IP STRATEGIES TO PROTECT YOUR CLOUD TECHNOLOGY

Dr. Florian Michalek European Patent Attorney June 19, 2014

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“Idea” Generation Assessment of “Ideas” Product Development

Product Testing

Product Marketing

Product Distribution

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Product becomes public*

Innovation Process

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Innovation Process

Elements necessary for converting the idea into reality, how are you going to market it?

- product for sale - process for producing the product - small improvement on product - name of the product - package of the product - “special ingredient”

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PatentPatent

Trademark

Design

Secret Know-how

Utility Model

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Inventor Public

Invention

Patent = Exclusive Right

Patents: Why?

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THE DEAL: 20 years protection for disclosure of the invention

…to have an industrial and commercial advantage

Maximise return on investment in R&D Increase market share Further sources of income

Via

A marketable asset (convert ideas to reality: buy, sell, share, license)

Protect own technology developed inhouse Strategic use: blocking competition or friendly licensing Technology transfer instrument

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Patents: Why?

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What is a patent?

-The description has to involve a “technical teaching” instructing the skilled person how to solve a particular technical problem using particular technical means. The technical teaching must be sufficiently disclose to allow reproduction of the invention

Answer: A technical solution to a technical problem

- the prior art defines the technical problem … - the claim features (of the independent claims) define the technical solution

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Patents: How?

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Patents: How?

Must be

– New– Inventive– Susceptible of industrial application– Not expressly excluded from patent protection (for

example mathematical methods, or programs for computers as such)

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Patents: For?

Patents may be obtained for any technology

- Pharmaceuticals- Compositions- Synthetic methods- Polymers- Medical devices- …- …- Cloud technology?

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Cloud Technology: What is it?

Definition:

“a model of network computing where a program or application runs on a connected server or servers rather than on a local computing device such as a PC, tablet or smartphone” (source: wikipedia)

“A network of remote servers hosted on the Internet and used to store, manage, and process data in place of local servers or personal computers” (source: Oxford Dictionary)

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Cloud Technology: What is it?

Cloud Technology involves

- Hardware/Infrastructure

- Computing Platform

- Software/Applications

- Results obtained by cloud computing

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Patentability?

Confidentiality?

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Patents: Exclusions

Art. 52 EPC: (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. (2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information. (3) Paragraph 2 shall exclude 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.

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Cloud Platform and Software

- Use of internet

- Use of software to process data, specific applications, data bases

- Performing mathematical methods

PATENTABILITY EXCLUSION?

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NO:COMPUTER IMPLEMENTED INVENTION!

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Computer Implemented Inventions (CII)

General:

Software as such is excluded from patentability

An invention having technical character that is or may be implemented by a computer program is not excluded from patentability.

A computer implemented invention is one which involves the use of a computer, computer network or other programmable apparatus, where one or more features are realised wholly or partly by means of a computer program

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CII: Claims?

Protection possible for:

- Computer readable medium- Computer system- Computer program- Computer program product, storing a computer

program- Methods (e.g. of operating an apparatus)- Computer implemented methods

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CII - Example

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CII: Guidance?

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EPO EBA decision G 3/08

-The computer program has to show a further technical effect going beyond those effects which inevitably occur when any program is run, independent of the prior art (= need not be new!)

-A claim in the area of computer programs can avoid exclusion merely by explicitly mentioning the use of a computer or a computer-readable storage medium

-All features of a claim are considered to determine whether the claimed subject-matter has a technical character; then it is determined which claimed features contribute to that technical character (may include non-technical features!)

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CII

Computer implemented inventions involve

- Combination of technical and non-technical features- Non-technical features may even be the dominating part- Patentable if the overall result provided by the combination is technical- To be decided on a case by case basis

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-But: Once decided that a CII may be patentable, it still has to pass examination with regard to novelty and inventive step!

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CII – Cloud Technology

Platform/Software:

Cloud Computing (Platform and Software solutions) may in principle be patentable if at least one technical feature is involved and the subject-matter has technical character

But more importantly:Is it novel?Is it inventive?Are the technical and the non-technical parts sufficiently described?

