Software and the law
Software and the law

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Software and the law

3.3 Patents and software in the EU

The following videos present excerpts from an interview with Dr Maria Fernández-Ferreira, a patent examiner at the European Patent Office, in which she discusses different aspects of patents and their applicability to software inventions. Video 1 explains what a patent is and how patents are relevant to software engineers.

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Transcript: Video 1 Patents and their relevance to software engineers

Interviewer
So in general, what is a patent, and why are they important?
Maria Fernández-Ferreira
A patent is a way of protecting your intellectual property – it is the one which gives you stronger protection. It’s not the only form of protection that exists, but it is definitely the one that gives you the strongest form of protection because – basically – it’s a monopoly on the use of your invention.
Interviewer
What other options do I have to protect my intellectual property?
Maria Fernández-Ferreira
You can go to trademarks. You can go to copyright. You have patents. You have utility models, for example. So the type of protection will depend on the type of product you have, of course, and also on the business model you are interested in. Eventually, you might have a product which has different protections applied to it – be it, for example, a trademark or a patent, etc.
Interviewer
In principle, software programs themselves are not patentable. So why is patent law relevant to software engineers?
Maria Fernández-Ferreira
Well, first of all, the laws are different in different areas of the world. So concerning the European Patent Office – or, the European Patent Convention establishes that programs for computers as such are not patentable.
However, if you have a computer program or software which has some further technical effect, then you might get a patent granted for that computer program. So it is not an automatic exclusion. It is indeed an exclusion in certain circumstances, but it is still possible to get a patent. Of course, software can also be protected by copyright. And you have to decide when you have a software product whether it pays off to go for a patent – or is it enough for you to have a copyright?
If I’m a software engineer who thinks he has a computer program – some computer-based invention ... how would I go about obtaining a patent?
I would advise you to consult the official EPO website, www.epo.org, because they provide very good information for potential applicants. You can see, for example, how much are the costs? What are the time frames involved? What are the pitfalls that ...? You should be careful before filing because many people who are not familiar with patent law, they ... for example, they disclose part of their invention, and then they apply for a patent, and they find out that they cannot get a patent because they already have disclosed it. So there are a series of pitfalls, and they are very well described in this website. So my first recommendation is have a look – see whether you should apply for a patent or not.
End transcript: Video 1 Patents and their relevance to software engineers
Video 1 Patents and their relevance to software engineers
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For another excellent discussion of patents see Thomas Gordon and Arthur Cookfair’s Patent Fundamentals for Scientists and Engineers (2000). A lot of this advice is relevant to software engineers – except that the book predates recent developments that make software patentable.

To be patentable an invention must be novel. Previously existing inventions are known as ‘prior art’ and would have been disclosed and made public, perhaps by means of publication or embodiment in a product or earlier patent. If novel, the invention must not be obvious ‘to one of ordinary skill in the art’, and though it may resemble some pre-existing invention it must contain non-obvious new features. Furthermore, the invention must be both useful and operable.

Patent laws usually circumscribe what can be patented. Historically this has constituted inventions and discoveries, human-made products, compositions of matter, and processing methods. To this have been added designs (in the sense of ornamental appearance) and, more recently, plants, following developments in genetic engineering. Software was initially explicitly excluded, as were methods of doing business, and ‘mere printed matter’. However, following initiatives in the US and then in Europe, software is now becoming patentable. In the next interview excerpt, Video 2, Dr Fernández-Ferreira explains how software can be patented and how requirements differ across the world.

