30 April 2010

Ms Brimelow's legacy and Mr Battistelli's plans

Benoît Battistelli, Director General of the French National Institute of Industrial Property (INPI), has been elected by the Administrative Council of the European Patent Organisation to succeed Alison Brimelow as President of the EPO. His five-year presidency will begin on 1. July 2010.

As reported by both the IPKat and IPjur, his predecessor Alison Brimelow gave an interesting speech on "keping the patent system fit for future" in Melbourne, Australia, on the day of his election, in which she drafted her visions for the future development of the international IP scenery. As a contrast or supplementary to that, Mr Battistelli answered questions in the same political field, as posed by the European Patent Institute (epi) shorlty before his election. Below please find a summary of the essential issues of Ms Brimelow and Mr Battistelli in order to facilitate comparing their respective thoughs.

Ms Brimlows ideas. As a core message, she demanded that "greater integration and the creation of a truly global, sustainable patent system" are needed to keep the patent system fit for purpose in the future and explained that the IP5 initiative between the five largest patent offices in the world (US, JP, CN, KR, EP) may be a basis on which such a system may be built.

Invited by the Melbourne Law School to hold the 2010 Francis Gurry Intellectual Property Lecture, in a speech entitled "Not seeing the wood for the trees: Is the patent system still fit for purpose ?", the former EPO President reflected upon the challenges that patent systems are facing worldwide. "The R&D paradigms have changed, the function of IP is shifting, but patent systems have failed to adapt and develop in consequence". Moreover, she stated, the patent system is "far too complex, and this complexity increases exponentially in the international arena".

Further, she commented on the following issues:
  • Substantive patent law harmonization: While industrialised countries call for a global patent system based on an international infrastructure operating under a harmonized body of laws, regulation and practices, international normative initiatives are currently at a standstill. There is a gap between what people say and what people are prepared to do. Inherent in the concept of harmonization is change. If we are not prepared to change, we cannot possibly pretend to be serious about harmonization.
  • Global backlogs as driver for change: There is a powerful impetus for reducing unnecessary duplication of work in patent systems world-wide. The existing PCT framework should this be improved since it bears the greatest potential for a global work-sharing scheme due to the high volume of applications filed, the existing legal framework and infrastructure, established procedures and also its acceptance by the users.
  • Recent developments in Europe:  The work-sharing scheme of the EPO will apply to work results not just from the national patent offices of member states, but from any office of first filing in the world. Timeliness, high quality of work, confidence-building and coordination between offices are essential ingredients of this scheme, in order to elliminate unnecessary duplication of work and equally enhancing both quality and efficiency, whereas utilisation remains at the discretion of the EPO examiner.
  • The international level: The EPO is cooperating with the patent offices of Japan, Korea, China and the US within the IP5 initiative to achieve a sound, viable, sustainable global patent system, focused on work-sharing. The IP5 will enable efficient work-sharing which will deliver long term and sustainable benefits for all, even without any substantive harmonisation breakthroughs. However, the IP5 projects are ambitious, require a considerable investment of scarce resources and are politically attractive because the IP5 projects will deliver productive results and momentum beyond electoral periods, which is why it was vitally important to enhance IP5 visibility and keep the pressure on.
Mr Battistelli's plans. While the former EPO President articulated political and more abstract ideas, Mr Battistelli's plans appear EPO-centered and more pragnatical.
  • EPO as part of the EU: As regards the possibility of a Community patent, it could be explored again the possibility of a Technical Agreement between the EPO and the European Union, which latter would delegate to the EPO the granting procedure. There would therefore be little change in the present system, the innovation being that applicants would have the possibility of obtaining a European patent as now, or a Community patent. Market forces will decide which is preferred. There would be a review after say 10 years from any Community Patent Regulation.
  • The global role of the EPO: The EPO does have a global role to play in IP, firstly because it essentially represents all of Europe in these matters, and secondly because it has a high degree of technical and legal expertise in patents. Individual countries cannot go it alone, but the EPO can and should play a lead part in developing IP in partnership with member states and other extra-European Patent Offices. Developing a model for providing a balance between holders of patent rights, and third parties is a main issue. 
  • Partnership between EPO and member states: The European Patent Network (EPN, see also here) will play an important role. Therefore there are in practice two levels, the EPO level and the national level. These must work in a complementary way. It is important that the National Patent Offices (NPOs) do not reduce the role, capacity and authority of the EPO, but at the same time the role of the NPOs should be strengthened. The EPN should not be reduced to simple work sharing. The EPO Examiners in their different groups should act as a cluster of competence which would have the overall say in the granting procedure. So it is not a question of sharing files, but of providing a network of competencies between the EPO and the NPO examiners, so-called “virtual clusters of Examiners could be created, to enhance the examination procedure. As regards the future, the operational capacity of the EPO and its budget (1.4 Bn € at present) would need to be looked at from the point of view of the IFRS norms which may not be suitable for an International non-profit organisation. The IFRS spirit may be right, but perhaps not the letter.
  • Patent granting under the PCT: The improvement of the PCT should be a priority. With the new US Commissioner, Mr David Kappos, there may be scope for movement forward. The EPO fully support Francis Gurry's (President of the WIPO) initiatives. As to the PPH, some EPO member states have gone down the PPH route (whereas others, e.g. France, are not convinced on the appropriateness of the PPH) and it should not be denied that a pilot scheme might be looked at. However, resources should not be taken from the PCT, which is the only truly multi-lateral option.
  • Ways of operation of the Administrative Council: The Administrative Council (AC) has its own Chairman, whereas the President of the EPO has a different role, but the two need to work together. The main role of the AC is to vote the office budget, elect the President and Vice Presidents and to control the activity of the Office. The AC should concentrate on these main tasks, must stick to important questions, try to reduce time and to encourage colleagues from the MS to take decisions.
  • Social partnership of EPO with the staff: The staff is greatly dissatisfied with the management of the Office, and with the AC. This mostly stems from a lack of understanding as to their role, the future of the EPO and thus their future, including pensions. Transparency should be provided for the staff and meetings should be convened to explain what is going on in the EPO. It is a difficult but not impossible task to get everyone in the Office pulling in the same direction.
  • Relationship of EPOrg and epi: The EPO must not be isolationist, and must not ignore the users. The epi is one of the main partners of the EPO. As such the Office should look to cooperate with the epi and whilst the EPO would not always be able to take the same position as the users, openess towards and interactions with the epi in order to enhance the patent system in Europe is essential, since the EPO and epi could cooperate too within the framework of the EPN, e.g. like in France, where the Office and the IP attorneys are associated, working together to enhance SME’s IP awareness.
Conclusion: Mr Battistelli appears not to be so much focussed on the international level and high politics (int'l harmonisation, IP5, etc.) but emphesises more the European IP structure and the well-functioning of the EPO itself. This attitude is in fact much appreciated by the EPO's staff, which hopes that in the future the EPO's public service mission that has been accorded to the EPO and allow the EPO to concentrate on its raison d'être, namely the search, examination and granting of high quality patents, will be much more considered on the political level than under the former President. 

