Patent Law
Is the patentability of computer programs (software) and computer-related inventions in European jurisdictions signatory of the European Patent Convention materially different from the US?
2014///
The status of computer programs (software) as patentable subject matter is one of the most controversial legal, policy, and socio-economy debates of the 21st century.
While there is clarity with regards to patent eligibility of Industrial Age (e.g., machine, article of manufacture, composition of matter) technology, there is uncertainty with regards to Information Age (e.g., smart embedded systems using programmed processors) technology that rely on software.
Given the complexity of the legal, policy, and economic issues involved, the patent offices and judicial bodies on both sides of the atlantic have struggled to formulate a clear test for determining whether and under what circumstances computer-related inventions (software) should be patent-eligible subject matter or be excluded. It is commonly believed (by inventors, business, and patent professionals) that there are significant differences between the patent eligibility for computer programs among the US and European jurisdictions from EPC signatory countries. Is this true or perhaps just a myth?
The enclosed presentation (link on link below) presents a brief and “first approximation” attempt to address this question.
140327-LLBPresentation
While there is clarity with regards to patent eligibility of Industrial Age (e.g., machine, article of manufacture, composition of matter) technology, there is uncertainty with regards to Information Age (e.g., smart embedded systems using programmed processors) technology that rely on software.
Given the complexity of the legal, policy, and economic issues involved, the patent offices and judicial bodies on both sides of the atlantic have struggled to formulate a clear test for determining whether and under what circumstances computer-related inventions (software) should be patent-eligible subject matter or be excluded. It is commonly believed (by inventors, business, and patent professionals) that there are significant differences between the patent eligibility for computer programs among the US and European jurisdictions from EPC signatory countries. Is this true or perhaps just a myth?
The enclosed presentation (link on link below) presents a brief and “first approximation” attempt to address this question.
140327-LLBPresentation
What three entries may qualify for small entity status?
2007///
Qualifying small entities can pay a reduced rate fee for their patent application if they file a small entity declaration. For the purposes of determining the patent application fees, small entity are defined by the USPTO as (1) independent inventors, (2) small business concerns (i.e. a business with 500 or less employees during a fiscal year), and (3) nonprofit organizations. In order to qualify the the exception, independent inventors must maintain the patent rights or transfer the rights to a small business concern or nonprofit organization. The small entity status does not apply in cases where the small entity (independent inventor, small business concern, or nonprofit organization) is transferring the rights to an entity that does not qualify as an small entity. The reduced filing and maintenance fees are intended to help promote innovation by small entities.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
How does the US patent system differ from first-to-file systems?
2007///
First-to-file patent systems such as the requirements followed in the European Union place more importance on the filing date than the actual date when the invention was conceived. In the US, the PTO determines the priority between two applications by considering the invention date as well as the filing date. Thus, the USPTO can be considered to follow a "first-to-invent" doctrine. An inventor can publicly disclosure the invention (i.e. demonstrating that the invention has been fully conceived) and wait to file a patent for up to a year in the US. This is not the case in Europe since any public disclosure is considered to be prior art. Consequently, only the filing date matters. Article 60(2) of the European Patent convention (EPC) awards priority to the applicant that first files the invention. Under first-to-file patent systems inventors are more pressured to prepare and file the application as soon as possible in order to gain the IP protection for their invention.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
[4] The European Patent Convention
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
[4] The European Patent Convention
What is the one-year rule?
2007///
The one-year rule, also known as the one-year grace period or on-sale bar, is a doctrine that prevents an inventor for acquiring patent protection if the application is filed more than one year of the following: 1) any public use of the invention by the inventor, a sale of the invention, an offer of sale, or public use of the invention in the United States, OR 2) any description of the invention by the inventor in a published document (i.e. a printed publication) in any country. This enables inventors to market or commercialize their inventions for up to a year and decide whether or not they want to seek patent protection. After the one-year period, the invention becomes public domain and is not eligible for patent protection since it is considered to be prior art. In general, disclosure under a signed confidentiality agreement is not considered to be public disclosure.
In 1998 the Supreme Court established a two-part test (Plaff vs Wells) to determine the commencement of the on-sale bar. According to this test 1) there must be an offer for commercial sale -not experimentation-, and 2) the invention must be ready for patenting (i.e. it must be reduced to practice or fully documented so that a person skilled in the art could create a working version of the invention).
