Transcript IP in ICT- Valentin Bogdanov

The Australian Technology Showcase, 25 June 2008
IP in ICT
Val Bogdanov, PhD (Associate)
Paul Massey (Principal)
Type of IP in ICT
What do they protect
Copyright
Mainly used for Programming code
Circuit Layouts
Material representation of an
integrated circuit
Patent
Electronic systems, technical and
business processes, computer
programs etc.
(Most Popular Form of Protection)
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Copyright
• Generally Copyright protects a range of original materials,
such as literary, artistic and musical works
• In ICT mainly used to protect programming code
• Individual JavaScript files within an internet content
management system have been found to qualify as “computer
program” (Dias Studio Pty Ltd v Bullet Creative Pty Ltd (2008) AIPC 92-270)
• life of author plus 70 years
• Copyright infringement requires that actual copying took
place.
• no protection against subsequent independent development
of the same or substantially similar works
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Circuit Layout Rights
• Circuit Layouts are layout designs or plans of integrated
circuits (also referred as computer chip designs or semiconductor chips)
• Integrated circuits and circuit layouts are protected under the
Circuit Layouts Act 1989
• Protects against unauthorised copying
• Similar to copyright style of protection
• Maximum term of 20 years for circuit layout rights (depending
on whether or not it has been commercially exploited)
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Requirements for Valid Patent
 Patentable subject matter – especially relevant to
software and “business method” type inventions
 Novelty
 Inventive
 Utility
 Sufficiency of description
 Disclosure of best method
 Claims “fairly based”
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Patentable Subject Matter
Has to be a “Manner of manufacture” within the meaning of
section 6 of the Statute of Monopolies
Has to result in
» An “artificially created state of affairs” in a “field of
economic endeavor”
» A physical effect or phenomenon
» must belong to a useful art as distinct from a fine art
National Research Development Corp v Commissioner of Patents, (1959) 102 CLR 252
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Patentable Subject Matter
Examples :
 Machines, devices, hardware,
 Industrial processes, techniques, methods
 Business methods (physical/software implementation
necessary and a concrete, tangible effect); and
 Software (program or code per se)
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Non-Patentable Subject Matter
 Mere collocations of known integers – each merely
performing their own function
 Scientific principles
 Mere ideas
 Mere discoveries
 Mere working directions
 Business methods with non-technical result
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ICT Patentable Subject Matter
Leading Case Law I
CCOM v Jiejing, 28 IPR 481, (1994) AIPC 91-079
Invention related to retrieval of graphical representations of
desired characters for the assembly of text
The following found patentable:
• source code for patentable computer software
• executable code for patentable computer software, which
is in a machine readable form, and
• a computer, when programmed to achieve any result
which has utility in the field of economic endeavour.
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ICT Patentable Subject Matter
Leading Case Law II
Grant v Commissioner of Patents [2006] FCAFC 120
A business method for protecting an asset from legal liability
found not to be patentable
A product or result of a method must produce “a concrete,
tangible, physical, or observable effect”
A mathematical algorithm in itself does not produce a concrete,
tangible, physical or observable effect
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What types of inventions
can be patented overseas?
European Patent Convention (EPC)
• No “positive” definition of what can be patented
• Claimed invention must have technical character.
• Methods only involving economic concepts & practices of doing
business are not inventions per Art. 52(1) EPC.
• An apparatus (a physical entity or concrete product)
suitable for performing or supporting an economic activity
is an invention per Art. 52(1) EPC
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What types of inventions
can be patented overseas?
European Patent Convention (EPC)
Subject matter precluded from patent protection:
• scientific theories
• mathematical methods
• schemes, rules and methods for performing mental acts,
playing games, or doing business
• programs for computers (if they do not result in a “further
technical effect”
• presentations of information
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What types of inventions
can be patented overseas?
European Patent Convention (EPC)
“further technical effect”
• If the program, when run on a computer, produces a
technical effect that runs beyond the normal physical
interaction between the computer code and the computer
executing it
• A non-technical feature can interact with a technical
element to produced the required technical effect
• Recently the EPO Board of Appeal found that a computer
executable method for searching a file and creating an index
file was patentable
What types of inventions
can be patented overseas?