From a patent attorney's point of view I would principally agree to the attitude of the staff union, since in recent years the impression has grown among professional representatives that during all that procedural streamlining and raising of bars the EPO has lost sight of the legitimate interests of the system users. In fact, some colleagues and applicants just started to consider more direct national filings instead of going through the streamlined but more and more inflexible and expensive EP system.

28 April 2010

White Paper on IPR protection by Chinese Courts in 2009

On April 21, 2010, China's Supreme People’s Court issued a first study (white paper) on "Property Protection by Chinese Courts in 2009", as e.g. reported here. The paper not only provides a review of IPR enforcement in China in 2009 but also a retrospect on the development of the Chinese IP system in the past 30 years. The bilingual (Chinese and English) paper may be obtained here.

As explained on China Law Update, China started its IPR protection system in the late 1970s and early 1980s during China’s reform. Judicial protection of IPR in Chinese courts started from zero, but has now developed into a specialized system with Chinese characteristics. The White Paper on IPR enforcement signifies the importance of IPR in China today. Chinese courts provide judicial protection for IPR through civil, administrative and criminal procedures. According to the White Paper, from 1985 to 2009, Chinese courts have received and rendered decisions for many IPR cases including: 166,408 civil cases, 6,387 administrative cases, and 14,509 criminal cases. 

In this respect, the paper lists a number of issues the Chinese courts have focussed on in the past 30 years:
  • Expanded their functions and powers in IPR protection;
  • Enlarged the scope of judicial protection for IPR property;
  • Increased the level of judicial protection for IPR;
  • Enhanced the effectiveness of judicial protection for IPR;
  • Improved the judicial system in IPR protection; and
  • Improved the capacity in providing judicial protection for IPR.
Further to that, the Supreme People's Court's claims four central achievements as a result of its past work:
  1. The judicial system became a leading force in China's IP protection due to fair and efficient adjudication of intellectual property cases;
  2. Judicial IP Protection has served the needs of socioeconomic development by ensuring the observation and delivery of the Chinese national IP strategy;
  3. Greater consistency in adjudication practices and decision-making has been achieved due to enhanced judicial supervision and guidance; and
  4. Judical competence and quality has been improved.
The White Paper indicates the massive efforts of China to become a well-accepted member of the internantional IP family by ensuring international standards especially with respect to IPR enforcement. Apparently, the Chinese leaders recognised that a well functioning IP system is a central requirement for bringing invenstments and technical know-how into their country and to support its development from a copy cat to a industrialised high-tech economy at eye level with (or even overtaking) the US, Japan and the European Union.

26 April 2010

How to collect annuities

In one EP application my firm is in charge of, the European Search Report, which was issued on 19 Aug 2005, only cited A-classified documents, i.e. prior art that does not oppose to novelty or inventive step but only serves as technical background. Proceed further according to Rule 70 (2) EPC has been declared on 23 Jan 2006, only seven months after the filing date of 23 May 2005.

Even though the European Search Report only cited A-classified prior art documents, indicating that the claimed subject-matter is substantively allowable, it took the Examing Division more than four years to issue the first Office Action in which merely the clarity (Art 84 EPC) of two terms of claim 1 was objected. It is absolutely unclear why raising two minor clarity issues takes that long.

