eponet.nsf/0/e32d0d43d34f5681c125763c0054b3bb/$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, patent

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Www.FITT-for-Innovation.eu Software Patents FITT (Fostering Interregional Exchange in ICT Technology Transfer)