Patent: Subject matter
What is the rationale of the patent system
An attempt to foster innovation by granting exclusionary rights. The cost of creating knowledge is hight, but once created it is easy to adopt - therefore it is granted protection to eliminate free rider problems.
What is patentable inventions?
Art. 52 EPC Any invention in all fields of technology. provided they are new, involve an inventive step and are susceptible of industrial application
What are not regarded as an invention within the EPC?
Art. 52. 2 (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
What is the main outcome of the Vicom ccase T 0208/84
Concerned patentability of a computer program, that was more or less a mathematical process than a technical process. In order to make a computer program patentable it must have a technical effect implementing the method. It could be as simple as a computer.
Computer program product/ IBN T 1173/97
Concerned the interpretation of EPC art. 52.2 and 52.3. A computer program must be considered inventions within EPC art. 52.1 and may be subject matter of a patent provided where the software on a computer is the only means or one of the necessary means of obtaining a technical effect. All computer programs must be considered inventions within art. 52.1 EPC provided they are able to produce a technical effect.
T 641/00 COMVIK - Two entities
Concerns the patentable subject matter requirement. Significant decision on patentability of business methods and computer implemented invention. A computer implemented invention involves computer networks wherein at least one feature is realised by means of a computer program. • 1. An invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step.
What is the three approaches to patentability of software in caselaw of the EPO?
Contribution approach (if the claimed subject matter made a contribution to the state of the art Further technical effect approach (does the claimed invention produce a further technical effect? T 1173/97 There is a further technical effect when further technical considerations were required for writing the software G 3/08 If software enhances the functioning of the hardware that goes beyond basic software/hardware interaction, there is a further technical effect approach Combination of hardware and software approach - subject matter constitutes an invention if non-technical elements are combined with technical elements. Even the addition of a computer readable medium on which the software is stored has been deemed sufficient to pass the patentability hurdle.
Referring decision T 0489/14
Converned patentability of a computer implemented method of modelling pedestrian crowd movement in a simulation. The "simulation" could be carried out as a mental act. It is well established that a method claim involving technical means is not excluded from patentability. The inventive step can be based only on the technical part of the invention. The appellant argued, that by using the computer to run the simulation, a further technical effect was achieved. A technical effect requires at a minimum direct link with a physical reality. However the method of testing by simulation may be awarded protection as it is the approach that prevails in the jurisprudence
What are the exceptions to patentability?
EPC art. 53 Contrary to ordre public Plant or animal varieties Methods for treatment of the human body Exceptions to patentability European patents shall not be granted in respect of: (a) inventions the commercial exploitation of which would be contrary to "ordre public" or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States; (b) plant or animal varieties or essentially biological processes for the pro-duction of plants or animals; this provision shall not apply to microbiological processes or the products thereof; (c) methods for treatment of the human or animal body by surgery or ther-apy and diagnostic methods practised on the human or animal body; this provision shall not apply to products, in particular substances or composi-tions, for use in any of these methods.
How is the term "invention" to be understodd?
EPC art. 56 Inventive step Nobody has come up with a perfect definiton of invention. However, the invention must be technical or produce a technical effect in order to be patentable. Inventive step 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. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.
What are the main parts of a Danish and EP patents?
EPC art. 78 Abstract (78.1.e) Description of the invention (78.1.b) One or more claims art. 78.1.C Any drawing referred to in the description or claims art. 78.1.d (1) A European patent application shall contain: (a) a request for the grant of a European patent; (b) a description of the invention; (c) one or more claims; (d) any drawings referred to in the description or the claims; (e) an abstract, and satisfy the requirements laid down in the Implementing Regulations.
Under what EPC article is the patent grand or refused?
EPC art. 97 (1) If the Examining Division is of the opinion that the European patent application and the invention to which it relates meet the requirements of this Convention, it shall decide to grant a European patent, provided that the conditions laid down in the Implementing Regulations are fulfilled. (2) If the Examining Division is of the opinion that the European patent application or the invention to which it relates does not meet the requirements of this Convention, it shall refuse the application unless this Convention provides for a different legal consequence. (3) The decision to grant a European patent shall take effect on the date on which the mention of the grant is published in the European Patent Bul-letin.
