Software Patents
Matěj Myška
What is patent?
• Designed for industrial protection
• Duty to disclose => Exclusive Right
• Idea => Useful Invention => Protected by
Patent
• Patent claims => define the scope of
protection
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
Traditional Invetnion
A chopping machine for cutting and splitting a
timber, said chopping machine comprising a
crosscutting device for cutting the timber, a feeder
for feeding the timber in its longitudinal direction to
the crosscutting device, a splitting apparatus
operated by a splitting cylinder for splitting a cut
block of timber, said feeder comprising two
elongated supporting surfaces forming a
substantially horizontal trough open in the upward
direction, into which the timber to be treated can be
placed…
According to: EP1118438
Used as an example in: R M Ballardini, "The Software Patent Thicket: A Matter Of Disclosure",
(2009) 6:2 SCRIPTed 207, http://www.law.ed.ac.uk/ahrc/script-ed/vol6-2/ballardini.asp
Chopping machine for cutting and
splitting timber
„Software Patent“
1. A method of digitally processing images in the form of a twodimensional
data array having elements arranged in rows and columns
in which an operator matrix of a size substantially smaller than the size
of the data array is convolved with the data array...
8. Apparatus for carrying out the method in Claim 1 including data
input means for receiving said data array, and said data array to
generate an operator matrix for scanning said data array to generate
the required convolution of the operator matrix and the data array,
characterised in that there are provided feedback means for
transferring the output of the mask means to the data input means,
and control means for causing the scanning and transferring of the
output of the mask means to the data input means to be repeated a
predetermined number of times.
According to: EP79300903
Used as an example in: R M Ballardini, "The Software Patent Thicket: A Matter Of Disclosure", (2009) 6:2
SCRIPTed 207, http://www.law.ed.ac.uk/ahrc/script-ed/vol6-2/ballardini.asp
The Problem with Software
• Software
– Source code
– Object code
– + supplementary material
Software X Computer Program
• What everything can be implemented by
software?
– Law of nature, mathematical method
X
– Technical solution
Set of algorithms
SP WORLDWIDE
Paris Convention
Paris Convention
for the Protection of Industrial Property of
March 20, 1883, as revised at Brussels on
December 14, 1900, at Washington on
June 2, 1911, at The Hague on
November 6, 1925, at London on June 2, 1934,
at Lisbon on October 31, 1958, and at Stockholm
on July 14, 1967, and as amended on
September 28, 1979
PCT
Patent Cooperation Treaty
Done at Washington on June 19, 1970, amended
on September 28, 1979, modified on February 3,
1984, and on October 3, 2001 (as in force from
April 1, 2002)
International Patent Classification
• http://web2.wipo.int/ipcpub/#refresh=page
Patent research – relevant Section
G
Example: Google PageRank
G06F 1730
TRIPS
• Art. 27.1 TRIPS Agreement: “patents shall be
available for any inventions, whether products
or processes, in all fields of technology”.
• SP basically OK
USA
To promote the Progress of Science and useful
Arts, by securing for limited Times to Authors
and Inventors the exclusive Right to their
respective Writings and Discoveries.
Article 1, section 8 United States Constitution:
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
Patentability
Statutory
subject
matter
• NOT Laws of nature
• NOT Natural phenomena
• NOT Abstract Ideas
Utility • Usefulness – real world use
Novelty • § 102 – not known before
Non-
obviousness
• § 103 - obvious to a person having
ordinary skill in the art at the time the
invention was made
Disclosure
• Business methods patentable
• Software as such patentable
• NO TECHNICAL EFFECT needed for ComputerRelated
Inventions
• Examination Guidelines for Computer-Related
Inventions
Jinseok Park: Has Patentable Subject Matter Been Expanded? -A Comparative Study on Software Patent Practices in the European Patent Office,
the United States Patent and Trademark Office and the Japanese Patent Office. I. J. Law and Information Technology 13(3): 336-377 (2005), p.
363
Jinseok Park: Has Patentable Subject Matter Been Expanded? -A Comparative Study on Software
Patent Practices in the European Patent Office, the United States Patent and Trademark Office
and the Japanese Patent Office. I. J. Law and Information Technology 13(3): 336-377 (2005)
Jinseok Park: Has Patentable Subject Matter Been Expanded? -A Comparative Study on Software
Patent Practices in the European Patent Office, the United States Patent and Trademark Office
and the Japanese Patent Office. I. J. Law and Information Technology 13(3): 336-377 (2005)
EPO
Convention on the Grant of European Patents
(European Patent Convention) of 5 October
1973 as revised by the Act revising Article 63
EPC of 17 December 1991 and the Act revising
the EPC of 29 November 2000
Invention
Scope of protection
• claims to a physical entity (product,
apparatus)
• claims to an activity (process, use)
Novelty – Art 54
(1) An invention shall be considered to be new if
it does not form part of the state of the art.
