In short, the Board decided that the case was inadmissible, however they provided some general guidance on the patentability of software in their general discussion of the admissibility of the case. Essentially, the Board have indicated that the current working practice of the EPO is acceptable and nothing will change.
The case was referred to the Board by the President of the EPO under Art. 112(1)(b) EPC, as the President felt that a number of Boards of Appeals had issued diverging decisions. The Enlarged Board of Appeal found the referral to be inadmissible as they did not feel that any of the decisions issued by any Board of Appeals were divergent. A large portion of the decision is given to a discussion as to what a divergent decision might constitute, i.e. two different Boards issuing different decisions, the same Board issuing a different decision, and so on. Also, there are linguistic differences between the English, French and German texts of the EPC regarding the words for divergent. In the end, the Enlarged Board of Appeal have taken the view that case law is allowed to evolve and therefore earlier decisions can be replaced with new decisions as the general approach to the patentability in a particular area is honed over time. As a result, the Enlarged Board of Appeal decided that none of the cases regarding the patentability of software were in any way divergent, or conflicted with one another, and hence the referral was inadmissible.; and this is the actual decision has been taken in case G3/08.
However, in arriving at this decision, the Enlarged Board of Appeal discussed many of the general issues concerning the patentability of software. The Enlarged Board of Appeal have indicated that in order to obviate the exclusion from patentability, any mention of a piece of hardware, or defining the claim as a “Computer related program…” as opposed to a “Computer program…” would be sufficient. This is very much in line with the approach taken at the moment. The Enlarged Board of Appeal have also followed the seminal decision of T1173/97 (IBM) which was first to mention this concept of a “further technical effect” beyond the expected technical effects of a computer program causing electrical currents to run in a computer. Although this decision did not mention that the further technical effect should be assessed with respect to prior art (the decision stated that the further technical effect be used to assess whether the patent application be excluded from patentability), the Enlarged Board of Appeal have now indicated that the exclusion from patentability be assessed with respect to whether the claim is only related to a computer program or whether there is any mention of hardware in the claim, and, that the concept of the “further technical effect” be used in the assessment of novelty and inventiveness. Again, this is very much in line with what the Examiners in the EPO are currently doing. In many of the amicus curiae briefs, it was expressed that a programmer writing code to carry out a particular method would have to employ many technical considerations in writing the code, and thus a computer program would implicitly have further technical effects. The Enlarged Board of Appeal stated that the programmer must have had technical considerations beyond “merely” finding a computer algorithm to carry out a procedure. Therefore, the programmer must have had “further technical considerations” in order for the computer program to be considered to be patentable, and therefore has confirmed this notion of using s further technical effect to asses the novelty and inventiveness of a computer program. The Enlarged Board of Appeal did not offer any definition of “technical” nor “further technical effect”.
Rory Litton
Monday, May 17, 2010
Thursday, May 13, 2010
European Decision on Software Patents
Alison Brimleow President of the European Patent Office referred the question of patentability of Computer-Implemented Inventions (often referred to as Software Patents) in 2008. Yesterday, May 12th, the Enlarged Board of Appeal handed down their decision and rejected the opportunity to change the EPO’s practice in relation to CII’s. Thus applications that are Computer-Implemented and have a technical effect will continue to be accepted. More detail on the decision can be found at http://www.epo.org/topics/news/2010/20100512.html
For further advice relating to patenting software and business methods please contact Cruickshank on 01-2992222.
Richard O’Connor – Partner
For further advice relating to patenting software and business methods please contact Cruickshank on 01-2992222.
Richard O’Connor – Partner
Wednesday, April 28, 2010
New Irish Patent Office Guidelines for dealing with “Applications For Extensions of Time “ for Trade Marks to come into effect from Tuesday 4th May.
These new guidelines are being put into place to ensure that all applications for extensions of time are not being made routinely, but are the result of, or supported by evidence or exceptional circumstances.
These can include but are not limited to:
• Awaiting the outcome of negotiations
• Court cases awaiting completion
• Awaiting decisions from WIPO, OHIM, etc.