During this period, the renewal fees for the 3rd, the 4th, the 5th, and the 6th year became due and have been payed on 30 May 2007 (400 €), 28 Mar 2008 (420 €), 28 May 2009 (700 €), and 30 Mar 2010 (900 €), respectively.

If the Examining Division would have issued the first Office Action within a resonable period after declaration to proceed further on 23 Jan 2006, the application could have been granted within a year's time, such that at least the renewals for the 4th to 6th year, summing up to more than 2.000 €, would not have flowed from the applicants purse in that of the EPO.

Please don't misinterpet me; I am not saying that the EPO follows some sort of strategy to maximise annuities by prolonging proceedings, but still, at least, the EPO, which independently finances itself by fees and annuities for pending applications, did not follow an appropriate work flow assuring that easy work is done first in order to improve procedural efficiency for the benefit of applicants.

25 April 2010

WIPO World Intellectual Property Day on 26 April 2010

On April 26, 2010, WIPO celebrates both the 10th anniversary of World Intellectual Property Day and the 40th anniversary of the entry into force of the WIPO Convention. The theme of this year's World IP Day is “Innovation – Linking the World”.

While Mr Gene Quinn of IPWatchdog wonders why his desk calender tells him that February 6 is Waitangi Day in New Zealand, that March 13 is Eight Hours Day in Australia, and that July 12 is Battle of the Boyne Day in Northern Ireland, but not a single word about the annual World IP Day on April 26, the ipeg blog notes that many countries organise special events for this day, among which are e.g. Moldova or Saudi Arabia, whereas others, such as United States, are strikingly absent, which might tell something about the commitment to WIPO of the latter. By the way, the only mentioning of World IP Day on the EPO website is a press release announcing a joint project to examine the role of patents for environmentally sound technologies, whereas nothing particular can be found under "EPO events", which I am sure does not tell anything about EPO's commitment. 

Besides all this, Mr Francis Gurry, Director General of WIPO, emphasises the cultural issues he likes to be associated with his organisation:
Rapid innovation and its global adoption has transformed our [world]. We are now linked – physically, intellectually, socially and culturally – in ways that were impossible to imagine. [...] From almost anywhere on the planet, we can access information, see and speak to each other, select music, and take and send photographs, using a device small enough to fit in the palm of a hand. This universal connectivity, sustained by the Web and wireless technology, has huge implications for the future [, since ] we are no longer limited by physical location – and the benefits are legion.

Web-based learning frees intellectual potential in previously isolated communities, helping to reduce the knowledge gap between nations.[...] Rapid data management and exchange speed the innovation cycle, facilitating collective innovation and promoting mutually beneficial collaboration between companies, research institutions and individuals. At the same time, digital technologies are enabling like-minded people to create virtual platforms from which to work on common projects and goals – such as WIPO’s web-based stakeholders’ platform, aimed at facilitating access to copyrighted content for the estimated 314 million persons with visual and print disabilities world wide.

Innovative technologies are creating a truly global society. The intellectual property system is part of this linking process. It facilitates the sharing of information – such as the wealth of technological know-how contained in WIPO’s free data banks. It provides a framework for trading and disseminating technologies. It offers incentives to innovate and compete. It helps structure the collaboration needed to meet the daunting global challenges, such as climate change and spiraling energy needs, confronting us all.
While Mr Gurry concluded in a rather declamatory way that "WIPO is dedicated to ensuring that the intellectual property system continues to serve its most fundamental purpose of encouraging innovation and creativity", thus helping to bring the world closer, Gene Quinn expresses in his post the more pragmatical feelings of a patent attorney for this day:
After all, we have work to do to protect those tangible manifestations of ideas and turn them into assets capable of providing employment for workers and funding for further breakthroughs and advancements. But if you are so inclined to say a nice word to your patent attorney [...] or at least not complain about your bill on Monday, April 26, 2010, that would be greatly appreciated!
There is nothing more to add, except: Happy World Intellectual Property Day!

24 April 2010

Microsoft's controversal FAT patent upheld by German Federal Court of Justice

As reported here and elsewhere, the German Federal Court of Justice (BGH) has overtuned in his decision X ZR 27/07 dated April 20, 2010 the first-instance nullity decision 2Ni 2/05 of the Federal Patent Court (BPatG) to revoke Microsoft's German patent DE 69 429 378 (national part of EP 0 618 540) relating to a "common name space for long and short filenames" in relation to the FAT file system (see the notification of the BGH). Granted independent method claim 1 of the patent reads:

1.  A method of operating a data processing system (10) comprising memory (16) holding an operating system (17), and a processor (12) for running the operating system (17), the method comprising:
  1. storing (58, 59) in the memory (16) a first directory entry (18) holding a short filename for a file;
  2. storing (58, 59) in the memory (16) a second directory entry (20) being associated with the first directory entry (18) and holding a long filename for the file, said long filename having more characters than said short filename, said second directory entry (20) further holding information (42) indicating that said second directory entry (20) holds said long filename; and
  3. in case that the operating system (17) permits only short filenames and said information (42) is set to make said second directory entry (20) invisible to the operating system (17), locating the file by accessing said first directory entry (18) or, in case that the operating system (17) permits long filenames and said information (42) is set to make said second directory entry (20) visible to the operating system (17), locating the file by accessing said second directory entry (20).
By the claimed subject-matter, the patent solves the problem that the length of file names in older MS-DOS versions is limited to only eight characters in that a second directory entry holding a long file name for the file is associated with a first directory entry representing the short file name, such that the first or second entry can be activated depending on the operation system. 

