Intellectual Property Law in the Information Society Patents. Jarle Roar Sæbø

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1 Intellectual Property Law in the Information Society Patents Jarle Roar Sæbø

2 2 Trademarks revisited

3 Exhaustion Principle TFEU, article 34: Quantitative restrictions on imports and all measures having equivalent effect shall be prohibited between Member States. TMD, article 5 The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade. The following, inter alia, may be prohibited importing or exporting the goods under the sign 3

4 Exhaustion Principle, cont TMD, article 7 1. The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent. 2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market. 4

5 Exhaustion Principle, cont Main rule Goods already put on the market In the Community By the trademark owner or with his consent Exception Legitimate reason for the trademark owner to oppose the use Discussion PCs sold by HP in Sweden and imported by third party to Norway PCs sold by HP in Taiwan and imported by third party to Norway Further reading: Ebay vs L Oréal (Case C-324/09) Goods changed or impaired 5

6 The topic of today Patents what will it protect, how does it protect it, how do you get it and what good is it to society? 6

7 Lecture 5 Patents 23 September Lecturer: Jarle Roar Sæbø Function and purpose of patent protection (as compared with other IPR) Overview of international regulatory regime Overview of European Patent Convention Overview of relevant jurisprudence of European Patent Office Fate of proposed EU Directive on Patentability of Computer-Implemented Inventions Comparison of European approach with US approach 7

8 Patent Fundamentals Patent give certain exclusive rights to exploitation of inventions The exclusive rights is meant to give incentives to invent Patents are obtained by way of patent application The patent application will become public at a defined point in time Terms of protection: 20 years from filing (EPC 63 and TRIPS 33), but SPC Publication of patent applications makes new inventions known to the public Controversial discussion on whether patents promote or obstruct innovation Patent pools, patent trolls, outsiders, SME businesses 8

9 International Aspect of Patent Law Differences in legal environment will distort competition Obtaining patents in only one country is insufficient Obtaining patents in many countries is expensive for applicant Doing the assessment of patentability once per country is very ineffective Enforcement is cumbersome when addressing national courts 9

10 Legal Sources Paris Convention article 4 4quater Patent Co-operation Treaty (PCT) (WIPO) European Patent Convention (EPC) (European Patent Organisation) Trade Related Aspects of Intellectual Property (TRIPS): Part II Section 5 Future Legal Sources Agreement on the Unified Patent Court Regulation under Art.118(1) TFEU creating unitary patent protection Regulation under Art.118(2) TFEU on language arrangements 10

11 Overview PCT and EPC WIPO (PCT) receives patent applications and completes some initial tasks WIPO cannot grant patents, only forward to national patent authorities European Patent Organisation also authorised to grant patents However, result is a bouquet of national patents Comparison to Community Trade Mark - EPO patents only valid in designated countries - EPO patents may be invalidated in individual countries Application procedure: Examination, research, opposition etc: Filing date 11

12 The Patent Application Patent application must contain a description of the invention one or more patent claims any drawings referred to in the description or the claims an abstract Patent Office consider patentability; new and novel, etc Patent claims measured up against patentability requirements (novelty, inventive steps, etc.) Defines protected subject-matter if patent granted 12

13 Patent claims "1. A method in a data processing system for displaying information, wherein said data processing system includes a display and an operating system 7. A computer program product comprising a computer readable medium, having thereon: computer program code means, when said program is loaded 10. A computer readable medium, having a program recorded thereon, where the program is to make the computer execute procedure 13

14 Patentability, EPC article 52 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. 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. 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. 14

15 Patentability: Invention Not defined in the legislation, only (non-exhaustive) exclusions are mentioned Exclusion only subject matter as such If a technical character exists (alternatively a technical solution for a technical problem) then the exclusion may not apply Some words on software Exclusion means ordinary traits cannot provide technical character Further technical character is necessary I.a. the program will affect a physical entity, i.a. a picture 15

16 Patentability: Novelty Compares to what was known at the time of filing the patent application ( state of the art ). New defined in article 54: An invention shall be considered to be new if it does not form part of the state of the art. State of the art defined in 54(2): everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. See also 54(3). 16

17 Patentability: Inventive steps Inventive steps defined in article 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. Examination Guidelines of the EPO on the term obvious Obvious means does not go beyond the normal progress of technology Merely follows plainly or logically from the prior art Does not involve the exercise of any skill or ability above that to be expected of the person skilled in the art 17

18 Patentability: Industrial application Defined in article 57: An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture Entails some real limitations within biotechnology Industrial application requirement is interpreted very broadly ICT: Mass producing and selling a product is industrial application 18

19 Rights granted EPC article 64: Refers to local legislation; European patents = Local patents TRIPS Agreement article 28: A patent shall confer on its owner the following exclusive rights: (a) where the subject matter of a patent is a product, to prevent third parties not having the owner's consent from the acts of: making, using, offering for sale, selling, or importing for these purposes that product; (b) where the subject matter of a patent is a process, to prevent third parties not having the owner's consent from the act of using the process, and from the acts of: using, offering for sale, selling, or importing for these purposes at least the product obtained directly by that process. 19

20 Jarle Roar Sæbø