Protection of Software-Implemented Inventions: International Legal Framework Sub-Regional Seminar on Protection of Computer Software Mangalia August 26, 2010 Tomoko Miyamoto Head, Patent Law Section, Patents and Innovation Division, WIPO

Software-implemented inventions Various kinds of software-implemented inventions At least some of them may be patented, IF THEY MEET THE REQUIREMENTS UNDER THE PATENT LAW Pros and cons of patent protection Territoriality

International patent system - patchwork of national/regional patent systems National patent system Regional patent system (EPO, EAPO, OAPI, ARIPO, GCC) The Patent Cooperation Treaty (PCT) system Regional Patent Office Nat. Pat. Off. Reg. Pat. Off. International phase National Patent Office Nat. Pat. Off. [National phase] Patents - International publication - International search - International preliminary examination (optional)

PCT – advantages and its feature A single international application having the effect of filing patent applications in 142 PCT member States One formality requirements International search and international publication Translations and national fees required at, in general, 30 months from the filing date (priority date), and only if an applicant wishes to proceed The decision on granting patents is taken exclusively by national or regional offices in the national phase. Many PCT international applications claim a method for processing data, a computer readable storage medium, a computer program product or a computer program, but the patentability of those claims shall be decided by the national/regional patent offices based on the respective national/regional patent law.

PATENTSCOPE ® - searching PCT applications and more

Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) Article 27.1 Patents shall be available for any inventions, whether product or process, in all field of technology, provided that they are new, involve inventive step and are capable of industrial application. Article 27.2 and 27.3 Members may exclude certain subject matter (ex. plants and animals). Computer programs and business methods are not expressly excluded from patentability. Article 29.2 An applicant shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art […]. No definition of the terms inventions and technology. Members may define the term inventions in their national laws No requirement to submit source code/object code

Software-implemented inventions are treated in the same manner under the law as any other inventions –Patentable subject matter –Novelty –Inventive step –Industrial applicability/Utility –Sufficient disclosure

Patentability of software and business methods Different national laws and practices Different solutions have been sought But similar challenges… Does the current law provide patent protection? Notion of inventions (patentable subject matter) Novelty and inventive step Claim drafting Enforcement

Notion of inventions (patentable subject matter) US any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereof Not patentable under the case law –law of nature; natural phenomena; abstract ideas Business methods and computer programs are not categorically excluded What is a patent-eligible process? -Practical application of fundamental principles -No single test -useful, concrete and tangible inquiry -machine or transformation test

Notion of inventions (patentable subject matter) Japan Statutory definition of inventions –highly advanced creation of technical ideas by which a law of nature is utilized Business methods and computer programs are not categorically excluded European Patent Convention No definition of inventions Inventions shall have a technical character. Business methods per se and computer program per se are expressly excluded from patentable subject matter

Novelty and inventive step Having regard to the state of the art, an invention shall be new and shall not be obvious to a person skilled in the art No international law defining novelty and inventive step. Practical difficulties in identifying the full range of the state of the art –Not found in traditional scientific journals –Financial innovation

Claim drafting Claims define the scope of patent protection. Software may be: –embedded in hardware An apparatus for processing a Media Access Control Protocol Data Units (MPDU), comprising [means1], [means2]… –stored in a computer readable storage medium A computer-readable storage medium storing processor-executable program instructions comprising [instruction1][instructioon2]… –a product by its own (traded on-line) A computer program product wherein the instructions for xxx comprising [instruction1], [instruction2]… –functional steps for achieving a useful result A method for processing a Media Access Control Protocol Data Units (MPDU), comprising [step1], [step 2]…

Enforcement TRIPS Agreement, Article 28 A patent shall confer on its owner the following exclusive rights: - to prevent third parties not having the owners consent from making, using, offering for sale, selling, or importing for these purposes the patented product; - to prevent third parties not having the owners consent from using the patented process, and from using, offering for sale, selling, or importing for these purposes at least the product directly obtained by the patented process. Territorial patent rights and the Internet (global networks) In particular, information and communication technology

Enforcement Using a patented invention in the territory? A part of the patented system locates in a foreign country A part of the patented method is operated in a foreign country ex.1) Menashe v. William Hill (UK) ex.2) NTP v. Research in Motion (US) US law to respond to the globalized trade and production activities Infringement of a US patent if a third party supplies uncombined components of the patented invention in or from the US for assembly abroad: –if the supplied components represent all or a substantial portion of the invention, and the combination of such uncombined components in a foreign country is actively induced; or –if the supplied components are especially made or especially adapted for use in the invention and not a staple article of commerce. ex.) Eolas v. Microsoft

Enforcement Technical standards incorporating patented technologies Potential tensions –Patent hold-up: implementation of standard blocked by essential patent holder who is not willing to license under reasonable and non- discriminatory conditions –Transaction cost (accumulated royalty cost) Patent policies of standard-setting organizations (SSOs) –Patent disclosure statement –Licensing commitment (ex. RAND, RF) Patent pools Competition law

International Legal Framework National legislation Convergence of national laws

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