In the first-instance nullity proceedings, the Federal Patent Court has decided on October 26, 2006 that the claims granted by the German Patent and Trademark Office (DPMA) are not based on an inventive step over the Rock Ridge Interchange Protocol (RRIP) for reading files on CD-ROMs, since RRIP extends the ISO 9660 standard towards CD-ROM contents access via the POSIX file system by exactly utilising the claimed method. 

In the appeal instance, however, the BGH did not agree with that ruling of the BPatG and interpreted the claimed subject-matter differently. According to the BGH's interpretation, the claimed teaching enables concuerrently using short and long file names (as enabled e.g. by the VFAT format used in Windows 95) in a way compatible with the older FAT file system, which is achieved by a file attribute (the claimed "information (42)") stored in the second file entry with the help of which the second file entry (representing the long file name) can be made visible or invisible depending on whether the underlying operating system supports long or short file names.

The BGH thus concluded that the patent invention suggests, for solving the compatibility problem, to store two file entries separately comprising the short and long file name, while RPIR teaches to store both file names in the same file entry, for other reasons.

Analogously, also US couterpart patent US 5,579,517 has been finally upheld in early 2006 by the USPTO in a re-examination, after the patent has been revoked before.

From the point of view of the anti-(software)-patent community, this nullity appeal decision of the highst German court will surely be considered as the second decision in a row, after X ZB 22/07 („Steuerung für Untersuchungsmodalitäten“) in January 2009, which relates to patenting of software-implemented inventions in a much too liberal way:
Young judges at the Karlsruhe-based Federal Court of Justice considered it a progressive move to fit in with European Patent Office case law and to interpret the non-patentability of computer programs "as such" accordingly. 
In the earlier decision X ZB 22/07, the BGH explained under which circumstances a software that is embedded in a larger technical system may represent statutory subject-matter, whereas commentators assume that this decision may represent a turnaround of the BGH’s approach to assess technical character of an invention towards the more liberal attitude of the Boards of Appeal of the European Patent Office, as e.g. presented in the decision “Auction Method/Hitachi” (see also my related earlier post).

19 April 2010

Is software really comparable to books/films?

In a recent decision the parilament of New Zealand voted for a major patent reform bill that tightens the standards of patentability, especially with respect to software-implemented inventions, which are now broadly eliminated in New Zealand (see my earlier post and, e.g, here and here). The bill was drafted by the Select Commerce Committee after consulting the country's (open source) software industry and their associations. After the decision speculations arouse as to whether the committee might have been swayed more by the strength of lobbyists than by rational arguments and it was even spread that the committee accepted an argument that there is no "inventive step" in software development anyway. Presently, the various lobby groups are in still heavy arguing for and against the software patent ban.

Now, according to this post, Mr Jay Daley, Chief Executive of New Zealand Domain Name Registry, defended this decision with some remarkable thoughts regarding inventive step of software-related inventions and the apparent similarities of software and books/films as well as the conclusions to be drawn from this finding:
The actual argument is that the "inventive step" is in the algorithm; the code is simply the implementation of that "inventive step". As algorithms cannot be patented in New Zealand, it follows that code should not be either.

A good way to think about this is in comparison with books/films and plots. There are multiple books/films with the same plot - Hollywood depends on that. Each book/film has copyright, whereas the plot of a book/film cannot be patented. Software is just the same - an encoding of an underlying algorithm, which should not be patentable, just as movie plots are unpatentable.

Software attracts copyright as does books/films and copyright is a perfectly clear and defensible legal right. In jurisidictions that allow software patents, software is the only art that can attract both copyright and patents, an unnecessary duplication.
There may exist good arguments for copyright protection of software and against undeserved patent protection. However, I have the feeling that the argument that "the plot of a book/film cannot be patented" might not be one of them. In fact, the plot of a book would not be considered statutory subject-matter as required by patent law in any known jurisdiction, since apparently there is absolutely nothing technical about a film plot.

With software, or rather software-implemented inventions, it is slightly different. Mr Daley argues that since algorithms cannot be patented in New Zealand, software (i.e. code) should not be either. He is perfectly right insofar as algorithms "as such" cannot (and should not) be patented - not only in New Zealand but in all relevant industrialised countries in the world. He is also right to demand that software should not (and cannot) be patented either. Even thought the term "software patent" is somewhat misleading, however, software patents are neither about patenting algorithms nor about patenting software but exclusively about patenting inventions, independent of the concrete form the invention became manifested in. That is, when talking about inventions, the substance of the invention has to be considered over the particular way it was claimed, which is, for instance, totally in line with the current practise of the UKIPO as expressed in the Feb 2008 Practice Note in reaction to the Astron Clinica decision of the UK High Court.

