1. www.FITT-for-Innovation.eu Software Patents FITT (Fostering Interregional Exchange in ICT Technology Transfer)

2. 2 | May 2010 Software Patents Introduction Diversity of IPRs Intellectual Property Rights (IPRs) are essential assets for valorisation and technology transfer activities. Many different IPRs exist, offering each a particular set of legal protection for different kind of assets. Patents Trade marks Copyright Designs (registered and unregistered) Trade secrets Only patents and copyright are reviewed in this document

3. 3 | May 2010 Software Patents Introduction Some IP found in a mobile phone Trade marks:  Made by "Nokia”  Product "N95”  Software "Symbian", "Java” Patents:  Data-processing methods  Semiconductor circuits  Chemical compounds Copyrights:  Software code  Instruction manual  Ringtone Designs (some of them registered):  Form of overall phone enclosure  Arrangement of buttons in this oval shape  Three-dimensional wave form of buttons Trade secrets: ?

4. 4 | May 2010 Software Patents IPRs general approach  Any inventor, creator and/or right holder are rewarded with a (bounded) monopoly on the intangible creation they relate to. Intellectual Property (IP) relates to the ownership of intangible assets  IPRs are plural Copyright Patents Trademarks Literary and artistic creations protection logic Criteria = original creations Signalling & commercial protection logic Criteria = type of good/service the brand relates to Industrial-focused inventions logic Criteria = technical nature, novelty, industrial application

5. 5 | May 2010 Software Patents From IPRs to IP management General Approach IPRs create a framework Patents, Trademarks & Copyrights do not protect the same thing. They are not bound by the same obligations in order to be granted, neither do they not grant the same rights  Registration is required (patent, trademark), or not (copyright)  Scope of protection is different  Duration and nature of monopolies are different An efficient IPR management strategy needs to play on such IPRs complementarities Technical issue idea Technical Solution Code Development Brand Market PatentCopyrightTrademark

6. 6 | May 2010 Software Patents From IPRs to IP management The case of software

7. 7 | May 2010 Software Patents IPRs in ICT explained From Copyrights to Patents  Software components PROTECTED by copyright The program (architecture, object code + source code) The specifications if there is an original document An eventual prototype Screens and interactivity functionalities if they are original The user manual  Software components NOT PROTECTED by copyright Functionalities and algorithms (patent rights) The executable code Programming languages The name, logo (trademarks)

8. 8 | May 2010 Software Patents IPRs in ICT explained Patents on computer implemented inventions A patent is an IP monopoly that grants its owner: the privilege of stopping others from making, using or selling the claimed invention this privilege being:  temporary  valid on a given territory  on an invention related to a process, a product or a device  in compensation of the enrichment of the technological patrimony (published)  resulting from the publication of the invention

9. 9 | May 2010 Software Patents IPRs in ICT explained The European patent application The European patent application consists of : Request for grant Description of the invention – a summary of the prior art, a disclosure of the invention and what problem it is supposed to solve Claims – determine the extent of protection conferred by a patent Drawings (if any) referred to in the description or the claims – the description and drawings are used to interpret the claims Abstract – around 150 words that can be used as a search tool for other patent applications

10. 10 | May 2010 Software Patents IPRs in ICT explained Software patents A patent (on software) grants the right holder a Right to prevent third parties from commercially exploiting an invention without authorisation Not a right to use – instead a patent protects an invention by giving the owner of the patent the right to stop anyone from making or using the invention without their consent Rights conferred by a European patent are the same as the rights would be if conferred by a national patent in each contracting state in respect of which it is granted Right to assign or transfer ownership of a patent and to conclude licensing contracts Maximum term of patent protection is 20 years

11. 11 | May 2010 Software Patents IPRs in ICT explained Patentability criteria Under the European Patent Convention (EPC), patents are granted for: any inventions in all fields of technology provided that they are: new (does not form part of the state of the art) involve an inventive step (is not obvious to someone skilled in this technology field) susceptible of industrial application (useful in some way)

