Post on 24-Jan-2015
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Michael O’Connor
Partner, Cruickshank Intellectual Property Attorneys
European Patent Attorney
Software Patents – Practical Overview
April 27th 2010
Irish Software Innovation Network
Topics for Discussion:
• Patentability of Software
• Examples of Patented Software Inventions
• Enforcement of Software Patents
• Copyright Vs. Patents
• Why patent software - A Case Study
• Trademarks
“Software is not patentable, right?”
Tell that to Microsoft®……
• April 2009, Uniloc® awarded US$388 million
• May 2009, i4i® awarded US$200 million
• May 2009, Parallel Networks® issue infringement proceedings
• June 2009, Microsoft® appeal US$358 million award to Alcatel Lucent®
More on these later…
Patentability of Software
• Software patentable in United States and Europe
• Common misconception that software not patentable in Europe
• European Patent Office (EPO) granting software patents since
mid-1980s
Where does the misconception that software is not patentable in
Europe come from?
• Historical Issues?
• Text of the European Patent Convention (EPC)?
• European Parliament Vote on CII Directive on 6th July 2005?
• Relatively low grant rates?
Current Examination Practice of the EPO
• Patentability requirements for computer programs are the same in principle as for other inventions
• Patents will be granted where a non-obvious technical solutionto a technical problem can be identified
Patentability of Software
• Technical problems include (although not limited to):
• Speed of data transmission
• Data security
• Data transmission integrity
• Improved interfaces
• Speed of data processing
• Improvements to memory storage
Patentability of Software
• Non technical problems include (although not limited to):
• Mere automation of an existing process
• Purely administrative functions
• Implementing a new business process on a computer (without any technical problem)
Examples of patented software inventions
EP1,678,607 – Symbian
• Dynamic Link Library functionality
• Some functions are named, other functions are numbered
• Provided technical advantages
• Refused initially in UK, granted on appeal
Examples of patented software inventions
EP1,307,807 – Symbian
• User interface functionality
• Most popular option presented
in middle of a list to prevent
unnecessary scrolling
• Next most popular option at one
end of list to enable rapid
selection
Examples of patented software inventions
EP0,927,945 – Amazon.Com
• “Gift Ordering” Patent
• Users sent a gift recipients email address to the server which in turn contacted the recipient to get a postal address for delivery of the gift
• Granted during examination
• Revoked during opposition
• Wouldn’t be granted now
Examples of patented software inventions
US 5,960,411 – Amazon.Com
• “One Click” Patent
• Users data including billing details and delivery address was stored in a server system and all they had to do to order a good was click on it once instead of use a shopping cart ordering model
• EP0,902,381 withdrawn during prosecution at European Patent Office
Enforcement of Software Patents – Remember Microsoft?
• April 2009, Uniloc® awarded US$388 million
• May 2009, i4i® awarded US$200 million
• May 2009, Parallel Networks® issue infringement proceedings
• June 2009, Microsoft® appeal US$358 million award to Alcatel
Lucent®
Examples of enforcing software patents
US 5,490, 216 – Uniloc
• Prevents unauthorised use or
copying of programs
• Windows® XP operating system
and Office® infringed
• $388 million in damages
• Triple damages?
• David Vs. Goliath
Examples of enforcing software patents
US 5,787,449 – i4i
• System and method for
manipulation of architecture
and content of a document
• Word 2003® and Word 2007®
use XML in a way that infringed
• $200 million in damages
• Raised to $290 million
• Injunction on Word!
• Received financial support to
bring proceedings
Examples of enforcing software patents
US 5,894,554 – Parallel Networks
• System for managing dynamic
web page requests
• A separate page server is used
to free up a web server
• Parallel Networks now
effectively a patent holding
company
• Parallel Networks have
previously sued Netflix,
Amazon.com, Orbitz and
Priceline.com
Examples of enforcing software patents
US 4,763,356 – Alcatel Lucent
• User interface functionality –form entry system
• Users click on a date rather than typing it in to access it in Outlook® Calendar
• Outlook® infringed
• $358 million in damages
• Increased to $511 million to include interest
• Goliath Vs. Goliath
• Successful (-ish) appeal
Copyright Vs Patenting
Copyright
• does not protect the idea itself but rather only protects the specific expression of the idea
• prevents copying of your code – requires proof that copying actually took place
• does not prevent someone from programming their own code to do the same thing
Copyright Vs Patenting
Patents
• protect the invention not simply the specific implementation of
that invention
• prevent not just copying of the code but any implementation
• do not require you to prove that copying actually took place
Copyright Vs Patenting
• Common misconceptions about software patents:
• They can be easily worked around (just ask Microsoft®)
• Making minor changes to the code will avoid infringement
• Using a different programming language will avoid infringement
• Writing code from scratch will avoid infringement
Why Patent Software – A Case Study
• Company A invents a new application called a “word processor”
• Company A does not file a patent application for their invention
• Company A relies on first mover advantage and copyright
protection
• Company A generates a lucrative market for “word processors”
and competitors begin to enter the market
Why Patent Software – A Case Study
• Company B develops their own “word processor” application
with new functionality which they call “cut and paste” that allows
them to move blocks of text around in the document
• Company B files a patent application for their “word processor”
with “cut and paste”
• Company B enters the market and soon “cut and paste”
functionality is deemed a must-have for any “word processor”
Why Patent Software – A Case Study
• What becomes of Company A?
• Company A’s word processor is now obsolete.
• Company A cannot provide a “word processor” with “cut and
paste” functionality required by the market as they would
infringe Company B’s patent.
• Company A loses their market share to Company B unless
Company A can buy or licence Company B’s technology.
Why Patent Software – A Case Study
• What if Company A had patented their “word processor”?
• Company A could prevent company B from entering into the
market altogether
• Company A could enter into a cross licensing deal with
Company B on favourable terms so that they could use the “cut
and paste” functionality in their “word processor”
Trade Marks
• A Trade Mark is any sign, capable of being represented
graphically, that is capable of distinguishing the goods or
services of one undertaking from those of another
• Trade Marks include for example words, logos, sounds, get up,
smells, shapes and colours
• Perhaps the most valuable asset that any company possesses
Trade Marks/Brands - what are they worth?
$12 Billion
$14 Billion
Trade Marks/Brands - what are they worth?
$32 Billion
$57 Billion
Conclusions
• Software inventions are patentable
• Software patents have been granted for numerous disparate inventions from user interfaces to dynamic link library nomenclature structures to e-commerce applications
• Patent protection offers more robust protection against infringers than copyright protection
• Software patents are enforceable
For further information, visit www.cruickshank.ie or contact
moconnor@cruickshank.ie
Thank you for your attention