Such misunderstandings, by the way, are the reason why the term "software patent", which is popular among anti-patent campaigners as a political combart term, should better be substituted by the more precise and clearer term software/computer-implemented invention.

Further, as to the bemoaned unnecessary duplication of IP rights available to software-implemented inventions, the subject of protection of copyrights and patent rights relates to different intellectual levels, since the program code is always copyright protected, while the technical invention implemented by that code may be patentable, depending on as to whether or not the invention is considered novel and inventive over the relevant prior art. That is, copyright protects the expression of the invention, while a patent protects the invention itself.

Such dualities are not only limited to software-related inventions but relate to almost any invention that is described in an operation manual, technical specification or the like, the latter being a copyright protected specification of the former, much like with program code and inventions. The only difference is that program code itself may in turn be interpreted by a computer and thus represents an implementation of the respective invention (i.e. the code transforms the computer to realise the intended invention), which makes it a bit harder to recognise the structural difference between code and invention as compared to the rather apparent difference between specification and specified machine. 
The intellectual problem of IP duality of software is also addressed in a rather entertaining post of Mr Gene Quinn in his IP Watchdog blog, though from another perspective.

18 April 2010

May software patenting and open source go together?

In this post published in a Sydney based IP firm's IP blog, the author(s) speculate(s) whether it makes sense to consider patenting of open source software, which would of course require a certain degree of mental liberty to overcome the common view that patenting totally contradicts to the idea of open source and is, at best, only an option for big business.

The idea is that the underlying rationale of patent protection and open source is to publish the invention/source code to be used and further developed by others. However, while open source can be freely used within the provisions of an open source license, a patented software-related invention may only be used if a patent license (or cross-license) is obtained that usually is liable to pay license fees. From that point of view, the two models for "explointig" software appear fairly similar, since the world's patent databases may be seen as large free-access prior art libraries, even though an invention disclosed in a patent and an open source library provide very different levels of detail and opportunities to use the disclosed knowledge.   

However, when considering the aspect that a patent owner has a monopoly, while the open source programmer contributes his developments to the community, the two models appear rather far apart. If the latter perspective is adopted, it doesn't help very much that patents only grant monopolies for a limited period of time (20 years from the patent filing date), since software life cycles usually are much shorter than a patent's lifetime.

At this point, the authors suggest that the open source community should consider patenting their developments for three reasons:
  1. A group of open source collaborators could secure a patent and grant a royalty-free licences to (only?) the open source community in much the same way as open source software is licensed. This would secure the invention for public use and prevent other parties from patenting that invention and exclusively exploiting it for commercial gain.
  2. A patent would secure the open source community the right to freely use the invention subject to the terms of the licence, which may comprise a provision according to which any modifications, enhancements or improvements are owned by the (open source) patent owner in order to retain all enhancements for public use.
  3. Open source patented innovations reside on patent databases and thus form part of the same public record, which makes the public record more comprehensive and useful to the community at large.
This argumentation, is base on the finding that such kinds of "open source patents" and subsequent zero licensing (to the community) would provide the legal certainty that no one else can obtain a patent for exactly that subject-matter and thus usage under the freely available zero license is not threatenend by patent infringement suits as it is today. Such a "run-with-the-pack" strategy according to which you apply for patents to be protected yourself from patents is in fact a legitmate strategy, whose further advantage (besides legal certainty) over the intrinsic open source disclosure strategy may be the official prior art search and examination, e.g. during the international phase of PCT proceedings or the like.

As open source today is a successful business model (see e.g. Novell, RedHat, Oracle) and not so much (only) an attitude of software developers that refrain from considering legal aspects of their work, the money needed for such a defensive patent strategy may exist (even without the chance to earn substantial license fees). In fact, some well known names in the open source market have plenty of experiences with patents (e.g. IBM, Novell and others). But there remains a risk that the community, whose contribution is needed for any successful open source business, will turn against an open source firm that is sympathising to patents, as Novell had to experience (see e.g. the Boycott Novell blog).

The authors of the referenced post see two main issues to be solved within the suggested open source patent framework, namely ensuring novelty of open source projects in the legal sense of the term as well as patent costs. One might add further important issues, e.g. that patent examiners should have the required expertise and ability to properly search and examine software patents and that sufficient prior art has to be available in the patent databases for conducting meaningful searches in that particular field. The latter two issue have not been overly pronounced some years ago but both are rapidly improving.

Novelty: To be patentable, a subject-matter has to be novel, i.e. not being publicly disclosed in any form before the filig (priority) date of the respective patent application, which appears hard to be achieved in an tedious collaborate open source development process.

One option may be that countries such as Australia, Canada, Japan, the USA and others have a grace period of six or twelve months from the first public disclosure of an invention by the inventor (depending on the country) whithin which inventors may still apply for a patent without drawbacks as to the required novelty. Apart from the fact that this is not an option in Europe where a patent grace period is unknown, six or twelve months may seldomly be sufficient to bring an open source project to a stable patent-worthy state.

