Patents and Utility Models Guriqbal Singh Jaiya

Patents and Utility Models

• Guriqbal Singh Jaiya

• Director, SMEs Division

• WIPO

IP Strategy

• Strategy

• Identify intellectual property assets.
• Develop plan of protection through four main forms of intellectual property: copyright, patent, trademark and trade secret.
• Exploit intellectual property through program of licensing and distribution that best preserves your IP position.
• Develop program of enforcement of intellectual property rights.
• Monitor changes in the law and participate in such changes.
• Watch for IP claims by key competitors, particularly in the patent area.

What is a Patent?

• A right to exclude others

• from: making, using, offering for

• sale, selling or importing the patented invention

• Not a right to use the invention

• Quid Pro Quo: sufficient disclosure

• For 20 years from date of filing

A Common Misperception...

• Patents inhibit free exchange of information.

A patent right is NOT ...

• a right to perform the invention or

• a monopoly in the marketplace.

What Can Be Patented

• What Can Be Patented

What Can Be Patented

What Can Be Patented

AT&T vs. Excel

Documenting Inventions

• Keep a notebook!

• Keep the pages sequential and clearly dated.

Documenting Inventions

• Write down your experiments! (especially the ones showing structure of the invention and how to make the invention) = “reduction to practice”

• Also write down significant ideas! (ditto!) = “conception”

Documenting Inventions

• U.S. is the only “first to invent” country

• Everyone else is “first to file”

• An “interference” is a proceeding to determine who is first to invent

• Evidence of invention date is usually from inventor’s notebook

Documenting Inventions

• Periodically show your notebook to someone else in the lab who is not an inventor (but who has an obligation of confidentiality and can understand what you are telling them).

• Have that witness sign and date the pages and indicate that they have “read and understood”the content.

Loss of Foreign Patent Rights

• For Foreign Patent, Application Must Be Filed Before:

• Any divulgation or public disclosure of invention.

• Use Non-Disclosure Agreements

• BEST POLICY: FILE IN U.S. FIRST, if possible, to preserve foreign filing rights.

• Applicant then has a one year period from U.S. application filing date to file in foreign countries.

Requirements for Patentability

• USEFUL

• NOVEL

• NON-OBVIOUSNESS

Parts of a U.S. Patent

• Specification – detailed description of invention and background

• Drawings – diagrams, flow charts, data (e.g. NMR, IR, etc.)

• Claims – define “metes and bounds” of invention

The Claims

• The Claims

• Similar to a fence around a piece of property
• Claim defines the metes and bounds of a patent holder’s property

Patent Claims

• The “Claims” of a patent define the scope of the invention. In the U.S., peripheral claiming is used. That is, the claim language defines the “edge” of the property right.

Infringement

Infringement

Infringement

• The typical remedies for infringement are:

• Damages ($$$)
• Injunction (stop use by infringer)

Patent Infringement

• Patents only cover those products or processes described by the claims

• An infringing product or process must have each element of the claim

• The accused product or process may have more than required by the claim

Patent Infringement Test

• Determine meaning of claim (claim construction)

• Apply meaning to the accused device

• Literal Infringement
• Doctrine of Equivalents Infringement

Working With Your Patent Attorney

• Inform attorney of what you know about the state of the art.

• What are the differences between your invention and the state of the art?

• What parts of the structure of the invention can be changed without affecting the way the invention is used?

Working With Your Patent Attorney

• What changes can be made in the materials and methods for making the invention without affecting the structure?

• What are the key structural features that produce the result of the invention?

Computer Program Patents

• Today computer programs are patentable as:

• A series of program process steps
• Can assert against the system user and indirectly against the system manufacturer
• A computer readable medium with the program process steps embedded in it
• Can assert against the manufacturer who provides infringing software on diskette, CD-ROM and the like
• Can assert against manufacturers who download infringing software
• Can assert against IC manufacturers who include infringing microcode in their chips

Business Method Patents

• Methods of doing business (“business methods”) are patentable so long as they:

• Produce a useful, tangible and concrete result
• Do not even need to be implemented in software

Is Software patentable in Europe (EPC)?

• Is Software patentable in Europe (EPC)?

• NO!

Are Software Inventions patentable in Europe (EPC)?

• Are Software Inventions patentable in Europe (EPC)?

• Yes, if…

Article 52(1) EPC

• Article 52(1) EPC

• European patents are granted for inventions that :
• are new
• involve an inventive step
• are susceptible of industrial application

Article 52(2) EPC

• Article 52(2) EPC

• “programs for computers” are not to be regarded as “inventions” (because they lack a technical character)

Article 52(3) EPC

• Article 52(3) EPC

• exceptions listed in Article 52(2) have to be interpreted narrowly

Interpretation of the Boards of Appeal

• Interpretation of the Boards of Appeal

• computer-implemented inventions can be patented if they involve an inventive technical contribution to the prior art

Computer-implemented Inventions

• Computer-implemented Inventions

• Any invention the performance of which involves the use of a computer, computer network or other programmable apparatus and having one or more features which are realised wholly or partly by means of one or several computer programs.

4 types of Computer-implemented Inventions

• 4 types of Computer-implemented Inventions

• Technical processes describable without computer/software features.
• Problem can not be solved completely without computer implementation.
• Solution exclusively in the area of software.
• Invention is a computer implementation of a non-technical process.

