Industrial Property Rights - Report Example

Industrial Property Rights American In 1998 a Court of Appeals for the Federal Circuit ruled an appeal from a decision of a District Court, which had found a patent 5,193,056 invalid on the ground that the claimed subject matter was not patentable. The Court of Appeal reversed the District Court decision and concluded that business method matter were statutory subject matter. You can find this case law at caselaw.lp.findlaw.com/scripts/getcase.plcourt=fed&navby=case&no=961327. The conclusion of this case is the appealed decision is reversed and the case is remanded to the district court for further proceedings consistent with this opinion. The first software patent ever granted is probably a patent for a "computer having slow and quick access storage, when programmed to solve a linear programming problem by an iterative algorithm, the iterative algorithm being such that (...)" applied for in 1962 by British Petroleum Company . The patent relates to solving simultaneous linear equations. The USPTO has traditionally not considered software to be patentable because by statute patents can only be granted to "processes, machines, articles of manufacture, and compositions of matter". In particular patents cannot be granted to "scientific truths" or "mathematical expressions" of them. This means that most of the fundamental techniques of software engineering have never been patented. The USPTO maintained this position, that software was in effect a mathematical algorithm, and therefore not patentable into the 1980's. The position of the USPTO was challenged with a landmark 1981 Supreme Court Case, Diamond v. Diehr. The case involved a device that used computer software to ensure the correct timing when heating, or curing, rubber. Although the software was the integral part of the device, it also had other functions that related to real world manipulation. The court then ruled that as a device to mold rubber, it was a patentable object. The court essentially ruled that while algorithms themselves could not be patented, devices that utilized them could. This ruling wasn't as straightforward as many would have liked, forcing many electronic device makers into the courts to establish that their inventions were in fact patentable. Due to different treatment of federal patent rights in different parts of the country, in 1982 the U.S. Congress created a new court (the Federal Circuit) to hear patent cases. The new circuit rejected rulings from some parts of the country, and nationalized others. For example, the court made patents generally easier to uphold by presuming patents were valid unless proven invalid and weakening the defense of non-obviousness. This court allowed issues, such as patentability of software, to be treated uniformly throughout the US. Due to a few landmark cases in this court, by the early 1990s the patentability of software was well established, and in 1996 the USPTO issued Final Computer Related Examination Guidelines. See Software Patents under United States patent law. Also in 1998, the U.S. court of Appeals for the Federal Circuit, in the case of State Street Bank & Trust Co. v. Signature Financial Group, Inc. (1998), upheld as valid a patent directed to a computer-implemented business method designed to perform financial calculations and data processing for mutual fund investments. This case was important because prior to this decision, it was widely believed that business methods and systems were not patentable. The State Street case made clear that business methods were to be evaluated in the same manner as any other type of process. In 2000, the JPO followed suit and revised its Guidelines to allow for the patenting of computer-implemented business methods when there is clear "involvement of inventive step." Europe The European Patent Convention (EPC) serves as the basis for a harmonized system of patent protection for all members of the European Union. European patents have the same effect as patents granted by each nation under its own national patent laws. Article 52(1) of the EPC states: European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step." Article 52(2)(c) of the EPC specially excludes "methods for . Doing business, and programs for computers" from the definition of inventions eligible for patent protection. The leading case of the EPO Technical Board of Appeal involving software patentability is Computer-related Invention/VICOM (1986), which involved a program for digitally processing images. The Board held that the program was patentable since it was related to a technical process leading to a change in the physical images and was not merely a mathematical algorithm that manipulated numbers to calculate a purely numerical result. As to computer-implemented business methods, the key decision was Pension Benefit Systems (2001), where the application claimed a method for controlling a pension benefits program. The Technical Board of Appeal affirmed that the method was unpatentable, stating that "methods only involving economic concepts and practices of doing business are not (patentable) inventions." Another example from the European Software Patent Horror Gallery is the "Adobe Patent on Tabbed Palettes" patent, which "covers the idea of adding a third dimension to a menu system by arranging several sets of options behind each other, marked with tabs."5 The Horror Gallery commentary notes that this invention "is particularly found to be useful in image processing software of Adobe and Macromedia," but states that the invention has been found in other technology,6 and presumably argues that the invention is not novel or is therefore obvious. Comparing USA and European Union Software Patentability Both the U.S. Patent Office and the EPO have published guidelines which help evaluate whether an invention is statutory. In the U.S., the guidelines have been distilled down to an easy to follow flow diagram. In Europe, the European Patent Office maintains a "microsite" of current information about the law and practice at the EPO as it relates to computer-implemented inventions, which is a helpful source for the latest views on software patentability in Europe. In Europe software are being patent only if the said software is technical. However, the inventive step must be found in the technical solution(i.e. the "invention"), whether found in the hardware or software. Indeed, the software itself can have the necessary technical effect and thus be patentable if properly "packaged" a la Beauregard. In USA you can patent anything made by man. Although there are still guidelines being followed in USA for patentability of software it is still much cheaper and easier to patent in the USA. In the US, the rules of patentability of software, are clear. Although under the rules of the EPC, much software is patentable in Europe, politics muddy the water. Given the fact that the EPO has considered its software prior art databases inadequate, the EPO has, at least in the recent past, simply refused to perform searches on many software applications. Because the U.S. Patent Office has more experience with software patents, and therefore a bit more confident that its prior art databases are complete, the U.S. Patent Office has, to my knowledge, never refused to perform a software search. Consequently, one may fairly assert that the chances of obtaining valid patent protection for software are better where the search and examination is performed in the U.S. patent Office as opposed to the European Patent Office. Conclusion The patentability of software is well-settled in the U.S. . Much software (more than most think) is patentable in Europe, under the European Patent Convention. In the E.U., the political dust may not yet have settled on the issue of software patents. Consequently, where permitted under national law, and where the U.S. market is a significant part of the world market, globally-minded clients should consider filing software patent applications in the U.S. first. This is the best value for the client who wishes to incrementally invest in his intellectual property, assessing its value from time to time and adjusting his patent filing strategy accordingly, in order to minimize required investment per patent, and maximize potential returns. The United States is a first-to-invent country, one can file a patent application which is essentially identical with an earlier application filed by a competitor, within one year of the publication of the competitor's application, and, provided that the client can prove he was the first to invent, he can recover the rights to the patent from the competitor. Filling requirements for a detailed disclosure are more stringent in the U.S. than in other countries. Therefore, if the client plans to file internationally, it is best to prepare the patent application to meet the disclosure requirements of the most demanding country. Unity of invention requirements are less stringent in the U.S. than in Europe, enabling the possibility of one U.S. patent covering two or more inventions as defined under the European Standard of unity. The licensing value of a U.S. patent is therefore much greater than any other national patent. References: 1. Patenting software vs. Free Software, What should the European Union do, by Sandra R. Paulsson, Feb. 2005, http://www.ffii.org/-imaebe/eoecosci0502/SoftwarePatent.pdf 2. The US patent office http://www.uspto.gov/ 3. UK Patent Office: http://www.patent.gov.uk/about/consultation/annexes.htm Read More