Out of the cloud of Cloud Computing. Adv. Ehud Hausman, Patent Attorney, Head of Hi-Tech Dept.

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1 Out of the cloud of Cloud Computing Adv. Ehud Hausman, Patent Attorney, Head of Hi-Tech Dept. September 14, 2011

2 Our Fields Of Expertise Patent and Designs - Hi-tech, Biotech and Pharma, Technology Trademarks, Commercial and IP legal consultations; copyright Foreign and Israeli filing AMONG OUR CLIENTS: entrepreneurs and start-up companies in growth and well-established firms multi-nationals, having their own IP strategy venture capital universities and research laboratories Large corporations like Mekorot defense industry and governmental authorities WE SPECIALIZE IN LONG-TERM IP STRATEGY THROUGHOUT ALL PHASES

well-established firms multi-nationals, having their own IP strategy venture capital universities and research laboratories

3 THE CHALLENGE Pursuing an infringer in a regular environment: Territory A User A User B User C Applicant INFRINGER!!

4 Pursuing an infringer in a "cloud" environment: Territory A infringer Territory B infringer infringer Applicant Territory C infringer

5 Conclusion: It is more difficult to pursue infringers in a cloud environment

6 Motivation for a solution You would like to pursue a single infringer (easier to pursue A as an infringer rather than A and B as joint infringers). You would like to "anchor" the infringement to a single territory, e.g. US or Germany and avoid argument that the infringement occurs "partially" in Germany and partially in the US

7 Solutions: Single infringer: Try to identify as many "sub-systems" that operate in "stand alone" mode and "claim" each of them separately (this may be implemented in the US due to its "multiple independent claims" system and also in China). In the US there are court guidelines how to tackle "joint infringements" (e.g. Centillion Data v Qwest )

US due to its "multiple independent claims" system and also in China).

8 Solutions (cont.): Territorial considerations: Take into account territorial approaches: In Germany they are less interested on whether ALL the actions are performed in Germany but rather that the actions performed outside of Germany and inside are done with the aim to perform the protected methodin Germany. The court held that any other interpretation would not make sense and allows infringers to circumvent patents.

interested on whether ALL the actions are performed in Germany but rather that the actions performed

9 Solutions (cont.): In the US there are guidelines how to obtain patent protection if certain elements reside outside the US (RIM)

10 Solutions (cont.): In the UK the question discussed in([2002] EWCA Civ 1702) was whether an internet based invention is infringed when the server on which the program is running is based outside the jurisdiction of the patent - in this case it was an EP(UK) patent and the server was based in Antigua -

internet based invention is infringed when the server on which the program

11 Solutions (cont.):...if the host computer is situated in Antigua and the terminal computer is in the United Kingdom, it is pertinent to ask who uses the claimed gaming system. The answer must be the punter. Where does he use it? There can be no doubt that he uses his terminal in the United Kingdom and it is not a misuse of language to say that he uses the host computer in the United Kingdom. It is the input to and output of the host computer that is important to the punter and in a real sense the punter uses the host computer in the United Kingdom even though it is situated in Antigua and operates in Antigua."

The answer must be the punter. Where does he use it?

12 Solutions (cont.): Alternative forms of protection : User interfaces, Designs in Europe you may get design protection for user interfaces Identify out of the cloud usage: protect pre-processing and postprocessing actions performed outside the cloud

13 Conclusions: As legal solutions always lag behind technology, it will take a while until a proper legal solution is found for cloud computing - the pendulum will continue to swing. Meanwhile until we get more clear guidelines from the courts: adapt your patent strategy to "cloud thinking - consult your IP advisors & follow the tips that we have provided here (at least one of them will hopefully work ). Solutions may vary depending upon the particular application

Meanwhile until we get more clear guidelines from the courts: adapt your patent strategy to "cloud thinking -

14 Conclusions (cont.): 40 years of legal precedence in the US (and 25 years in Europe) which support patent protection for computer implemented inventions will not disappear because a new technological solution (cloud) has been presented. In other words, patent protection for software related inventions has withstood the test of time notwithstanding major developments in the software technology. It is also likely to sustain the cloud revolution (see e.g. approach of German court)

implemented inventions will not disappear because a new technological solution (cloud) has been presented.

15 conclusions Bottom line: if you come to a conclusion that the current limitation of cloud computing applications obviates the need for patent protection on your innovations

16 in a few years time, you may find your business vulnerable compared to competitors who continued to enrich their patent portfolio.

17 THANK YOU! Adv. & Patent Attorney, Ehud Hausman, Head of Hi-Tech Dept. Reinhold Cohn Group

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