United States
• Any new and useful:
- process,
- composition of matter, or
- machine,
- improvement thereof
- manufacture,
Statutory subject matter includes “anything under
the sun that is made by man.”
Diamond v Chakrabarty, 447 US 303, 309
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What types of inventions
can be patented overseas?
United States
abstract ideas
laws of nature
natural phenomena

business methods
• business method
exception is ill conceived
• such an exception has
been rejected by CAFC
• same patentability
requirements apply as
for any other method
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What types of inventions
can be patented overseas?
United States
• The claimed invention as a whole must
accomplish a practical application.
• That is, it must produce a “useful, concrete and
tangible result.”
• Look for “real world” value (in contrast to mere
idea or concept).
State Street Bank & Trust Co., v. Signature Financial Group
Inc., 149 F. 3d 1368
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U.S. Patent No. 5,960,411
One-click
online retailing
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Photo: http://www.istockphoto.com/
The battle for the “one –click” patent
Peter Calveley v Amazon.com ...
Amazon backs down over patent battle with Kiwi
•
Auckland-based actor Peter Calveley challenged the “one-click” patent
• As a result of the initiated re-examination only 5 of the initial 26 claims
remain
•
Amendments proposed to the remaining claims will limit the Amazon's
patent claim to "items purchasable through a shopping cart model", not the
carte blanche model that currently exists
•
It was all about… a late delivery of a book
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Peter Calveley v Amazon.com ...
Photo: Geoff Dale/Dominion Post
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Patentable Subject Matter
The State Street Bank Decision
State Street Bank & Trust Co. v. Signature Fin. Group,
Inc., 149 F.3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998),
cert denied, 119 S. Ct. 851 (1999).
• Most recent major case of a line of cases affirming
software as statutory subject matter
• Software to manage a “hub and spoke” investment scheme:
– Mutual funds (spokes) pool their assets in an investment
portfolio (hub) organized as a partnership
– Allows administrator of mutual fund economy of scale in
administering investments and partnership tax advantage
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Patentable Subject Matter
The State Street Bank Decision
US Pat. No. 5,193,056: Data Processing System for Hub and
Spoke Financial Services Configuration
• The patent covers a computer system that:
– keeps track of the invested assets and makes all calculations
necessary for maintaining a partner fund financial services
configuration
– provides for daily allocation of assets between
hub and spokes
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Patentable Subject Matter
The State Street Bank Decision
• Mathematical algorithms are patentable, however, if applied
to some type of practical application to provide, e.g., “a useful,
concrete and tangible result”
• In US Patent 5,193,056, transforming data representing
dollar amounts into share prices was a “a useful, concrete and
tangible result”
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Patentable Subject Matter
The State Street Bank Decision
What is a useful, concrete and tangible result?
– Printing a result of an algorithm
– Displaying a result on a monitor
– Data Transformation
• Dollar amounts into share prices
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Patentable Subject Matter
The State Street Bank Decision
State Street broadens the software eligible for patent protection
• Although it was not an Internet case, State Street is applicable
to Internet business activities since it involved business
transactions and calculations using software
• Removed the “business method “exception
• State Street decision confirmed by AT&T Corp. v. Excel
Communications, Inc., 172 F.3d 1352, 50 USPQ2d 1447 (Fed. Cir.),
cert. denied, 120 S. Ct. 368 (1999).
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Recent developments in the US
Court of Appeals for the Federal Circuit has
indicated a possible change in the extent of
protection of “business methods” and a review
the removal of the “business methods”
exception for patentability.
Re Bilski, No. 2007-1130 (Fed Circ Feb 15, 2008)
• Patenting in ICT is complex and dynamic area
• The Patent legislation in every jurisdiction has
its own subtleties
• If uncertain – ask for advice
Question and Discussion Time
That is already
patented…
No way…
Is that
patentable at
all…
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