For the purposes of patent law, a printed publication is considered to be any method of recording information such as paper, hard-drive, CD/DVD, microfilm, etc. If the printed publication contains a full disclosure of the invention (i.e. a description with enough detail that would enable a person skilled in the art to create a working version of the invention), the inventor will be barred from patent protection if the application is filed after a year of the date of publication. For the purposes of patent law, public disclosure is considered to take place once there is public accessibility to the printed publication. For instance, in the case of a doctoral dissertation public disclosure is considered to be the date when the university catalogs the dissertation and makes it available to the public. In the case of peer-reviewed journals, the date of publication is typically considered to be the date when the paper get published (i.e. available to the public) but depends on the specific editorial policies of the specific journal. In any case, it is a good idea to file for a provisional patent before any public disclosure.
Compared with other countries, the grace period by the USPTO is very generous. For instance, the European Patent Office requires "absolute novelty" (i.e. any public disclosure would prevent the inventor for acquiring patent rights). Article 54(2) of the European Patent Convention (EPC) defines prior art to include "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."
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
In 1998 the Supreme Court established a two-part test (Plaff vs Wells) to determine the commencement of the on-sale bar. According to this test 1) there must be an offer for commercial sale -not experimentation-, and 2) the invention must be ready for patenting (i.e. it must be reduced to practice or fully documented so that a person skilled in the art could create a working version of the invention).
For the purposes of patent law, a printed publication is considered to be any method of recording information such as paper, hard-drive, CD/DVD, microfilm, etc. If the printed publication contains a full disclosure of the invention (i.e. a description with enough detail that would enable a person skilled in the art to create a working version of the invention), the inventor will be barred from patent protection if the application is filed after a year of the date of publication. For the purposes of patent law, public disclosure is considered to take place once there is public accessibility to the printed publication. For instance, in the case of a doctoral dissertation public disclosure is considered to be the date when the university catalogs the dissertation and makes it available to the public. In the case of peer-reviewed journals, the date of publication is typically considered to be the date when the paper get published (i.e. available to the public) but depends on the specific editorial policies of the specific journal. In any case, it is a good idea to file for a provisional patent before any public disclosure.
Compared with other countries, the grace period by the USPTO is very generous. For instance, the European Patent Office requires "absolute novelty" (i.e. any public disclosure would prevent the inventor for acquiring patent rights). Article 54(2) of the European Patent Convention (EPC) defines prior art to include "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."
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
What are the four requirements for a utility patent?
2007///
Utility patents are granted for inventions that can be described or categorized as:
-Machines (i.e. a device that accomplished a specific task -e.g. an engine)
-Articles of Manufacture (i.e. a single object without movable parts or equivalent -e.g. chair, pencil)
-Processes (i.e. a method of accomplishing a result through a series of steps involving physical or chemical interactions).
-Compositions (i.e. a combination of chemical or other materials).
-New Uses of machines, articles of manufacture, processes, or compositions.
The four requirements for a utility patent are:
1. The invention must fall within one of the statutory classes
2. The invention must be useful.
3. The invention must be novel.
4. The invention must be nonobvious.
By statutory classes it is meant that the patent is a machine, process, manufacture, composition, or any new or useful improvement of these. The USPTO regards an invention as useful when it is capable of accomplishing the task it was designed for (i.e. the invention must work). Thus, when filing a patent application it is important to demonstrate that the invention works as intended and therefore has utility. Novelty is a statutory requirement of the US Patent law. By novel it is meant that it differs in some specific way form prior art (i.e. existing knowledge in the public domain or previous patents). Finally, the invention must not be considered to be obvious by people trained in the art.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
-Machines (i.e. a device that accomplished a specific task -e.g. an engine)
-Articles of Manufacture (i.e. a single object without movable parts or equivalent -e.g. chair, pencil)
-Processes (i.e. a method of accomplishing a result through a series of steps involving physical or chemical interactions).
-Compositions (i.e. a combination of chemical or other materials).
-New Uses of machines, articles of manufacture, processes, or compositions.