(2) The state of the art shall be held to comprise
everything made available to the public by
means of a written or oral description, by use, or
in any other way, before the date of filing of the
European patent application.
Inventive step – Art 56
An invention shall be considered as involving an
inventive step if, having regard to the state of
the art, it is not obvious to a person skilled in
the art.
Industrial application – Art 57
An invention shall be considered as susceptible
of industrial application if it can be made or
used in any kind of industry, including
agriculture.
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.
SP = Computer-Implemented
Inventions
Patented, if:
• They have technical character and solve a
technical problem.
• They are new.
• They involve an inventive technical
contribution to the prior art.
Part of the „Inventive step“ test.
Jinseok Park: Has Patentable Subject Matter Been Expanded? -A Comparative Study on Software
Patent Practices in the European Patent Office, the United States Patent and Trademark Office
and the Japanese Patent Office. I. J. Law and Information Technology 13(3): 336-377 (2005)
Jinseok Park: Has Patentable Subject Matter Been Expanded? -A Comparative Study on Software
Patent Practices in the European Patent Office, the United States Patent and Trademark Office
and the Japanese Patent Office. I. J. Law and Information Technology 13(3): 336-377 (2005)
The European „Software Patents“ Directive
• 2002 proposal COM(2002) 92 - "on the
patentability of computer-implemented
inventions"
• Computer program – patentable if providing a
“technical contribution” to the prior art
(interpreted by the EPO Board of Appeal to
mean a further technical effect that goes
beyond the normal physical interaction
between the program and the computer).
• 2005 – European Parliament voted against
To sum up…
• „Further technical effect“
– Not the „inevitable psychical effect – i.e. running
of the program (current changes)
– „what is achieved beyond this normal technical
effect“
• EP0771280 – „ABS“ patent
– METHOD AND SYSTEM FOR DETECTING THE
PROPER FUNCTIONING OF AN ABS CONTROL UNIT
UTILIZING DUAL PROGRAMMED
MICROPROCESSORS
„The Little Man test“
“The question to ask should be: is it (the artefact or
process) new and non-obvious merely because there is a
computer program? Or would it still be new and nonobvious
in principle even if the same decisions and
commands could somehow be taken and issued by a little
man at a control panel, operating under the same rules?
For if the answer to the latter question is 'Yes' it becomes
apparent that the computer program is merely a tool,
and the invention is not about computer programming at
all.”
CFPH LLC, Patent Applications by [2005] EWHC 1589 (Pat) (21 July 2005) URL:
http://www.bailii.org/ew/cases/EWHC/Patents/2005/1589.html
Mind the TRIPS
• EPC is not in compliance with TRIPS!
SP IN CZ
• Act 257/1990 Sb. Inventions and
Rationalisation Proposals, as follows from
amendments implemented by Act No.
519/1991 Coll., Act No. 116/2000 Coll. and Act
No. 207/2000 Coll.
SP in CZ (§ 3 para 2 CAP)
The following in particular shall not be regarded as
inventions:
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.
• Computer-Implemented Inventions
– Granted under same conditions as in EPO
Pro SP
Incentive
• SP help recoup the nvestment in
R & D activities
Flow of new
Ideas
• Disclosing of functioning in the
patent information (however no
need to disclose source code as in ©
Contra SP
Patent
thickets
• “A dense web of overlapping intellectual property rights
that a company must hack its way through in order to
actually commercialize new technology” Shapiro 2001
• Resources to invalidate „bad patents“?
Stalling
innovation
• 20 years (?)
• Insufficient evidence
EP0689133
A method for displaying on a computer screen multiple sets
of information needed on a recurring basis, comprising the
steps of: (1) Establishing an area on the computer screen in
which the multiple sets of information are to be displayed,
the established area having a maximum size which is
substantially less than the entire area of the screen. (2)
Providing within the established area a plurality of selection
indicators, one for each of the multiple sets of information.
(3) Selecting one of the multiple sets of information for
display within the established area by pointing to one of the
selection indicators within the established area, whereby the
selected set of information will be substituted within the
established area for the set of information previously being
displayed therein. A selected set of information may also be
moved out of the selected area by pointing to its selection
indicator and dragging it away.
Referrences
• C Shapiro, “Navigating the Patent Thicket:
Cross Licenses, Patent Pools, and Standard–
Setting” (2001) 1 Innovation Policy and the
Economy, at 118-150.