Another option may be that collaborators sign an NDA before any detail of the project is provided and before they can contribute. An open source development process under such an NDA regime may e.g. comprise the below-sketched two-stage process (suggested by the authors and somewhat extended here), comprising an initial (conceptual) patent drafting stage in which a patent specification is drafted as a project agenda, e.g. as (part of) a software requirements specification that specifies the functional and usability requirements, and a subsequent (technical) software development stage in which the defined requirements are implemented. This process may e.g. look like this: 
  1.  The project coordinators (inventors?) provide a rather global view of the invention onto a site, which would have to be reasonably course to not endanger later patenting (e.g. comprising only the principle goals to be achieved);
  2. Contributors sign an NDA and make submissions to substantiate the published high level view and by this build a pool of invention-related material;
  3. The invention-related material is then structured in a joint drafting process (directed by the coordinators and, if required, supported by an adequately skilled patent attorney) leading to a colaborately drafted patent specification which may serve as some sort of project agenda (ideally the patent application is filed at this point - e.g. as a provisional application);
  4. Interested developers could subsequently join the community for helping to implement the invention as specified in the patent specification (in case the patent application has been already filed, the interested developers may consult the application before joining the community);
  5. The coordinators and associated community can accept new contributors if they show skills that are helpful to the project;
  6. The contributions would be logged against each contributor so as to determine if they are making a technical or inventive contributions;
  7. At an adaquate (preferably early) point of the development process, a set of patent claims is drafted (supported by a patent attorney, if required) based on the specification and the state of the developing process, such that the patent application can be filed to obtain preliminary protection. 
Costs: According to the author's conception, setting up a community of particular skills in order to draft the patent specification would reduce the costs for patent attorneys, due to contributions of the community in an open source manner. If the patent is commercially successful (e.g. by donation), any funds received can be made available to the contributors/inventors, or the community to promote further open source patent opportunities or as contribution for payment of official fees according to the various jurisdictions.

Conclusion: The authors see their sketched approach as an open source solution to promote access and availability to the excellent resources available both in the community and in the patent offices around the world.

However, even though the approach sounds interesting and may have a certain potential for utilise the best of both worlds in a software development process, it currently resides on a rather theoretical level, especially with respect to the patent specification process, the role of patent attorneys and the idea to collect fees for commercial uses and granting a free license for open source developers, whatever the differences between theses two groups may be today. Also a fairly strong opposition of anti-patent campaigners is to be expected if this or a similar appoach schould be implemented for a concrete project one day.

Especially, if an open source community really should decide to secure patent rights for their project, they should better consult a patent attorney or other legal advisor and not solely rely on community contributions (except some members are at least experienced patent practitioners) when it comes to legal issues with respect to worldwide patent procesution, licensing, infringement or the like.

16 April 2010

Software patents banned in New Zealand: advocacy and opponents

Software patents banned: As reported here and elsewhere, the parilament of New Zealand voted for a major patent reform bill that tightens the standards of patentability, especially with respect to software-implemented inventions, which are now broadly eliminated in New Zealand. The bill was drafted by the Select Commerce Committee after consulting the country's (open source) software industry, such as the Computer Society or the Open Source Society, which obviously convinced the lawmakers that patents are detrimental to open source software development and seriously stifle innovation. In this sense, the bill summarises that
Protecting software by patenting is inconsistent with the open source model, and its proponents oppose it. A number of submitters argued that there is no 'inventive step' in software development, as 'new' software invariably builds on existing software. They felt that computer software should be excluded from patent protection as software patents can stifle innovation and competition, and can be granted for trivial or existing techniques. In general we accept this position.
Saying that, the Commerce Committee is confident that the ban on software patents will not block companies from patenting hardware inventions that encompass embedded software, whereas it remains to be decided by the Intellectual Property Office of New Zealand what kind of embedded software is patentable.

Criticism: However, as reported here, there are not only happy faces in New Zealand now, especially since some buisiness voices expressed their fear that the decision damages investments that the New Zealand software development industry needs. However, it is said that those unhappy about the decision are limited to the local subsidiaries of major international patent holders (e.g. Microsoft), their association (NZICT) and their local business partners - as well as software patent attorneys. That is, the usual suspects.

In fact, Chris Auld, director of strategy and innovation at New Zealand based  Microsoft-specialist developer Intergen predicts in this article that any exclusion of software from the New Zealand patents regime will “suck the lifeblood” out of the New Zealand software development industry, since venture capitalists will be discouraged from investing in the industry and investors would be less willing to sink money into a project whose results will not have adequate legal protection.

He added that the justified criticism agains software patents should not have led to ban them at all but to overcome the under-resourcing of New Zealands Intellectual Property Office to especially improve prior-art searches and examination. Alternative ways of protecting software, such as copyright and licensing, would not offer as much protection as a patent, Mr Auld correctly analysed. He also criticised that the Commerce Select Committee has particularly listened to the open source lobby, which he finds rather passionate and religious about this issue - just like the campaigners in Europe one would like to add. 