• Other proceedings awaiting completion
• Circumstances beyond the reasonable control of the applicant
• Significant progress has been made but additional time is required
It is hoped that this guidelines will assist the IPO to become more efficient and lead it to become more effective. So going forward parties dealing with the IPO should have matters dealt with as quickly as possible provided all parties are acting in a prompt and efficient manner.
So from May 4th the First extension will be allowed up to 3 months. A second extension will only be considered in special circumstances and you have to file evidence of this and answer various questions. This will then only be granted for an appropriate period, so may be less than 3 months.
The third extension will only be granted if you can show there is still exceptional circumstances and that progress has been made, and you must have new evidence to submit, third will be final.
For more information about Trade Mark prosecution call one of Cruickshank’s team, Mary Rose O’Connor, Seamus Doherty, Maria del Carmen Cobos or Richard O’Connor.
These can include but are not limited to:
• Awaiting the outcome of negotiations
• Court cases awaiting completion
• Awaiting decisions from WIPO, OHIM, etc.
• Other proceedings awaiting completion
• Circumstances beyond the reasonable control of the applicant
• Significant progress has been made but additional time is required
It is hoped that this guidelines will assist the IPO to become more efficient and lead it to become more effective. So going forward parties dealing with the IPO should have matters dealt with as quickly as possible provided all parties are acting in a prompt and efficient manner.
So from May 4th the First extension will be allowed up to 3 months. A second extension will only be considered in special circumstances and you have to file evidence of this and answer various questions. This will then only be granted for an appropriate period, so may be less than 3 months.
The third extension will only be granted if you can show there is still exceptional circumstances and that progress has been made, and you must have new evidence to submit, third will be final.
For more information about Trade Mark prosecution call one of Cruickshank’s team, Mary Rose O’Connor, Seamus Doherty, Maria del Carmen Cobos or Richard O’Connor.
Wednesday, April 7, 2010
To Search or not to Search – Patent searching a worthwhile exercise?
We do our best to answer as many patent related queries over the phone for new customers. Often they have relatively simple questions about the patentability of different technologies and assuming they are prepared to disclose the general area they are working in we can give them a rough steer. Other queries relating to Trade Marks or Designs are often usually easy enough to answer without incurring any costs.
There is however one type of query that is far trickier to deal with and that is queries relating to Patent Searching. There are far too many reasons to give here as to why a company would want to conduct patent searches early on in the development of a new product or technology, and all of them are valid, but perhaps the most frequent given reason is to determine if someone else has ‘done it/had the idea before’. It was estimated recently that in excess of €20 Billion is spent in the EU alone every year re-inventing what has already been invented. Therefore, if you are a large organisation with an R&D budget it seems sensible to allocate some of that money to conduct patent searches if only to see what activity there is in the chosen area of technology.
It is worth stressing though that the initial question of has this been done before, will not be answered by a patent search. Firstly patents are not published, in general, for up to 18 months after they are submitted. So that means that patent searches are automatically not up to date, and if someone filed a patent for the exact same idea as you yesterday, we will not find out about it until 18 months from now. Imagine how much time money and effort might have gone into developing prototypes, packaging, distribution and marketing by then only to find out that the product infringes a patent?
Secondly, who’s to say that a patent search will find all existing patents? It would be fairly obvious to search the European Patent Office website but where do you stop. There are at least 140 national patent offices in the world, and while the major ones are linked through mutual databases do you have the resources to search them all? The UKIPO charge roughly €1,000 to carry out searches and allowing attorney time of no less than 5 hours to analyse and review any patents that it finds and you are talking of a bill of at least €2,250 for a comprehensive search in the UK alone. So I would suggest that very few Irish businesses have the resources to carry out an extensive worldwide patent search given that it could cost in excess of €50k.
Finally, what if the product or idea has been thought of already but no patent application has been filed. Well in this case the good news is that you won’t be prevented in all likelihood from bringing your version onto the market (some countries like Ireland have unregistered design rights), but equally you won’t be able to protect your idea as it has been disclosed elsewhere and worse still if you have spent money on patents all your money is wasted because the applications will be potentially invalid. So patent searching alone may not be sufficient.
It seems that small Irish businesses are caught between a rock and a hard place. You want to find out if your product is novel but you can’t afford the budget to do so comprehensively. The solution is not simple or straight forward but the first step is undoubtedly to consult with a qualified Patent Attorney that understands the pitfalls of carrying out searches. I suppose thought the conclusion that must be drawn is that it all depends on how much money you stand to spend on developments or for that matter how much money you are prepared to lose.