The four requirements for a utility patent are:
1. The invention must fall within one of the statutory classes
2. The invention must be useful.
3. The invention must be novel.
4. The invention must be nonobvious.
By statutory classes it is meant that the patent is a machine, process, manufacture, composition, or any new or useful improvement of these. The USPTO regards an invention as useful when it is capable of accomplishing the task it was designed for (i.e. the invention must work). Thus, when filing a patent application it is important to demonstrate that the invention works as intended and therefore has utility. Novelty is a statutory requirement of the US Patent law. By novel it is meant that it differs in some specific way form prior art (i.e. existing knowledge in the public domain or previous patents). Finally, the invention must not be considered to be obvious by people trained in the art.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
Who is permitted to prepare a patent application, besides the inventor?
2007///
The US Patent and Trademark Office (PTO) has established a certification process that involves taking an examination (the Patent Agent's Exam) after having obtained an approved college degree in engineering or science. Both attorneys (i.e. people that have completed a law degree and have passed the bar examination in a state) and nonattorneys may take the exam as long as they have a college degree in engineering or science that meets the PTO requirements. A Patent Attorney is a lawyer with adequate technical background (i.e. in possession of a college degree in engineering or physical sciences) that has passed the USPTO Patent Exam in addition to the bar examination in a given state. On the other hand, a Patent Agent is a nonattorney with adequate engineering/scientific preparation that has passed the USPTO Exam. Patent Agents can prepare patent applications on behalf of inventors, file patent applications, respond to USPTO office actions (i.e. letters), and participate in the amendment of the applications. In summary, a Patent Agent is a licensed professional certified by the USPTO to prepare and prosecute patent applications. The difference between a Patent Agent and a Patent Attorney is that a Patent Agent cannot advise the inventors regarding the legal consequences that may arise from ownership of the IP. For instance, it cannot provide legal advise regarding how the ownership rights may be affected in the case of a divorce, for the purposes of making a will, or regarding the terms of a licensing contract. These legal issues outside the scope of patent law require the professional counsel of an attorney.
Information regarding the USPTO Patent Exam can be found at http://www.uspto.gov/go/dcom/gcounsel/oed.htm. Briefly, this site includes information regarding the requirements for registration, examples of past exams, and result statistics. Current examinations are based on the 8th Edition (Rev. 2) of the Manual of Patent Examining Procedure (MPEP). The passing rate in the last exam was 58.2%. There are many firms that offer training services, educational programs, and self-study materials for the Patent Bar Exam.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
Information regarding the USPTO Patent Exam can be found at http://www.uspto.gov/go/dcom/gcounsel/oed.htm. Briefly, this site includes information regarding the requirements for registration, examples of past exams, and result statistics. Current examinations are based on the 8th Edition (Rev. 2) of the Manual of Patent Examining Procedure (MPEP). The passing rate in the last exam was 58.2%. There are many firms that offer training services, educational programs, and self-study materials for the Patent Bar Exam.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
[3] Manual of Patent Examining Procedure, 8th Edition
How are patent rights acquired?
2006///
Patent rights in the US are acquired only after the patent is issued by the United States Patent and Trademark Office (PTO). Contrary to other forms of intellectual property, protection does not exist for patentable inventions until the patent is formally issued (Letters Patent). The PTO is responsible for determining the patentability and issuing patents. Even though inventors can prepare their own patent applications, these application are normally prepared by a certified patent specialist with engineering or scientific background.
In the US both attorneys and nonattorneys that meet the educational requirements may take the examination to become licensed patent practitioner. A nonattorney licensed to practice in patent cases by the PTO to prepare and prosecute patent applications is a Patent Agent. Patent agents can prepare, file, respond to office actions from the PTO, and participate in the amendment of the application.
After the patent is issued, the inventor acquires exclusionary patent rights for a period. Currently, utility patents filed after June 7, 1995 will expire 20 years for the date of filing.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).
In the US both attorneys and nonattorneys that meet the educational requirements may take the examination to become licensed patent practitioner. A nonattorney licensed to practice in patent cases by the PTO to prepare and prosecute patent applications is a Patent Agent. Patent agents can prepare, file, respond to office actions from the PTO, and participate in the amendment of the application.
After the patent is issued, the inventor acquires exclusionary patent rights for a period. Currently, utility patents filed after June 7, 1995 will expire 20 years for the date of filing.
References:
[1] Stim, R. "Intellectual Property. Patents, Trademarks, and Copyrights" West Legal Studies.
[2] Black's Law Dictionary 5th ed., (West Publishing, 1979).