Comparison to Europe: In the above referenced post in the New Zealand based Law & Technology blog, it is analysed in favour of the decision that
banning software patents will align New Zealand with the European Union and remove a significant threat to the local industry. The general unavailability of software patents in the EU does not seem to have held back the IT sector in that region (or indeed the development of the internet itself).
This view, however, is only partly correct, since software-related inventions may well (and comparatively easy) represent statutory subject-matter in the sence of Article 52 EPC (see my earlier posts here and here). Beyond that, such inventions may also be granted in Europe if the technical features of the claimed subject-matter solve a technical problem in a novel and inventive way. In this respect, the European approch on software-implemented inventions appears to be much more balanced and pragmatically as compared to New Zealand's stricht and open source influenced approach.

15 April 2010

Software patenting in developed software-producing countries

In the first issue of the newly founded Journal of Computer Science & Comunication of the Kurukshetra University, India, an article on Software Patent and Current Trends of Mr Garima Goswami and K.P. Yadav has been published.

The article tries to briefly sketch the current legal situation in software patenting in those economies, which possess the most developed software industries in the world, including the developed countries US, Europe (the EPC members), United Kingdom, Japan, and Australia, and the developing countries India, South Africa, Israel and Malaysia.

Even though the article is not up to date, it has been reproduced on the Invention Now blog and on in Dr. Tabrez Ahmad's blog in an uncritical and uncomented way - and without disclosing the original source and authors. Below please find the first part of a revision of that article which covers the current situation in the stated developed software-producing countries as far as possible: 

United States: Landmark decisions of the most developed software industry were Diamond v. Diehr, In re Alappat, In re Lowry, State Street Bank, In re Wait, and In re Bilski. In the 1994 en banc decision In re Alappat the CAFC held that a novel algorithm combined with a trivial physical step constitutes a novel physical device, such that a computing device on which a mathematical algorithm is loaded constitutes a "new machine", which is patentable. In re Lowry held that a data structure representing information on a computer's hard drive or memory is similarly to be treated as a patent-eligible physical device. Finally, in State Street Bank the CAFC ruled that a numerical calculation that produces a "useful, concrete and tangible result", such as a price, is patent-eligible.

Generally, according to the US approach on statutory subject-matter as expressed in State Street Bank, "an abstract idea by itself never satisfies the requirements of eligible subject matter under 35 U.S.C. Section 101 [, whereas] an abstract idea when practically applied to produce a useful, concrete and tangible result satisfies Section 101. In the following of that ruling, the UPSTO also opened patent protection to so called business methods as long as they are useful, e.g. a single click scheme to order goods in an online transaction, an online system of accounting, an online frequent buyer program, programs letting customers set their own price for hotel booking etc.

Now the CAFC superseded the State Street Bank ruling in its recent decision In re Bilski and reiterated the machine-or-transformation test as the applicable test for statutory subject-matter (see also here and here). 

Europe (EPC): According to Article 52 EPC especially mathematical methods, methods for doing business, and programs for computers as such are not regarded as inventions and are thus excluded from patententability. The same holds for many other member states of the European Patent Organisation (EPOrg). However, since the EPC is not a treaty of the European Union but of the independent EPOrg, there has not been a consistent practice among EU member states, which is why the EU Directive on Patentability of Computer-implemented Inventions was suggested by the European Commision in 2002 to harmonise national patent laws and practices concerning this aspect and finally rejected on 6 July 2005 by the European Parliament.

Formerly, the patentability of a software-implemented inventions depended on wheter or not the related teaching provides a technical contribution to the prior art, i.e. a further technical effect going beyond the normal physical interaction between the program and the computer. This "contribution approach", as e.g. referred to in T 52/85, has been considered a disguised inventive step assesment, since the claimed subject-matter had to contribute to the state of the art in a way not excluded from patentability as required by Article 52 EPC.

Then decisions such as T 258/03 and T 154/04 brought a shift in case law in that they made clear that the contribution approach was no longer applicable, since "the structure of the EPC [...] suggests that it should be possible to determine whether subject-matter is excluded under Article 52(2) EPC without any knowledge of the state of the art" (see also my earlier post here). As a consequence thereof, it now suffices that a physical entity or activity involves technical means to be considered as an invention within the meaning of Article 52(1) EPC. In the 2004 decision T 258/03 “Auction Method/Hitachi” the Boards of Appeal found that the plain executability of a computer program by a computer already renders the program sufficiently technical. That is, a software-related invention which at least involves the execution of a program on a processor is presently considered patentable subject-matter according to Article 52 EPC.

The subsequent examination of inventive step may also involve considerations as to technical character of the claimed subject-matter, since the comparatively broad interpretation of the term "invention" in the patentable subject-matter test requires an adjustment of the inventive step requirement in that non-technical features of a claim beeing patentable in principle cannot be taken into account for the assessment of inventive step, unless such features interact with the technical subject-matter to solve a technical problem. Likewise, the "state of the art" that is considered by the person skilled in the art under the framework of the problem-and-solution approach only comprises such technological fields that are not excluded from Article 52 EPC.