For more information or a copy of a FREE guide to Patent Searching mail to: roconnor@cruickshank.ie
There is however one type of query that is far trickier to deal with and that is queries relating to Patent Searching. There are far too many reasons to give here as to why a company would want to conduct patent searches early on in the development of a new product or technology, and all of them are valid, but perhaps the most frequent given reason is to determine if someone else has ‘done it/had the idea before’. It was estimated recently that in excess of €20 Billion is spent in the EU alone every year re-inventing what has already been invented. Therefore, if you are a large organisation with an R&D budget it seems sensible to allocate some of that money to conduct patent searches if only to see what activity there is in the chosen area of technology.
It is worth stressing though that the initial question of has this been done before, will not be answered by a patent search. Firstly patents are not published, in general, for up to 18 months after they are submitted. So that means that patent searches are automatically not up to date, and if someone filed a patent for the exact same idea as you yesterday, we will not find out about it until 18 months from now. Imagine how much time money and effort might have gone into developing prototypes, packaging, distribution and marketing by then only to find out that the product infringes a patent?
Secondly, who’s to say that a patent search will find all existing patents? It would be fairly obvious to search the European Patent Office website but where do you stop. There are at least 140 national patent offices in the world, and while the major ones are linked through mutual databases do you have the resources to search them all? The UKIPO charge roughly €1,000 to carry out searches and allowing attorney time of no less than 5 hours to analyse and review any patents that it finds and you are talking of a bill of at least €2,250 for a comprehensive search in the UK alone. So I would suggest that very few Irish businesses have the resources to carry out an extensive worldwide patent search given that it could cost in excess of €50k.
Finally, what if the product or idea has been thought of already but no patent application has been filed. Well in this case the good news is that you won’t be prevented in all likelihood from bringing your version onto the market (some countries like Ireland have unregistered design rights), but equally you won’t be able to protect your idea as it has been disclosed elsewhere and worse still if you have spent money on patents all your money is wasted because the applications will be potentially invalid. So patent searching alone may not be sufficient.
It seems that small Irish businesses are caught between a rock and a hard place. You want to find out if your product is novel but you can’t afford the budget to do so comprehensively. The solution is not simple or straight forward but the first step is undoubtedly to consult with a qualified Patent Attorney that understands the pitfalls of carrying out searches. I suppose thought the conclusion that must be drawn is that it all depends on how much money you stand to spend on developments or for that matter how much money you are prepared to lose.
For more information or a copy of a FREE guide to Patent Searching mail to: roconnor@cruickshank.ie
Monday, March 1, 2010
AUTM Annual Conference 2010
Michael O'Connor, Partner in charge of the ICT section in Cruickshank Intellectual Property Attorneys, will be speaking for the third year in a row at the upcoming Association of University Technology Managers (AUTM) annual conference. The AUTM annual conference takes place in New Orleans between 18th - 20th March 2010.
The theme of the presentation this year is "Software Patenting - Process and Strategy from the US and International Perspectives" and will examine the current state of play in the areas of software and business method patenting in a number of jurisdictions. There will be five speakers taking part in the presentation, one speaker from each of the United States, Europe, China, Japan and Singapore. Each speaker will look at software patenting in their jurisdiction in a historical context, discuss the current practice and provide practical advice on how to increase the chances of obtaining granted patents for software inventions in their jurisdiction. Michael will of course be giving the European perspective.
Time permitting, Michael will also be giving a brief overview of the upcoming changes to European Patent Practice due to come into effect on 1st April 2010 (not a bad April Fools gag). Amongst the changes, the EPO will be significantly limiting the time frame in which an Applicant may file Divisional applications, will require an Applicant to provide a substantive response to the Search Report and Written Opinion if a negative patentability opinion is issued, and will restrict the ability of the Applicant to amend the application documents. Michael is very much looking forward to the presentation and hopefully there will be a lively Q&A session afterwards as in previous years.