12. 12 | May 2010 Software Patents IPRs in ICT explained What cannot be patented ? (1) Discoveries, scientific theories and mathematical methods Aesthetic creations Schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers Presentations of information … as such

13. 13 | May 2010 Software Patents IPRs in ICT explained What cannot be patented ? (2) Why as such? A patent claim directed solely to an item listed in previous slide will not be considered an invention and therefore will not be patentable, but … This applies only if the patent claim relates to that subject-matter or activities directly ("as such”) A patent claim that includes a mix of both patentable, technical, and excluded, non-technical, subject-matter can be regarded as an invention and may be patentable after all

14. 14 | May 2010 Software Patents Software patents The case of programs for computers (1) Program for a computer "as such" is excluded from patentability, but… Not excluded from patentability if, when running on a computer, it causes a further "technical effect" going beyond the "normal" physical interaction between the program (software) and the computer (hardware) Programs for computers are therefore not automatically excluded from patentability

15. 15 | May 2010 Software Patents Software patents The case of programs for computers (2) An invention will be considered patentable if : It is related to a technical domain It is a technical solution solving a technical problem It manipulates technical data with the help of technical functionalities The claims have technical characteristics

16. 16 | May 2010 Software Patents Software patents The case of programs for computers (3) Examples Patentable inventions Process and/or system for speech recognition Process and/or device for charging control with power control Process and/or device for cryptography Process and/or system for video compression Counterexamples Non-patentable inventions Accounting softwareSyntactic sorting software Software for establishing a financial transaction

17. 17 | May 2010 Software Patents Software patents The case of “Products computer programs” Claims relating to “products computer programs” as computer programs stored on a data medium are tolerated (not considered as not patentable), but… For this, the claims: Should be preceded by process claims Should be based on a technical process which is new and inventive, and which could be implemented by a computer program

18. 18 | May 2010 Software Patents Software patents Software protected by a patent Software components protected by a patent Functionalities as suchThe algorithms as such The device(s) and technical system(s) The process (and its technical utilisation) Software components not protected by a patent The program (architecture, object code + source code) The specifications if there is an original document An eventual prototype, executable code Screens (unfair competition) The user manual and programming language

19. 19 | May 2010 Software Patents Why? Rationale:  The present document aims to recall on patentability criteria and describes the differences between patents and copyrights in the field of ICT  Copyright aims at protecting software as such  Patent can protect the functionalities of a software as long as they satisfy patentability criteria  Both types of protection can/should be used for software IP management activities However  Patents offices in USA, Japan and Europe have different practices  Different protections have different costs

20. 20 | May 2010 Software Patents Suggested Reading  Link to bibliography: “La brevetabilité des logiciels” - Aurelie Jung, Centre d'Etudes Internationales de la Propriété Industrielle, Université Robert Schuman de Strasbourg, 2006 “Beware of your creations: software patents”, Eugenio Archontopoulos, European Patent Office, earchontopoulos@epo.org “Abstract Patent ans Software”, in: “Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at Risk”, James Bessen and Michael Meurer, Princeton University Press, 2008 “Patenting software in the European Union”, José Ramon Cardeno-Shaadi, Les Nouvelles, Licensing Executive Society International, September 2007 “Patents for software: European law and practice”, presentation from European Patent Office, http://documents.epo.org/projects/babylon/eponet.nsf/0/a0be115260b5ff71c125746d004c51a5/$file/patents_for_software_en.pdf “Autour de la brevetabilité du logiciel”, presentation of Emilie Rollet, Département Brevets, INPI on the conference Intech’Sophia 2008, http://www-sop.inria.fr/intech/protection_logiciel/slide_inpi.pdf “Patent teaching kit; core module 2: How patents work”, presentation from European Patent Office, http://documents.epo.org/projects/babylon/eponet.nsf/0/e32d0d43d34f5681c125763c0054b3bb/$file/patent_teaching_kit_en.pdf Those two last presentations have served to write the present one.  Link to code book: exploitation, valuation, maturation, royalties, licensing, copyright, patent