Desing protection related to
software
And a wee bit of software patenting…
“DESIGN” PROTECTION FOR
SOFTWARE
US
UTILITY PATENT
X
DESIGN PATENT
Utility patent
• “Standard” – how thigns work
“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.”
Section 101 of title 35, United States Code
One fine utility patent & task for you…
Patent claim:
A non-transitory computer-readable recording medium having a
computer program recorded thereon that causes the computer to
perform further operations comprising: determining when the first
image of the cursor is positioned in the user interface over an
object that is associated with an application in a busy state;
controlling the display device to switch the display of the first image
of the cursor to a display of a third image of the cursor in the user
interface, upon determining that the first image of the cursor is
positioned over the user interface object associated with the
application in the busy state, the third image of the cursor
comprising a second hybrid cursor having a pointer arrow and a
second variable graphic replacing the tail comprised in the first
image of the cursor; and controlling the display device to, while the
cursor is positioned over the user interface object associated with
the application in the busy state, display the second variable
graphic of the third image of the cursor as a representation of the
busy state of the application in the busy state.
Are you able to express this
patent claim visually?
{As the descriptive drawing
is always a part of the patent
application}
United States Patent No. 8,230,366
The Law
• “Whoever invents any new, original and
ornamental design for an article of
manufacture may obtain a patent therefor,
subject to the conditions and requirements of
this title.”
35 USC § 172
• Patents for designs shall be granted for the
term of fourteen years from the date of grant.
35 USC § 173
The Instrument
• A design consists of the visual ornamental
characteristics embodied in, or applied to, an
article of manufacture.
• Drawing disclosure – most important
• Single claim:
“The ornamental design for (the article which
embodies the design or to which it is applied)
as shown.”
An example
• “The ornamental design for a display screen or
portion thereof with animated-graphical user
interface, as shown and described.”
• DESCRIPTION
• Display screen or portion thereof with
animated graphical user interface.
Let your fantasy run wild
again:
Are you able to express this
patent claim visually?
{As the descriptive drawing
is always a part of the patent
application}
US Design Patent 670,713
Things are tough all over cupcake…
The “Google Search Results” Design Patent
D533,561
The Apple v Samsung Patent Wars
• The Grand Finale – August 2012
• $1.05 billion in damages ($2.05 claimed
initially) awarded to Apple
• Jurors were deliberating for 21 hours, 37
minutes (!)
• Aftermath > October ban on Galaxy Tab not
lawful (no infringement)
• 3 utility patents + 4 design patents involved
1. Build three working groups
2. Familiarize yourselves with the
presented granted patents
3. Try to explain the others what is
your patent about in simple
English
{demonstration on smartphone is welcome}
The guess what game…1
A computer-implemented method, for use in
conjunction with a portable electronic device with a
touch screen display, comprises displaying at least a
portion of a structured electronic document on the
touch screen display, wherein the structured
electronic document comprises a plurality of boxes
of content, and detecting a first gesture at a
location on the displayed portion of the structured
electronic document. A first box in the plurality of
boxes at the location of the first gesture is
determined. The first box on the touch screen
display is enlarged and substantially centered.
The guess what game…2
At least certain embodiments of the present
disclosure include an environment with user
interface software interacting with a software
application. A method for operating through an
application programming interface (API) in this
environment includes transferring a set bounce call.
The method further includes setting at least one of
maximum and minimum bounce values. The set
bounce call causes a bounce of a scrolled region in
an opposite direction of a scroll based on a region
past an edge of the scrolled region being visible in a
display region at the end of the scroll.
The guess what game…3
In accordance with some embodiments, a computerimplemented
method for use in conjunction with a device
with a touch screen display is disclosed. In the method, a
movement of an object on or near the touch screen
display is detected. In response to detecting the
movement, an electronic document displayed on the
touch screen display is translated in a first direction. If an
edge of the electronic document is reached while
translating the electronic document in the first direction
while the object is still detected on or near the touch
screen display, an area beyond the edge of the document
is displayed. After the object is no longer detected on or
near the touch screen display, the document is translated
in a second direction until the area beyond the edge of
the document is no longer displayed.