What is the issue with patentability of software related inventions?
Excluded by EPC art. 52. c (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 ac-tivities referred to therein only to the extent to which a European patent ap-plication or
What is externalities?
External benefits, benefits created for others to take advantage of the efforts made by previous innovators. Part of the first innovator social value he creates is the boost given to other innovator to develop new products based on the technology of the first innovator. The first innovators will only have incentive to invest if they recieve some the social surplus proved by the second generation product. Comes back to the scope of protection. If too much is held by the first inventor, no second generation will rise.
Name the different types of claims to be made in patent application
Independent claims Dependent claims Product claims (absolutely product protection, protects all uses of the product, and all ways to make the product Process claims Product by process claims Markush claims First medical indication claims Second and further medical indication claims Swiss claims
T 0258/03 "Automatic auction method/HITACHI"
Interpretation of EPC art. 52.1 and 52.2 and effects the intentions technical character and inventive step. A method involving technical means is an invention with the meaning of EPC art. 52.1 The technical features may in themselves turn out to fulfill all requirements of EPC art. 52.1 In the Boards view activities falling within the notion of non-invention "as such" would typically represent purely abstract concepts devoid of any technical implications
What is the "fishing problem"?
It is the tragedy of the commons - many innovaters will invest in the same type of knowledge hoping to be the first to obtain the exclusive right. - That becomes a huge waste og resources.
What are the requirements of the description in the patent application?
Must describe the invention sufficiently clear and complete to be carried out by a person skilled in the art. CF. art. 83 EPC Article 8378 Disclosure of the invention The European patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
Patentability of computer programs in the US
NO exclusions of computer programs § 101 US patent Act However judicially created exceptions to patentability. Excluded from patent protection are laws of nature, natural phenomena and abstract idea The judicially created exceptions must be interpreted narrowly Merely adding a computer does not bring the software out of the "abstract idea exception"
What types of patents exist?
National patent EP patent European patent with effect in Denmark: treated as being granted by the Danish Patent Office International patent application (PCT) enters phase for substantive examination after max 31 months.
What is patent thickets?
Our patent system is creating a patent thichet of overlapping IP rights. Strong patent rights can stifle not encourge innovation due to cumulative innovation and multiple blocking patents. This is known af the tragedy of the commons where multiple gatekeepers must grant access, before a ressource can be used.
How long does a patent last?
Patent is a limited monopoly that last 20 years in return for the disclosure of technical information
US test? Mayo test
Step 1 is the claim to a process, machine, manufacture or composition of matters? Yes - Proceed to step 2a 2a Is the claim directed to a law of naturem a natural phenomenon, or an abstract idea (No it quilifies) Yes - step 2B Does the claim recite additional elements that amounts to significantly more than the judicial exception (The trap if yes it is qualifies, if not it is not eligible.
What is our main statutory material?
The EPC (Convention on the Grant of European patens amended on 29.11.2000
What is the appropriability problem?
The full value of a piece of unprotected information cannot be realized by its original possessor, supply side. Demand side, indivisibility: the value of information for the purchaser is not known until he has the information. You can't divulge the information without giving it away. Inventor's paradox: small inventor must find money. Potential buyer or investor is only interested if he knows what the invention is, obligation to disclose details. The other party can become competitor by producing the product. Patent system solves appropriability problem. By providing an exclusionary right in the form of patents, it is guaranteed that others cannot reap where they have not sown.
What are the positive effects of the patent system
The monopolyt provided by patens protection solves the appropriability problem as firms can recoup their investment of creating knowledge Solves the free riding problem Solves inventors paradox Prevents others from reaping what they have not sown Stimulates rent seeking and limits rent seeking as competitors are forced to redirect their RnD.
What is the patent scope
The scope of protection offered by the patent. It must be broad enough to compensate the cost of invention. Should not extend further than is necessary to accomplish this objective as too broad scope reduce incentives for others to make improvements. There are both advantages and disadvantages of a broad scope of protection.
What is the function of the claims in the patent appliaction?
To define the invention claimed Sets the scope of legal protection conferred by the patent Play the #1 role in patents law Claims are arranged hierarchicallu with the broadest claim at the top and then narrowing down.
