Patent protection on Software. Software as an asset for technology transfer 29 September 2015

Transcription

1 Patent protection on Software Software as an asset for technology transfer 29 September 2015 GEVERS

2 Frank Van Coppenolle European Patent Attorney Head of GEVERS High-Tech Patent Team GEVERS

3 GEVERS Group GEVERS Group Patent Attorneys 59 A E U R O P E A N K E Y P L AY E R Trademark Attorneys 32 China Desk German Desk U.S. VIP Portal Native spoken languages 12 + Antwerp Brussels Ghent Hasselt Liège Contracting department Valuation department Paris Toulouse Neuchâtel Porrentruy Dispute resolution dpt Valorisation department IP/patent boxes GEVERS

4 European Patent Convention Art 52(1) - Patentable inventions Art 52(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. subject-matter must have technical character more precisely technical teaching i.e. an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means 4

5 European Patent Convention Art 52(2) - Patentable inventions Art 52(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) negative definition EPC does not include a definition for what s an invention, but excludes subject matter which is not an invention 5

6 European Patent Convention Art 52(3) - Patentable inventions Art 52(3) Paragraph 2 shall extend the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such. Established EPO practice: subject matter of claim is assessed as a whole if at least some of the subject-matter is not excluded, then the claim is not excluded BUT also inventive? 6

7 European Patent Convention Art 56 - Inventive step Art 56 An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. Established EPO practice: non-contributing features can not be considered when evaluating inventive step non-technical features special class of non-contributing features Enlarged Board decision in 2010: Status quo Confirmation of COMVIK approach 7

8 COMVIK Approach T 0844/09 (5/02/2013) COMVIK approach applied: «According to established jurisprudence, an invention consisting of a mixture of technical and nontechnical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features, which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step.» 8

9 European Patent Convention RESULT Only few computer-implemented inventions are excluded from patentability under Art 52(2)(3) EPC Inventive step = main objection of EPO against computerimplemented inventions 9

10 In Practice What does this mean in practice? Evaluation of inventive step Closest prior art (CPA) Difference between invention and CPA Effect of difference Problem related to the effect Technical character? Is the same problem solved in the same way to reach the same effect? 10

11 Post-G0003/08 Case Law T 1003/09 Google Inc (29 April 2015) Technology The invention relates to database technology. Technical character? Claim 1 directed to A computer-implemented method for viewing changes to an original optimization plan for a query to a database YES (Art 52) 11

12 Post-G0003/08 Case Law T 1003/09 Google Inc Inventive? Difference = Defining a virtual table Replacing the reference to the original table with a reference to the virtual table Replacing in the new optimization plan a reference to the virtual table with a reference to the original table. Effect: faster Contributing to the technical character? YES Inventive granted patent 12

13 Conclusions under EPC Key Conclusion Is the prejudice software is not patentable in Europe justified? NO!!! As long as the novelty is in a technical solution for a technical problem, under current EPO practice, a computer-implemented invention is patentable at the EPO!!! 13

14 Case Law Learnings: Technical vs Non-Technical features Conclusions under EPC Technical Relation to Hardware / Computer / Device Controlling (of a technical process) Level of operating system Reduction in processing time Reduction of memory capacity or system resources Processing of measuring results Simulation of technical process Specific application in a technical domain (for example: engineering, physics, electronics) Non-Technical Invention is no more than an economical or organisational concept (e.g. auction method) Pure abstract concept Theory without a technical application 14

15 What about the United States?

16 Significant growth in software patents over the past two decades United States 16

17 US Patent Law What is an Invention according to US Law? USPTO: Anything under the sun made by man as long as it is novel, useful, and unobvious. Excludes laws of nature, physical phenomena, and abstract ideas Invention = conception + reduction to practice 17

18 US Case Law Key Decision: Alice Corp. Pty. Ltd. v. CLS Bank Int l (decided on June 19, 2014) Alice patent covers a system and method for reducing settlement risk in financial transactions Central computer creates shadow accounts, credits and debits those balances with transactions through the course of the day, and permits transactions to proceed only when the shadow balances remain above zero. CLS Bank operates a network which settles about $5 trillion of transactions a day CLS systems for settlement allegedly infringe the Alice patent. 18

19 US Case Law Key question Alice Corp. Pty. Ltd. v. CLS Bank Int l (decided on June 19, 2014) Is the claimed subject matter excluded as an abstract idea? 19

20 US Case Law Supreme Court Decision by US Supreme Court Alice Corp. Pty. Ltd. v. CLS Bank Int l (decided on June 19, 2014) Proper test requires two steps: 1. Determining whether the claims at issue are directed to a patent-ineligible concept, and 2. Analyzing the claim elements to determine whether an inventive concept is present that transforms the abstract idea into a patenteligible application 20

21 US Case Law Apply test step 1 Claims in Alice are directed to the abstract idea of intermediated settlement, which is a fundamental economic practice long prevalent in our system of commerce. 21

22 US Case Law Apply test step 2 Inclusion of a computer in the claims does not change the analysis. A new and useful application of the abstract idea is required to render the claims patent eligible. The Alice claim elements simply recite the concept of intermediated settlement as performed by a generic computer. Thus lack the inventive concept. 22

23 United States RESULT of this recent decision The line between what is merely an abstract idea and what is an inventive concept that transforms an abstract idea into a patent-eligible application is rather murky. 23

24 Software patents in US Post Alice case Patent eligible Claims to improved computer technologies Claims to solving technological problems Claims that include an inventive application of an abstract idea Conclusions under US Practice Patent ineligible Claims characterized as merely using a computer to apply an abstract idea Guidance by the USPTO: - Fundamental economic practices - Methods of organizing human activities - An idea of itself - Mathematical relationships 24

25 Conclusions EPC vs US EPC vs US European patent application Excluded if program for computer as such. In Practice: COMVIK Approach contributing technical US patent application Excluded if abstract idea. In Practice: 2-step test abstract idea inventive concept Huge opportunities for Technology Transfer Offices to create VALUE by patents in Europe and United States 25

26 GEVERS

27 Thank you for your attention! GEVERS

28 GEVERS hereby declares not to be connected, either directly or indirectly, to the enterprises mentioned in this presentation, nor does it represent them. All trademarks and device marks belong to their respective owners and are used exclusively for illustrative purposes. The same applies to possible copyright linked to the respective owners. The content of the presentation only aims to give general information. It is not a professional advice and may therefore not be used as such. 28