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CII

Example: EP 2 394 222 B1METHOD FOR TRANSMITTING VIRTUALIZED DATA IN CLOUD COMPUTING ENVIRONMENT

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Bioinformatics

-Methods and software tools for storing, retrieving, organising and analysing biological data

-Combination of computer science, statistics, mathematics and engineering to study biological data and processes

-Computing may be carried out in the cloud

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Bioinformatics: T 0784/06

EPO TBA decision T 0784/06

Invention directed to an automatic genotype determination

Method of determining the genotype at a locus within genetic material obtained from a biological sample, comprising the stepsA. Reacting the material at the locus to produce a first reaction value indicative of the presence of a given allele at the locusB. Forming a data set including the first reaction valueC. Establishing a distribution set of probability distributions, including at least one distribution, associating hypothetical reaction values with corresponding probabilities for each genotype of interest at the locusD. Applying the first reaction value to each pertinent probability distribution to determine a measure of the conditional probability of each genotype of interest at the locusE. Determining the genotype based on the data obtained from step D.

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Bioinformatics: T 0784/06

Step A: technicalSteps B to E: mental activities based on the application of mathematical methods

Hence, combination of technical and non-technical features

Decisive question:The mental activities interact with the technical activity so as to yield a tangible technical result?

Answer: No!The application failed to supply a reasonably complete and sufficient description of the software used for the data treatment

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Bioinformatics: T 2050/07

EPO TBA decision T 2050/07

Invention directed to DNA mixture analysis

A method of analysing a DNA sample that contains genetic material from at least two individuals to determine a probability distribution of genotype likelihood or weight in the sample, comprising the steps:A. Amplifying the DNA sample (…)B. Detecting signal peak amounts (…) to produce DNA length and concentration estimates from the sampleC. Resolving the estimates into one or more component genotypes (…) and calculating a probability distribution (…)D. determining, using the probability distribution of the data, a probability distribution of genotype likelihood or weight in the DNA sample.

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Bioinformatics: T 2050/07

Steps A and B: technical because they are performed using dedicated laboratory equipment and devices

Distinguished from the prior art only by non-technical features.

Decisive Question:Can the non-technical features make a technical contribution?

Answer: Yes!The application showed how the distinguishing features should be implemented and how they interact with the remaining steps in order to provide a common technical result: a genotype estimate with an improved confidence

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Cloud Technology: Confidentiality?

Users are interested in the results of cloud computing (specific molecules, etc.)

Can they be sure that their work remains confidential?Cloud provider will offer secure environment, but is the internet secure?

Who else is listening?NSA, Wikileaks, Hackers, …..

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Cloud Technology: Confidentiality?

First of all:Take all necessary measures to secure your research

Ensure-In-house confidentiality (secure intranet)-Secure internet access-Secure environment for external service providers-Control all your disclosures (press releases, brochures, publications, etc.)

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Disclosures on the internet – T 1553/06

EPO TBA decision T 1553/06

-Test case by Koninklijke Philips Electronics and DSM IP Assets

-Situation: Two documents could be found before the filing date on the internet after entering certain strings of keywords in a public search engine; no security measurements applied

-Were the documents publicly available?

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Disclosures on the internet – T 1553/06

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Decision:-That a document exists in internet goes not beyond a mere theoretically accessability

-There must be a practical possibility of having access-Requirements:a)The document can be found with the help of a public search engine by using one or more keywords which all related to the essence of the content of that documentb)The document remained accessible for a period of time long enough for a member of the public not bound to secrecy to have direct and unambiguous access to the document

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Emails – T 0002/09

EPO TBA decision T 0002/09

-Another test case by Koninklijke Philips Electronics and DSM IP Assets

-Situation: Unencrypted email sent before the filing date disclosing the solution to a specific problem

-Since emails might be intercepted, was it publicly available?

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Emails – T 0002/09

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Decision:

-Unlawful interception of an email is analogous to the breach of a confidentiality agreement

-Lawful interception of an email by an internet service provider is covered by law of confidence and prohibits their disclosure

-A specific instance of divulgation of the email has to be proven

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Cloud Technology: Summary

Cloud Technology is patentable if the claimed subject-matter has technical character, is new, and inventive

Ensure that all aspects of the invention are sufficiently disclosed and describe interactions between the technical and non-technical features

Confidentiality has to be ensured from both the user and the cloud service provider, but the user has ultimate responsibility to make sure that his research remains confidential

Data exchange between user and cloud service provider should be covered by the law of confidentiality

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- As quick as possible (secure first filing date)

- As late as necessary (obtain enough details from a real working prototype to ensure complete technical teaching)

- Sign non-disclosure agreement with third parties (clients, service providers) at least for limited period to maintain confidentiality

Notes

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- If you suspect a confidentiality breach be fast to file a patent application within six months after such a confidentiality breach

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“Idea” Generation Assessment of “Ideas” Product Development

Product Testing

Product Marketing

Product Distribution

[ ]

*

Product becomes public

GET YOUR IP EXPERT INVOLVED AS SOON AS POSSIBLE

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Innovation Process

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