The theme of the presentation this year is "Software Patenting - Process and Strategy from the US and International Perspectives" and will examine the current state of play in the areas of software and business method patenting in a number of jurisdictions. There will be five speakers taking part in the presentation, one speaker from each of the United States, Europe, China, Japan and Singapore. Each speaker will look at software patenting in their jurisdiction in a historical context, discuss the current practice and provide practical advice on how to increase the chances of obtaining granted patents for software inventions in their jurisdiction. Michael will of course be giving the European perspective.
Time permitting, Michael will also be giving a brief overview of the upcoming changes to European Patent Practice due to come into effect on 1st April 2010 (not a bad April Fools gag). Amongst the changes, the EPO will be significantly limiting the time frame in which an Applicant may file Divisional applications, will require an Applicant to provide a substantive response to the Search Report and Written Opinion if a negative patentability opinion is issued, and will restrict the ability of the Applicant to amend the application documents. Michael is very much looking forward to the presentation and hopefully there will be a lively Q&A session afterwards as in previous years.
Wednesday, February 24, 2010
Your Country Your Call – The Patent Question
As many of you will know now, ‘Your Country Your Call’ is a new nationwide campaign to find and reward two innovative proposals to help create jobs and a more prosperous future for Ireland - http://www.yourcountryyourcall.com/.
A great idea all round, I think, and one worthy of support, however, it is important to consider the intellectual property implications of barreling ahead with a full public disclosure of your brilliant idea.
In under a week since its launch, the question of what happens to intellectual property rights has been posed to me at least three times. If you have been to the site, you’ll probably have seen that the ideas are publically posted for comment and support http://proposals.yourcountryyourcall.com. This post aims to address the question.
What is it all about? Mary McAleese, President of Ireland is the patron of the internet based public competition launched last week. It spans a broad range of categories from sports and arts to communications and technology and will pay two winners €100,000 in prize money each as well as up to €500,000 in development funding to help bring each project to full fruition. A video outlining how to enter is on http://www.youtube.com/user/yrcountryyrcall#p/u/5/Rhd2GE62rXU.
Intellectual property obviously takes many different forms including patents, designs and trade marks. Your first question must be does your idea touch on any of them.
A patent related issue is then a possible scenario and all the normal rules of patenting apply: if the idea is likely to be capable of being patented, you must register it before you disclose it or else any future applications would be rendered invalid and you could potentially lose your rights to exploit it.
My recommended steps are as follows:
1. Ask yourself if it is likely to be capable of being patented. For an invention to be patentable, it must:
• be of patentable subject matter, ie be eligible for patent protection. So if it involves an invention using technology and is not a game, a business method or software per se, or a medical treatment then it might be protected by patents;
• be novel, ie. At least one aspect must be new;
• involve an inventive step; and
• be susceptible of industrial application (in European patent law).
If not patentable, then go ahead and enter the competition. If you think it may be patentable, read-on…
2. Having considered it in the light of the above, and you still think it may be capable of being registered as a patent, you should talk to a firm of patent law attorneys like Cruickshank
3. If patentable and likely to be of sufficient commercial value to merit applying for a patent, do it!
4. Enter the competition. €100K prize money and up to €500K project development funding would be welcomed by anybody.
If the idea involves franchising, branding or marketing in general then it might be protected by trade marks or if it is a fast moving consumer good with an aesthetic value such as a mobile phone then registered designs are relevant. Once again, you will need to seek professional advice from an intellectual property attorney before publicising the idea.
To find out more about the event launch, you might be interested to read Brendan Hughes’ blog.
A great idea all round, I think, and one worthy of support, however, it is important to consider the intellectual property implications of barreling ahead with a full public disclosure of your brilliant idea.
In under a week since its launch, the question of what happens to intellectual property rights has been posed to me at least three times. If you have been to the site, you’ll probably have seen that the ideas are publically posted for comment and support http://proposals.yourcountryyourcall.com. This post aims to address the question.
What is it all about? Mary McAleese, President of Ireland is the patron of the internet based public competition launched last week. It spans a broad range of categories from sports and arts to communications and technology and will pay two winners €100,000 in prize money each as well as up to €500,000 in development funding to help bring each project to full fruition. A video outlining how to enter is on http://www.youtube.com/user/yrcountryyrcall#p/u/5/Rhd2GE62rXU.