1. tap-to-zoom
2. multi-touch
2. rubber band end
http://www.economist.com/node/21561912
Patents involved
Utility patents
• 7,864,163 – “Tap-to-Zoom”
• 7,844,915 – “Multi-touch”
• 7,469,381 – “Bounce-back”
Design patents
• D504,889 – iPad
• D593,087 – iPhone (white)
• D618,677 – iPhone (black)
• D604,305 – Icons & Style
Anything else similar?
No. 3,886,196 iOS phone app
No. 3,889,642 iOS messaging app
No. 3,886,200 iOS photos app
No. 3,889,685 iOS settings app
No. 3,886,169 iOS notes app
No. 3,86,197 iOS contacts
Available at:
http://webuser.hs-furtwangen.de/~heindl/ebte-
2011ws/Apple%20and%20Samsung%20%202.pdf
EU – REGISTERED COMMUNITY
TRADEMARK
The law
• Council Regulation (EC) No 6/2002 of 12 December
2001 on Community designs
• "design" means the appearance of the whole or a part
of a product resulting from the features of, in
particular, the lines, contours, colours, shape, texture
and/or materials of the product itself and/or its
ornamentation;
• "product" means any industrial or handicraft item,
including inter alia parts intended to be assembled into
a complex product, packaging, get-up, graphic symbols
and typographic typefaces, but excluding computer
programs;
Requirements for protection
A design shall be protected by a Community
design to the extent that it is new and has
individual character.
Unregistered design
• three years as from the date on which the
design was first made available to the public
within the Community.
Novelty (Art. 5)
1. A design shall be considered to be new if no
identical design has been made available to the
public:
(a) in the case of an unregistered Community
design, before the date on which the design for
which protection is claimed has first been made
available to the public;
(b) in the case of a registered Community design,
before the date of filing of the application for
registration of the design for which protection is
claimed, or, if priority is claimed, the date of
priority.
2. Designs shall be deemed to be identical if their
features differ only in immaterial details.
Individual character (Art. 6)
1. A design shall be considered to have individual
character if the overall impression it produces on the
informed user differs from the overall impression
produced on such a user by any design which has been
made available to the public:
(a) in the case of an unregistered Community design,
before the date on which the design for which protection
is claimed has first been made available to the public;
(b) in the case of a registered Community design, before
the date of filing the application for registration or, if a
priority is claimed, the date of priority.
2. In assessing individual character, the degree of
freedom of the designer in developing the design shall be
taken into consideration.
The Instrument
• SINGLE
– Application
– Language of filing
– Administrative centre a
– File to be managed
– Payment
• 5 years + 4x5 years
• novelty and individual character
• OHIM
http://www.patentlyo.com/.a/6a00d8341c588553ef01539246a26f970b-pi
Apple strikes in Europe
• The Tablet
• Design number: 000181607-0001
Versus
Seems familiar?
• Design number : 000264288-0006
• OHIM Database
Locarno Classification
• 14.04
• Design number: 000748694-0003
• What about Apple?
SOFTWARE PATENTS
AKA
COMPUTER IMPLEMENTED INVENTIONS
Software patent
• Can we file a patent application that claims for
protection of the sourcet code as such?
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;
(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.
Art 52 para 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.
European Patent Office
Deutsch: Europäisches Patentamt in München Fotograf: Oliver Kurmis
This file is licensed under the Creative Commons Attribution 2.0 Generic license.
Obtaining a patent
Patent
application
Patent
Examination
• Patentability
• Disclosure
Patent obtained
Patent Granted
Patentee
• Exclusive rights Third parties
• Access to information
Patentability
Patentable
subject
Novelty
Inventive
step
Industrial
applicability
• European patents and the grant proceudre, p. 24. [cited 27. 11. 2012] Available at:
http://documents.epo.org/projects/babylon/eponet.nsf/0/e6ce616afbb87afac125
773b004b93b5/$FILE/EPO_EuroPatente10_en.pdf
International Patent Classification
• http://web2.wipo.int/ipcpub/#refresh=page
Patent research – relevant Section
G06F, Q
(G06F17)
Example: Google PageRank
G06F 1730
Patentable Invention
• Inventions solving non-technical problems
relying on subject matter void of any technical
character are not eligible for a patent.