United Kingdom: Much like with the EPC, "programs for computers" are not patentable under UK patent law to the extent that a patent application relates to a computer program "as such". However,  according to current UK case law, an invention will only be regarded as statutory subject-matter if it provides a technical contribution to the prior art, as long as it is not excluded from patent protection, such as computer-implemented business processes. While this reminds one of the old EPO contribution approach before T 258/03, the UK Court of Appeal analysed in Aerotel and Macrossan that using the reasoning of most of the present EPO case law (e.g. T 258/03) would result in the same final conclusion as the UKPO contribution approach.

In reaction to the Astron Clinica decision of the UK High Court the UKIPO issued a Practice Note in Feb. 2008 according to which it will depart from the relatively strict ruling of Aerotel v Telco and Macrossan and return to their previous practice of permitting claims to computer programs if claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method were themselves allowable, such that the UKPO now generally considers the substance of the invention over the particular way it was claimed.

Compared to the EPO, the UKIPO traditionally has taken a very different approach to patentability of software-related inventions, since while the EPO general consideres an application relating to a computer-implemented method "an invention", the UKIPO usually rejects applications if the claimed subject-matter only contributes in that the invention is a computer program. Later, after the patentability of the subject-matter has been determined, the EPO only consider technical features when assessing inventive step, while the UKIPO considers any feature - technical or not - as being capable of contributing to an inventive step. 

Japan: The standards for granting software patents were revised in 1993. The Japanese approach to patentability of software-related inventions appears to be more liberal that the European approach, since it is sufficient in Japan to claim how exactly software elements interact or cooperate with hardware elements to achieve a result in order to meet the Japanese requirements of defining "a creation of technical ideas utilizing a law of nature", which in the context of software-related inventions means that a "utilization of nature law in information processing performed by software" has to be accompanied by "using hardware resources", which should be possible in most cases which do not exclusively relate to pure mathematical operations.

The crucial examination step will then be to check whether or not the claimed cooperation between software and hardware elements is novel and inventive. Software-related inventions may be considered obvious if they involve the application of an operation known in other fields, the addition of a commonly known means or replacement by an equivalent, the implementation in software of functions which were previously performed by hardware, or the systematisation of known human transactions.

For further reading please refer to my earlier post here or to the “Examination Guidelines for Inventions in Special Fields: Computer Software-Related Inventions” of the Japanese Patent Office (JPO).

Australia: In Australia, pure or abstract methods of doing business are not considered patentable, but if the method is implemented using a computer, it avoids the exclusion for business methods. Generally, a  patentable subject-matter is a useful man-made process or product, as distinct from an abstract idea or a purely artistic work. Australia was one of the first countries to broaden the patentability of computer software. Guidelines issued by the Australinan Patents Office, which were confirmed by the Federal Court in 1994, specified that a patent could be granted for software if it had a “commercially useful effect”. Examples of “commercially useful effects” include an improved image or a more effective way of performing a calculation, compression or storage routine.  For further reading, please consult the chapter on software and business method inventions in Australia in the very useful "Patent Law Handbook" of AIPLA or this article on software patents in Australia. 

In the second post on the underlying article I will try to briefly address the patentability of software-implemented inventions in the mentioned developing countries and, along the structure of the original article, provide a qualitative conclusion.

08 April 2010

USPTO's Ombudsman Pilot Program

It has been reported that the USPTO has established a one-year Ombudsman Pilot Project to assist applicants in getting the procecution process back on track when there is a serious obstacle in the normal prosecution process that might prevent a deservered grant, e.g. due to a technical misunderstanding which cannot be resolved with the examiner or his supervisor (see also the FAQ). 

An Ombudsman generally is a person who acts as a trusted intermediary between an organization and some internal or external constituency while representing the broad scope of constituent interests. The word 'Ombudsman' is based on a Swedish word meaning 'Agent'.

The Ombudsman Program is intended to enhance assistance to applicants or their representatives with issues that arise during patent application prosecution. However, the Ombudsman is not intended to circumvent normal communication between applicants and examiners but should only be contacted if none of the established USPTO customer service offices is appropriate to assist. In order to streamline the process the Ombudsman can be contacted via an e-mail interface to arrange an initial telephone interview, while any written communication received by the Ombudsman regarding the merits of an application will be placed in the application file.

That is, the Pilot Program is not designed to deal directly with the merits of an application but rather to respond to inquiries with respect to progression of the prosecution relating to the examination of a patent application and, where necessary, to refer the issue to the appropriate Official to resolve and handle the matter. Thus, if you think that your application is improperly handled during prosecution, the Ombudsman may provide a direct-line of communication to quickly resolve the matter.

and USPTO Director David Kappos' achievenments:
As anyone who has dealt with the PTO (or other governmental agencies) over the years knows, it can at times be quite frustrating. It is often difficult to know who at the PTO to contact regarding specific problems.  In fact, often the person you contact at the PTO doesn’t even know to whom to refer the problem.  In such cases, the problem can often be unresolved resulting in frustration for applicants. This program sounds like a great idea if it is well implemented.  Having a PTO director who has dealt with the agency from the other side is great.  I look forward to other initiatives to improve the agency’s ability to interact with applicants and resolve problems quickly and efficiently.