patents – Page 2 – Riyadh Al-Balushi

Software Patents (Photo Credits: Leonard Low)

A patent is a powerful tool that grants monopoly over an invention you make. The scope of its protection differs from copyright. In the context of software, copyright will only protect literal copying of the code, but it will not protect against the recreation of the same program using original code – even if the new application has program or even identical functions to your program. A patent on the other hand grants protection for the application of the ideas of the program regardless of how that application happened, so even if your program was written using a new completely different code, if that program carries out a process or creates a product similar to what you have your patent application, then you would have the right to stop them from using that program or you can claim damages for their infringing use.

The problem with computer programs (and business methods as well) is that they are generally considered as subject matter which is unprotectable by patents. Each jurisdiction has a different reason behind this ban of software patents and also provides a way to go patent your software “around” the allowed subject matter.

In Europe, patents are granted by the European Patent Office which governs its patent grant procedure through the European Patent Convention 2000. Â According to Article 52(2) of the EPC computer “programs for comoputers” are not to be regarded as inventions as such. The keyword here is “as such”. The EPC has been interpreted by the EPO in a way that excludes only computer programs when they are claimed to be “the invention” itself as that would be a claim to an excluded subject matter “as such”.

EPO decisions were inconsistent and unclear as to their legal grounds for granting this protection and it suggests that a computer program will not be excluded if the program includes a ‘technical character’, but there is not definition as to what ‘technical character’ means. In mid 80s decision of Viacom (T-208/84), the EPO held that the invention in question made a “technical contribution to the known art” and was therefore patentable. This decision was followed by that of IBM (T-22/85) in which the patent application was refused on the ground that it the invention lacked a “technical character” as it did not “provide a technical contribution to the art”.

The principle shifted for a “contribution” of this vague “technical contribution” element to the need for the presence of this “technical character” element in the invention itself. In the decision of Hitachi (T/258/03) it was stated that “What matters having regard to the concept of invention within the meaning of Art.52(1) EPC is the presence of technical character which may be implied by the physical features of an entity or the nature of an activity, or may be conferred to a non-technical activity by the use of technical means”. No definition was given as to what “technical effect” meant, and instead the EPO admitted in PBS Partnership (T-931/95) that “the meaning of the term “technical” or
technical character” is not particularly clear.”

Although the EPO has granted many patents for computer programs, the grounds for doing so do not seem to be clear at all at the term “technical character” was never defined. However, the key to getting a European patent from the EPO for a computer program would be not to claim the invention as a computer program and instead attempt to claim it as invention for doing something using a computer program. Claims in the patent application must also be carefully drafted to make sure that they do not fall under any other exceptions under 52(2) for abstract ideas or business methods.

In the US, the Patent Law (Title 35 USC) does not include a statutory bar on computer programs or business methods, however, this exception was developed through case law as it was established that “laws of nature, physical phenomena and abstract ideas” are not patentable subject matter (Case:ï¿½Diamond v. Diehr (1981)). The application for many computer program patents failed on the grounds that there were mere abstract ideas as all they were constituted of mathematical formulas.

This position changed in the year 1998 where the court held in the case of State Street Bank v. Signature Financial Group (1998) that a business method will not not be considered an abstract idea if it produced “a useful, concrete and tangible result”. The same principle was then applied to many computer applications as, for example, the production of computer data that resembles a real life solution (e.g. stockmarket prices) produces a useful, concret, and tangible result. One of the most famous business method patents granted in the US is Amazon’s 1-click patent.

However, in the very recent case of Re Bilski (2008) the court rejected the principle of the mere need of “a useful, concrete and tangible result” of State Street as the ultimate saviour of business method patents stating that it was “inadequate”. The court held in this case the right to test to use was a “machine or transform” test which requires the business method to be attached to a specific machine for it to qualify as an invention OR for the business method to transform a particular article into a different state or thing.

Re Bilski is a very recent case and the exact impact of it on the scope of computer programs is still unknown, but it has surely reduced its scope significantly as no longer the fact that the program produces ‘a useful, concret and tangible result’ is sufficient for it to qualify as an invention, but it must be attached to a specific machine or must be a transformative process.

In Japan, the law requires an invention to be “a creation of technical ideas utilizing a law of nature”. This has meant for Japan that pure software patents will not qualify as they do not are not ‘technical’ in nature (even Software as a subject matter is explicity considered as patentable subject matter), however, the JPO Guidlines states that this requirement can be satisfied by simply “realising the program using hardware resources” – and that apparently provides the technical element needed for escaping the requirement. (Check JPG Guidelines for Computer Software Related Inventions – Warning PDF).

Software patents will not automatically succeed if they prove that they are not included in any of the exceptions found in various patent laws, each of these jurisdictions require a patent to be novel, non-obvious, and be capable of industrial application (or useful in the US).

(Photo credits: telethon)

Patents are monopoly rights for a certain period of time given by a state to those who create qualifying inventions in return of their disclosure to the public of the details of their inventions.Â

This means that if you make an invention which you would like to sell and at the same time make sure that nobody else copies this invention you made, you will have to apply for a patent. The patent will usually grant you a maximum of 20 years to stop others from copying your invention. After these 20 years your patent will become public domain and anyone will be able to manufacture it without paying you any royalties or licensing fees.Â

Patents grant a monopoly right only in the jurisdiction in which the patent was registered in. You will have to register in each country on its own if you wish to execrise your monopoly right in that country. This post will only talk about the patent system in Europe as the law differs from one jurisdiction to the other. I will talk about the US and Japan in later posts. (Oman’s law is very similar to American law, so I will talk about it in that post).