T 208/84 & T26/86

• T 208/84 & T26/86

• a software for controlling or carrying-out a technical process is patentable

T 1173/97 & T935/97

• T 1173/97 & T935/97

• computer programs stored on a data carrier are patentable if there is a “further technical effect” (i.e., one going beyond the normal physical effect)

T 258/03

• T 258/03

• a patent can not be granted if there is no technical contribution to the prior art

Non-patentable computer-implemented inventions

• Non-patentable computer-implemented inventions

• Internet retailing method
• fixed-odds betting system (EP 1 139 245)
• business methods

Patentable computer-implemented invention

• Patentable computer-implemented invention

• an invention enabling the detection of the proper functioning of an ABS control unit (EP 771 280)
• computer-controlled process for operating a robot arm

Patentable computer-implemented invention

• Patentable computer-implemented invention

• computer-controlled process for enhancing a graphic display
• computer-controlled process for controlling data storage between memories
• computer-controlled process for routing diverse calls through a telephone exchange

Are Business Methods patentable in Europe (EPC)?

• Are Business Methods patentable in Europe (EPC)?

• NO!

Article 52(2) EPC

• Article 52(2) EPC

• “rules and methods for … doing business” are not to be regarded as “inventions”

T 931/95

• T 931/95

• pure business methods as such are not patentable

Conclusion

• Conclusion

• Patent protection of software is possible in Europe, but it is necessary to identify a technical effect.
• Business methods are rejected by European Patent examiners.

Is Software patentable in the U.S.A.?

• Is Software patentable in the U.S.A.?

• YES!

Software:

• Software:

• Same as any other invention
• Must be new, useful, non-obvious
• Approximately 16’000 software-related U.S. patents each year

Acceptable software-related inventions:

• Acceptable software-related inventions:

• Computer aided design software
• Insurance and financial software systems
• Debuggers
• Operating systems
• E-commerce solutions
• Compilers
• Business methods
• etc.

Non-acceptable inventions:

• Non-acceptable inventions:

• Mathematical laws (e.g. Fourrier transform)
• Laws of nature
• Processes based on these laws and implemented by computer programs are patentable, if new, useful and non-obvious.

Important for any patent application in the U.S.A.

• Important for any patent application in the U.S.A.

• Describe the best mode
• Cite relevant prior art, including competing solutions

Important in particular for software patent applications in the U.S.A.

• Important in particular for software patent applications in the U.S.A.

• Use flowcharts
• File early in the development process or submit source code (duty of disclosure)

Trends of U.S. Companies

• Trends of U.S. Companies

• Aggressive patenting of software development
• Litigation increase (more than 2’500 lawsuits each year)
• Huge damages (up to several millions dollars)
• Negotiations (97% settle prior to trial)

Are Business Methods patentable in the U.S.A.?

• Are Business Methods patentable in the U.S.A.?

• Yes, but…

Business method patents:

• Business method patents:

• Highly scrutinized by the U.S. examiners
• Long delays
• Small percentage of U.S. patents

Conclusion

• Conclusion

• File
• File early
• Disclose everything that you know
• Be ready to negotiate

Conclusion

• Conclusion

• Software patents in Europe: Yes, if…
• Business method patents in Europe: NO!
• Software patents in the U.S.A.: YES!
• Busin. meth. patents in the U.S.A.: Yes, but…

International Protection

• Need to file country-by-country.

• Treaties facilitate international filings:

• PCT Filings
• European Patent Office

• Differences in protection:

• Priority based on first to file.
• Term of patent protection may vary.
• Foreign countries may grant more limited protection to software patents.
• Foreign countries may not recognize business method patents.

Patent Protection Program

• Not common for smaller developers, but can be very valuable in strengthening position.

• Early identification and filing for protection to avoid loss of rights.

• Institute invention disclosure program and written assignment of rights from employees and independent contractors.

• Use of provisional patent filings:

• Cheaper than full application, provisional applications help establish date and prevent loss of patent rights.
• One year to convert to full patent application.
• Some risk if you don’t fully disclose the invention.

U.S. Vs. Foreign Patents

• U.S. patents only provide protection in the U.S. for:

• Products and processes made, used, sold or offered for sale in the U.S.
• Imports into the U.S.

• Foreign patents must be obtained to provide protection for products and processes not made, used, offered for sale, sold, or imported in the U.S.

Patent Infringement

• Patents only cover those products or processes described by the claims

• An infringing product or process must have each element of the claim

• The accused product or process may have more than required by the claim

Patent Infringement Test

• Determine meaning of claim (claim construction)

• Apply meaning to the accused device

• Literal Infringement
• Doctrine of Equivalents Infringement

Patent Due Diligence Why Worry About It?

• Damages:

• Lost profits
• Reasonable royalties
• Treble damages & attorney fees
• Price erosion
• Convoyed sales

• Disruption to Business During Litigation:

• Document production
• Depositions
• Significant issue affecting business

Costs of litigation

• Costs of litigation

• “The cost to bring a patent case . . . ranges from $750,000 to $1 million for a simple dispute and from $4 million to $8 million for a modest one. Monster cases can cost $10 million or more.” IP Worldwide, May 2002, p. 43.

Patent Due Diligence How to Conduct

• Search/Monitor:

• patent searches on relevant product lines of primary competitors
• patent searches directed to the specific product being introduced
• monitoring of relevant products being sold

• Compare proposed new product or process to any relevant patents or competitor products

• If necessary, search for prior art

Patent Due Diligence When A Relevant Patent Is Found

• Look at the claims, not just the disclosure of the patent

• Many patents can be designed around

• Has the patent expired?

• Time or Maintenance Fee Nonpayment

• Is the patent valid?