Patent Protection
(part of Intellectual Property Protection
of Software II lecture held 27th October 2010)
MVV59K Software Law
2 Lecturer
Mgr. Jaromír Šavelka
Institute of Law and Technology
Faculty of Law
Masaryk University
Room no. s61 (office hours Tue 14:30 – 16:30)
Email: jaromir.savelka@law.muni.cz
Phone: +420 549 495 377
3 Overview of the Lecture
• Definition
• Legal Provisions
• US Case Law Development
• Current Situation in Europe
4
DEFINITION
Patent Protection
5 Definition
“A patent for an invention is the grant of a property right
to the inventor, issued by the Patent and Trademark Office.
It constitutes the right to exclude others from making,
using, offering for sale, or selling the invention.“
(US Patent and Trademark Office)
6
LEGAL PROVISIONS
Patent Protection
7 Legal Provisions
International
- Paris Convention for the Protection
of Industrial Property
Czech Republic
- Act no. 527/1990 Coll. on Inventions …
United States
- U. S. Patent Act (Title 35 USC)
8 Legal Provisions
Requirements for patentability
1) Invention
2) Novelty
3) Inventive step
4) Industrial application
9 Legal Provisions
Estabilishment of the Protection
1) Filing of the Application
2) Priority right emergence
3) Preliminary examination
4) Publication of the Application
5) Opened for comments and objections
6) Full examination of the Application
7) Registration of the Patent
10 Legal Provisions
Effects of the Protection
• Exclusive right to use the invention and
authorise others to use the invention.
• The extent of the protection shall be
determined by the terms of the patent
claims
11 Legal Provisions
Limitations of the Protection
• Exhaustion of rights
• Independent exploitation of the invention
before the emergence of the priority right
12 Legal Provisions
Patent as Object of Property
• Transfer of ownership (written contract)
• License (written contract)
(compulsory?)
13 Legal Provisions
Termination of the Protection
• In Czech Republic granted for 20 years
• Failure to pay administrative fees
• Surrender of trademark rights (proprietor)
• Revocation (official authority)
14
US CASE LAW DEVELOPMENT
Patent Protection
15 US Case Law Development
„Whoever invents or discovers any new and
useful process, machine, manufacture, or
composition of matter, or any new and useful
improvement thereof, may obtain a patent
therefor, subject to the conditions and
requirements of this title.“
(§ 101 Title 35 USC) HOWEVER …
16 US Case Law Development
Gottschalk v. Benson (1972)
An algorithm for
converting binarycoded
decimal
numbers to equivalent
pure binary numbers
on digital computers.
17 US Case Law Development
Gottschalk v. Benson (1972)
OUTCOME:
Process must be tied to a particular
machine OR must operate to change
materials to a different state or thing
… in order to be patentable.
18 US Case Law Development
Gottschalk v. Benson (1972)
OUTCOME:
So called …
MACHINE-OR-TRANSFORMATION TEST
… estabilished!
19 US Case Law Development
Diamond v. Diehr (1981)
Process for curing
synthetic rubber
which included
mathematical
formula.
20 US Case Law Development
Diamond v. Diehr (1981)
OUTCOME:
A process may be patentable despite the
fact it includes a mathematical formula.
21 US Case Law Development
In re Abele (1982)
Specific method
of image processing
applied to computerized
axial tomography (CAT)
scans.
22 US Case Law Development
In re Abele (1982)
OUTCOME:
Introduction of Freeman-Walter-Abele test.
1) algorithm recited in the claim?
2) invention itself no more than the alg.?
3) applied in any manner to physical
elements or process steps?
23 US Case Law Development
In re Alappat (1994) = Home assignment
Will be presented by …
Mr. Jakub Harašta
Mr. Lukáš Hrůša
Mr. Martin Kočí
Mr. Štěpán Stehlíček
24 US Case Law Development
Alpex Computer Corporation v. Nintendo
Company Ltd. (1996)
Alleged infringement
of patent related to
microprocessor-based
home video game
system.
25 US Case Law Development
Alpex Computer Corporation v. Nintendo
Company Ltd. (1996)
OUTCOME:
If a patent holder defined its claims as not
covering a certain system, no patent
infringment occurs if someone uses that
system, notwithstanding any functional
simularity.
26 US Case Law Development
Lockwood v. American Airlines, Inc. (1997)
Alleged infringement
of three patents related
to automated
interactive sales
terminals.
27 US Case Law Development
Lockwood v. American Airlines, Inc. (1997)
OUTCOME:
Concept of prior art has been clarified:
- Known or used by others before the date
of invention
- In public use more than one year before
the date of application
28 US Case Law Development
Fonar Corp. v. General Electric Co. (1997)
Appeal on the basis
of insufficient
disclosure of the
invention.
29 US Case Law Development
Fonar Corp. v. General Electric Co. (1997)
OUTCOME:
If software is a part of a best mode of
carrying out an invention, the description of
such a best mode is satisfied by a
disclosure of the functions of the Software.
30 US Case Law Development
AT&T Corp. v. Excel Communications, Inc.
(1999)
Alleged infringment
of a patent concerning
a process of indicating
certain information about
a telephone call recipient.
31 US Case Law Development
AT&T Corp. v. Excel Communications, Inc.
(1999)
OUTCOME:
A method of indicating a telephone call
recipient’s primary interexchange carrier
constitutes a patentable process.
32 US Case Law Development
Bilski v. Kappos (2010)
A method for
hedging risks in
commodities
trading.
33 US Case Law Development
Bilski v. Kappos (2010)
OUTCOME:
Business methods can be patented, even if
they do not pass the
machine-or-transformation test.
34
CURRENT SITUATION
IN EUROPE
Patent Protection
35 Current Situation in Europe
European Patent Convention (EPC 1973)
Art. 52 para 1
„European patents shall be granted for any
inventions which are susceptible of industrial
application, which are new and which involve
an inventive step.“
36 Current Situation in Europe
Art. 52 para 2
„The following in particular shall not be regarded
as inventions within the meaning of paragraph 1:
a) discoveries, scientific theories and mathematical
methods;
…
c) schemes, rules and methods for performing
mental acts, playing games or doing business, and
programs for computers; …
37 Current Situation in Europe
• VICOM (T 0208/84, 1986)
• Röntgeneinrichtung (T 0026/86, 1987)
• SOHEI (T 0769/92 ,1994)
• IBM (T 1173/97, 1998)
• Pension Benefit Systems Partnership
(T 0931/95, 2000)
• COMVIK GSM AB (T 0641/00, 2002)
• Hitachi, Ltd. (T 0258/03, 2004)
38 Current Situation in Europe
• The invention consisting of computer
program must create an additional
technical effect in course of its utilization
that goes beyond its usual interaction with
a computer !!!
• The case law of EPO showed the definition
as extremely wide (about 30.000 patents)
• Often rejected by national courts
39 Current Situation in Europe
Proposal for EU Directive on the patentability
of computer-implemented inventions
Resulted in battle
Between Parliament
and Council.
Eventually REJECTED!!!
40
CONCLUSIONS
Patent Protection
41 Conclusions
• It is possible to grant a patent for purely
software invention in US (softened
machine-or-transformation test)
• In EU there is a crisis of patent protection for
computer programs (additional technical
effect beyond usual interaction)
Thank you for your
attention!
Time for your questions …
(jaromir.savelka@law.muni.cz)