In the field of technology you can get a patent for a product, a manufacturing method, or a method to create a specific product. It is also possible to get a patent in certain circumates for a computer program.

There are currently two methods for getting a patent in Europe, the first is by going to each country on its own and registering for a national patent, the second is by going to the European Patent Office (EPO) and apply for a bundle of patents for all the member countries of the European Patent Convention. It is worth mentioning that this is NOT an EU intiative and it goes beyond the members of the EU. Getting your patent from the EPO is cheaper than going to all the European countries. An EPO patent is not a *super* European Patent, but a bundle of national patents from all the members. This means that once you patent is issued, if a national court decides that your patent is invalid for any reason then you patent will be invalid in that one country by itself and will not affect the validity of the patent in other places. This is pretty messed up, but because of the lack of a higher court of appeal to take care of European Patent, the industy will like to keep the current system as it is less risky than one which has a super European patent.

So what do you have to do to get a European patent from the EPO? Â You simply have to fill a patent application and submit it to the EPO. However, for your patent to be granted, your creation must satisfy the requirements of the European Patent Convention (EPC), namely:

It must be an invention.
It must be novel.
It must have required an inventive stepÂ to make.
It must be industrially applicable.

We will go through these one by one:

Your creation must be an invention:Â The EPC does not define an invention but says that a patent may be granted for any invention in all fields of technology. However, explicity exludes inventions such as absolute theories, mathematical methods, aesthetic creations, mental acts, and mere presentation of information. The EPC also excludes inventions that contravene the public order, methods for treating the humn or animal body (methods – not products), and plan or animal varieties.

The requirement for an invention is usually not problematic, except for the fact that one of the exceptions under Art 52(2) is computer programs. The stance of the law in Europe regarding this is not clear, but I personally understand it as follows, if an invention is a pure computer application that has no novel tangible aspect then it will not be patented, however, if a computer program has some tangible aspect that extends beyound the code, then it will be patented. For example, a word processing application does not create by itself have a tangible aspect, but a program that affects the brightness of the screen depending on the time of the day has that tangible aspect. DO NOT CITE ME ON THIS, THIS IS MY PERSONAL OPINION AND I CANNOT BE BOTHERED TO DIG UP THE CASES/DECISIONS THAT SUPPORT MY OPINION AT THIS MOMENT.

The second requirement for the patent is to be novel. This is a quantitative absolute test that requires the patent to be a new. Art 54 of the EPC says that an invention is considered new if it does not form part of the state of the art. Â This simply means that your invention is not like anything we have seen before the date the priority date (first filing date). This is an important because it requires the inventor NOT to disclose the functional details of his invention to the public before he files his patent application, if the information is already in the public, then the patent application will fail.

The novel will not be satisfied if a single disclosureÂ in the relevant industry fieldÂ (the fact that people from an irrelvent industyr know about it does not invalidate it) has a clear and unmistakable disclosureÂ (the fact that it had to be *figured* out does not invalidate it) his made available Â (it will be invalidated by making it available, no need to actually be seen or read) to a skilled a person (if the only person who heard or saw it did not understand what you were talking about then that will not invalidate it).Â

The EPC provides an exception when the information was disclosed through an act of breach of confidence, or if the information was disclosed in an official international exhibition, if any of these two happen, the inveotor has six months from that date to make his application for that action not to invalidate his patent.

The requirement for an inventive step: This is a qualitative test. I think of it as the “It must be good enough to be protected” test. The patent will only be granted for inventiosn which are not obvious to a person skilled in the specific industry. If the invention is new, but it was an obvious progression from existing technology then it will not be protected.

Deciding whether an invention involved an inventive step requires the analysis of this step at the priority date, this is problematic because the patent examiner usaully looks at a patent months or even years after the patent was actually filed. So he must disregard all technological advancements that took place throughout that time and decide where there was an inventive step at the priority date. It is usually very easy to say in hindsight that any invention was obvious, so the EPO attempts to use a test called the ‘Problem and Solution Test”, which tries to envision the problem the invention tries to solve and see if this solution has an inventive step.

The problem and solution test consists of the following:

Â Indetifying the closest prior art.
Determining the objective technical problem (the technical problem which the invention attempts to solve).
examining whether or not the claimed solution to the problem is obvious for a skilled person in view of the state of the art.

An examiner will also look at secondary considerations IF he is not sure about the answer to the question 3 of the problem and solution test. These secondary considerations include a ‘long felt need’, ‘commercial success’, and ‘unexpected technical effect’. Secondary considerations will not rescue an invention that is obvious, but will be useful in close cases and those in doubt.

The invention must beÂ industrially applicable: This is a requirement that is never unsatisfied because industry is defined as any industryÂ (including agriculture – which is apparently not considered as an industry in France). But anyway, the requirement will only fail for inventions which are impossible to make.