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Transcript: Video 2 Patenting software

Maria Fernández-Ferreira
In the case of the European Patent Office, it is required that an invention has something that we call ‘technical character’. And in the case of computers we have to have some ... either ‘further technical effect’ or we have to be able to derive from the application some technical problem which requires technical means to solve. And the solution has to be inventive.
So normally, when we speak about computer-implemented inventions, very often we encounter aspects which are technical and aspects which are not technical. We try to separate them both. We have to check whether there is some interaction between the two parts. And then from the technical part we derive a technical problem, from the non-technical part we derive specifications requirements.
And then we try to look for prior art. We decide what is the technical problem being solved, and we assess the technical part based on the prior art and using the requirements specification as something that a person skilled in the art is aware of. Then we decide whether there is inventive step or not, and eventually grant or refuse the patent.
Interviewer
Could you give me an example of something that wasn’t granted a patent?
Maria Fernández-Ferreira
I cannot give you, out of my head, a concrete patent that was rejected. I can give you maybe, somehow ... artificial example.
Interviewer
Sure.
Maria Fernández-Ferreira
If you have – for example – a method for conducting an auction online, OK? So you have the technical infrastructure behind. So you need to have a network of computers. You might even need to solve technical problems concerning, for example, submitting a bid.
However, if your invention lays on defining a new set of rules for conducting the auction – so you defined rules on how a person can, for example, bid, what are the criteria they have to satisfy – then the invention is not on the technical part, but it is on the business part. Basically, this means that if you already would have a technical infrastructure for conducting auctions, the only thing you would need to modify are the particular rules for conducting the auction itself, not the technical infrastructure. You still would need the same type of network, same type of communications. So in this case a system – even containing computers, containing software – would not be considered inventive because the invention would not lay on the technical aspects, but on the business part.
End transcript: Video 2 Patenting software
Video 2 Patenting software
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Gaining copyright requires no particular action by an author or creator – the very act of creation is sufficient, though it is advisable to include a copyright statement (as is commonly seen at the front of books). In contrast, acquiring a patent can be a lengthy and expensive procedure. However, immediate protection can be obtained by filing a provisional patent application. An alternative to filing a patent, if the cost makes the investment unacceptable, is disclosing it; this stops others patenting the same idea. It has become standard practice in many major industrial companies to have a ‘technical disclosure’ publication specifically for this purpose.

A patent is applied for by the inventor at the national patent office, following procedures and regulations laid down by national or international law. The invention needs to be specified in sufficient detail – including any appropriate drawings – that anyone in the technological area would be able to build the invention. One means of actually constructing the invention also needs to be provided. The invention’s actual novelty needs to be claimed explicitly, and this is what will be examined during the registration process. Thus, in order to establish a patent, an extensive search must be made of prior art in order to establish novelty. In the final excerpt, Video 3, Dr Fernández-Ferreira describes how the patents process works in the European Union.

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Transcript: Video 3 The patents process in the European Union

Interviewer
Could you describe the new European patent that’s about to be introduced, and how that might change the way patents are granted – particularly for software?
Maria Fernández-Ferreira
Well, the unitary patent is going to be a patent from the European Community. The procedure for getting a patent is going to be very similar to the procedure at the EPO – because the EPO will be, in fact, carrying out the work on behalf of the European patent.
There are differences. The European patent will be automatically valid in the 25 countries which have ratified it. So there will be a single – let’s say – administrative point.
They will also be easier. Once you get the grant you will not have to translate the claims – as we did at European Patent Office – to other official languages. So that will reduce the costs.
And also very important, there will be a single point for litigation once the patent has passed the opposition period. So the examination, the search the examination of the application is going to be carried out in a similar way. But once the patent is granted and the opposition period is finished, there will be a single court – a unified court – which will deal with the litigation.
The current system so, if you have a patent from the European Patent Office, once the opposition period is finished, if you want to litigate, you will have to litigate individually in each country state. With the European patent that will no longer be the case. And that’s – in my opinion – a very big difference.
As far as software is concerned there will not be essentially any differences, because the European patent is going to be examined and treated by the European Patent Office according to the European Patent Convention. So we will apply the same criteria that we already are applying.
End transcript: Video 3 The patents process in the European Union
Video 3 The patents process in the European Union
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If the application is successful a patent will be granted to the owner for a period of 20 years from date of filing. During this period the patent holder has the exclusive right to exploit the patent commercially – to make, use or sell the invention. For an overview of the patent process see the European Patent Office website [Tip: hold Ctrl and click a link to open it in a new tab. (Hide tip)] .

Software patents slowly became established as court rulings attempted to decide on what was and was not patentable.

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