Intellectual property obviously takes many different forms including patents, designs and trade marks. Your first question must be does your idea touch on any of them.
A patent related issue is then a possible scenario and all the normal rules of patenting apply: if the idea is likely to be capable of being patented, you must register it before you disclose it or else any future applications would be rendered invalid and you could potentially lose your rights to exploit it.
My recommended steps are as follows:
1. Ask yourself if it is likely to be capable of being patented. For an invention to be patentable, it must:
• be of patentable subject matter, ie be eligible for patent protection. So if it involves an invention using technology and is not a game, a business method or software per se, or a medical treatment then it might be protected by patents;
• be novel, ie. At least one aspect must be new;
• involve an inventive step; and
• be susceptible of industrial application (in European patent law).
If not patentable, then go ahead and enter the competition. If you think it may be patentable, read-on…
2. Having considered it in the light of the above, and you still think it may be capable of being registered as a patent, you should talk to a firm of patent law attorneys like Cruickshank
3. If patentable and likely to be of sufficient commercial value to merit applying for a patent, do it!
4. Enter the competition. €100K prize money and up to €500K project development funding would be welcomed by anybody.
If the idea involves franchising, branding or marketing in general then it might be protected by trade marks or if it is a fast moving consumer good with an aesthetic value such as a mobile phone then registered designs are relevant. Once again, you will need to seek professional advice from an intellectual property attorney before publicising the idea.
To find out more about the event launch, you might be interested to read Brendan Hughes’ blog.
Wednesday, February 3, 2010
Finance Bill 2010: The Future for Patent Royalties?
I have been almost paralysed with anticipation to see what measures are included in tomorrow’s Finance Bill - http://www.finance.gov.ie - especially those relating to patents.
For the past 10-15 years we have had to listen to leading experts from large accountancy firms tell us that the Provisions for Tax Free Payments in respect of Patent Royalties will be abolished. The basis of this opinion is that given the €5,000,000 cap there is effectively no benefit to MNC’s and therefore it should be abolished.
Well spare a thought then for another oft forgotten group, small Irish manufacturing businesses. Many of these companies, through investment in technology and research and development, have carved out niche markets supplying into the MNC’s and are generally considered vital to the retention of the larger company’s presence in Ireland. In their case, the R&D has already been done and therefore they are not in a position to benefit from a complicated system of Incremental R&D tax relief.
Many of them are in a position to benefit from the Patent Royalty exception despite the various restrictions that have been place on it over the years. Income earned under this exception is often used to be put back into the company to pay for future investment. Without it, many Irish companies would standstill, lose any innovation advantage and eventually grind to a halt.
So the Minister indicated that he was going to reduce the ceiling on Tax Free earnings from €250k per annum to €125k, thus further disincentivising manufacturing in Ireland. I hope he sees sense and removes Patent Income altogether from this limit and lets us get on with the job at hand of developing a High-Tech Knowledge Economy, where innovation, invention and entrepreneurial spirit is rewarded.
Richard O'Connor
For the past 10-15 years we have had to listen to leading experts from large accountancy firms tell us that the Provisions for Tax Free Payments in respect of Patent Royalties will be abolished. The basis of this opinion is that given the €5,000,000 cap there is effectively no benefit to MNC’s and therefore it should be abolished.
Well spare a thought then for another oft forgotten group, small Irish manufacturing businesses. Many of these companies, through investment in technology and research and development, have carved out niche markets supplying into the MNC’s and are generally considered vital to the retention of the larger company’s presence in Ireland. In their case, the R&D has already been done and therefore they are not in a position to benefit from a complicated system of Incremental R&D tax relief.
Many of them are in a position to benefit from the Patent Royalty exception despite the various restrictions that have been place on it over the years. Income earned under this exception is often used to be put back into the company to pay for future investment. Without it, many Irish companies would standstill, lose any innovation advantage and eventually grind to a halt.
So the Minister indicated that he was going to reduce the ceiling on Tax Free earnings from €250k per annum to €125k, thus further disincentivising manufacturing in Ireland. I hope he sees sense and removes Patent Income altogether from this limit and lets us get on with the job at hand of developing a High-Tech Knowledge Economy, where innovation, invention and entrepreneurial spirit is rewarded.
Richard O'Connor
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