Art 52 para 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.
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;
(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.
Art 52 para 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.
"Computer-implemented invention" - CII
• an invention whose implementation involves
the use of a
– computer, computer network or other
programmable apparatus
– with features realised wholly or partly by means
of a computer program
As defined in: MACHEK, Jörg. Computer Implemented Inventions at the EPO
Available at: http://www.pks.rs/SADRZAJ/Files/Biro%20za%20saradnju%20sa%20EU/
Inovacije%20u%20kompjuterskoj%20tehnici%20u%20EPZ.pdf
• Computer Program – Algorithm
• Algorithm implementation
Patentable Invention
• Inventions solving non-technical problems
relying on subject matter void of any technical
character are not eligible for a patent.
What is „technical“
• Processing physical data
• Processing that affects the way a computer
operates
• Physical entity
Non-technical subject matter
• Pure abstract concepts (methods, trading,
insurance, system modelling, mathematical
methods)
Case law of the Boards of Appeal
• As such = purely abstract concepts without
any technical implementation not patentable
• T 258/03 / HITACHI
Case law of the Boards of Appeal
• Further technical effect
{no electricity flow as discussed last lecture}
• T 0935/97
• “For the purpose of interpreting the exclusion
from patentability of programs for computers
under Article 52(2) and (3) EPC, it is assumed
that programs for computers cannot be
considered as having a technical character for
the very reason that they are programs for
computers.”
T 0935/97
Technical effect
As defined in: MACHEK, Jörg. Computer Implemented Inventions at the EPO
Available at: http://www.pks.rs/SADRZAJ/Files/Biro%20za%20saradnju%20sa%20EU/
Inovacije%20u%20kompjuterskoj%20tehnici%20u%20EPZ.pdf
Example: Controlling a physical process
• Computer-implemented method
{as such not patentable}
• Compares parameters > generates data = series
of mathematical steps
{as such not patentable}
• Controls physical process [physical entity]
{clearly patentable}
What is examined at the EPO?
• Exclusion check
– Technical character
– IF YES THEN – checked in the inventive step
Industrial applicability
• Met prima facie
• Computers and their implementations can be
produce on a mass scale
Novelty
• Are the claimed features know from a single
prior art document? (published patent,
published patent application, journal, book,
etc.)
Inventive step
• Technical aspect
• Problem – Solution approach
– Establish closest prior art
– Determine differentiating features and their
technical effects
– Formulate an objective technical problem
– Decide whether the proposed solution is obvious
for the skilled person
Allowable claims
• Method claims
• Apparatus/system claims
• Storage medium/data carrier with computer
program claims
• Signal claims
• Data-structure claims
Example claim
Claim 1 „A method of operating a dataprocessing
stes: A, B, C…. {algorithms}
Corresponding apparatus claim:
“A data processing apparatus/system comprising
of means for carrying out the method of claim
1”
OR
“A data processing apparatus/system comprising
of means for carrying out step A, means for
carrying step B…
Example claim
Claim 1 „A method of operating a dataprocessing
stes: A, B, C…. {algorithms}
Corresponding apparatus claim:
“A data processing apparatus/system comprising
of means for carrying out the method of claim
1”
OR
“A data processing apparatus/system comprising
of means for carrying out step A, means for
carrying step B…
Summary
“Further technical effect”
Case Law – technical subject-matter
Technical character
Computer implemented invention
Code in patent application
Rule 49(10) 4.12 Computer programs
In the particular case of inventions in the computer field,
program listings in programming languages cannot be relied
on as the sole disclosure of the invention. The description, as
in other technical fields, should be written substantially in
normal language, possibly accompanied by flow diagrams or
other aids to understanding, so that the invention may be
understood by a person skilled in the art who is deemed not to
be a specialist in any specific programming language, but
does have general programming skills. Short excerpts from
programs written in commonly used programming languages
can be accepted if they serve to illustrate an embodiment of
the invention.
EPO Examination Guidelines, Part F - Chapter II 9
The difference
EPO practice
• acknowledges an inventive
step only when an invention
is a non-obvious technical
solution to a technical
problem
USPTO practice
• no such technical
contribution in order to
satisfy the requirement of
non-obviousness.