Patentability of Computer Software and Business Methods

Transcription

1 WIPO-MOST Itermediate Traiig Course o Practical Itellectual Property Issues i Busiess November 10 to 14, 2003 Patetability of Computer Software ad Busiess Methods Tomoko Miyamoto Patet Law Sectio Patet Policy Departmet World Itellectual Property Orgaizatio

2 Hardware Software Hardware (calculator) Hardware cotrolled by software (washig machie) Hardware the techical feature of which is characterized by software (Chiese word processig machie) Software embodied o a machie readable medium (CD-ROM for Chiese word processig) Software through etwork (Iteractive game software dowloaded from a Iteret server)

3 Computer program Necessity of IPR protectio Copyright protectio TRIPS Article 10(1) WCT Article 4 Limitatio A Computer program performs fuctios through expressio.

4 Computer-implemeted ivetios are treated i the same maer uder the law as ay other ivetios. Coditios of Patetability Patetable subject matter Novelty Ivetive step (No-obviousess) Idustrial applicatio (Utility) Sufficiet disclosure

5 Busiess methods Off-lie busiess methods O-lie busiess methods Ecoomic impact of e-commerce, fiacial busiess Questios * Compatible with the curret patet law? * What are software/busiess methods related ivetios that merit patet protectio?

6 Article 27.1 TRIPS Agreemet I priciple, Patets shall be available for ay ivetios, whether product or process, i all fields of techology, provided that they are ew, ivolve a ivetive step ad are capable of idustrial applicatio. Article 27.2 ad 3 do ot expressly provide the exclusio of computer programs or busiess methods i geeral from patetability. No defiitio of the terms ivetio ad techology

7 Argumets FOR software patets Copyright does ot protect ideas behid software. Promote developmet of the software idustry ad computer-related idustry. Software also exhibits techical behavior. Advatages for SMEs ad idepedet software developers.

8 Argumets AGAINST software patets Duplicatio with copyright protectio. Ihibit competitio. cumulative, sequetial iovatio iteroperability betwee programs, systems ad etworks SMEs ad idepedet software developers ca t afford patets.

9 Argumets cocerig busiess method patets FOR Iovative busiess methods equally cotribute to the ecoomic developmet. AGAINST Distort competitio fudametal role to ecoomy ot proportioal to exclusive patet rights Practical difficulties quality of patets (expertise, prior art, ivetive step, sufficiet disclosure)

10 Issues Ivetios uder the patet law should have a techical character? If so, what kid of techicality is required? Formats of claims? A computer system comprisig A method of processig Chiese words i a computer comprisig A computer readable medium havig stored thereo computer-executable istructios for performig the steps comprisig A computer program product comprisig How to overcome practical difficulties?

11 US - patetable subject matter 35 U.S.C. Sectio 101 Whoever ivets or discovers ay ew ad useful process, machie, maufacture, or compositio of matter, or ay ew ad useful improvemet thereof, may obtai a patet therefore process = process, art or methods ; icludes a ew use of a kow process, machie, maufacture, compositio of matter, or material No techical effect or techical cotributio requiremet

12 US - Exceptios are set by case laws Diamod vs Chakrabarty: aythig uder the su that is made by ma is patetable --- life form Diamod vs Diehr: exceptios to patetability laws of ature, abstract ideas, atural pheomea I re Allapat: practical applicatio of a abstract idea, however, is statutory

13 I re Alappat 33 F.3d 1536 [Fed. Cir.1994] Software program to create a smooth display of umeric data o a oscilloscope A ivetio that produces a useful, cocrete ad tagible result is patetable subject matter If the claimed subject matter as a whole is a disembodied mathematical cocept, it is ot patetable.

14 US - busiess methods (1) A busiess method that provides a useful, cocrete ad tagible result is patetable subject matter. (State Street Bak v. Sigature Fiacial, 1998) Ex.1: A system to permit idividual mutual fuds (spokes) to pool their assets i a ivestmet portfolio (hub) orgaized as a partership Ex.2: Amazo s oe-click shoppig Ex.3: Virtual sales persoel --> Flood of busiess method related patet applicatios

15 US - busiess methods (2) USPTO s iitiative collectio of busiess methods prior art traiig examiers; double check public outreach Fiscal Year * Applicatios Filed Patets Issued Number of applicatios filed ad patets issued i the Uited States of America uder Class 705 (Source: USPTO). *The data i fiscal year 2002 are a estimate.

16 Europe (1) Europea Patet Covetio (EPC) Article 52(1) Europea patets shall be grated for ay ivetios which are susceptible of idustrial applicatio, which are ew ad which ivolve a ivetive step. Article 52(2) ad (3) No exhaustive list of subject matter ot regarded as ivetios, icludig - schemes, rules ad methods for doig busiess as such; - programs for computers as such.

17 Europe - techical character Ivetios must be of techical character. - Must relate to a techical field (Rule 27(1)) - Must be cocered with a techical problem (Rule 27(1)) - Must have techical features i terms of which the matter for which protectio is sought ca be defied i the claim (Rule 29(1))? Article 52(2): Subject matter ot regarded as ivetios ature = abstracts, o-techical 17

18 Europe - techical character The claimed subject matter has a techical character. Apparatus claim Method claim The cotributio to the state of the art (ivetive step) has a techical character. = A ivetio solves a techical problem. Ex. - faster/simplified/more efficiet computig - reliability/safety/speed i computer commuicatio is improved. Various claim formats accepted (IBM case, 1997).

19 Europe - EU developmet Draft Directive o the Patetability of Computer-implemeted Ivetios Harmoizig the iterpretatio of patetability requiremets re. Computer implemeted ivetios amog the EU member States. Strog oppositios to the Europea Commissio s draft by ope source software supporters ad by small software developers

20 Chia (1) A Ivetio meas ay ew techical solutio relatig to a product, a process or improvemet thereof. Rules ad methods for metal activities are ot patetable subject matter. Examiatio Guidelies Methods of busiess operatio ad fiacial maagemet ad computer program as such A claimed ivetio ivolves oly a computer program per se, or merely a computer program recorded o a carrier = Not patetable subject matter

21 Chia: Exam. Guidelies If the methods or computer programs go beyod mere rules ad methods of metal activities, they may be patetable. Utilize techical meas (use the laws of ature) Solve ay techical problem Provide techical effect Claimed ivetio as a whole Ex.1: A ivetio usig a computer program for measurig the viscosity of liquid. Ex.2: A ivetio employig a virtual memory maagemet program to icrease the capacity ad the processig speed

22 Patet eforcemet issues IPR = territoriality How to determie the uauthorized use of a patet? Pateted product (etwork system) cosists of elemets located i differet territories. Pateted process (methods to process data via etwork) cosists of elemets processed i differet territories. Meashe case (UK)

23 Debates cotiue... Creatio Use/Licese Disclosure of ivetios Grat of Patet Objectives of Patet System Promote ecoomic developmet Balace betwee patetee s rights ad public iterest

24 Thak you!