Currently, for ICT-related inventions the two most important areas to obtain patent protection are probably the United States and West-European countries. Twenty European countries are currently member to the European Patent Convention, and it is possible to obtain patent protection in those countries through a single procedure before the European Patent Office. While quite a few aspects of patent law have been harmonized internationally not in the least due to treaties like the Patent Cooperation Treaty or TRIPS , there still are many important differences between the two systems.
This article discusses several of them. When two people apply for a patent on the same invention, the first person to have filed his application will get the patent assuming the invention is patentable, of course. This holds even if the second person did in fact come up with the invention first. The only thing that counts is the filing date. In the USA, a slightly different approach was used until March In case of two applications for the same invention a so-called interference , a determination is made who invented it first.
This usually involves examining laboratory logbooks, establishing dates for prototypes, and so on. If the person who filed later is found to have invented earlier, he may be awarded the patent. This law switched the US to a first-to-file system. If the invention has become publicly available in any way before the patent application was filed, the application will be rejected Article 54 EPC. It does not make a difference whether the person making it publicly available is the inventor, one of the inventors, or an independent third party.
This means that the inventor can freely publish his invention without losing patent rights. However, this only applies for the USA. If an inventor does so, he automatically loses all potential patent rights in Europe as well as many other countries in the world. With the Leahy-Smith America Invents Act , this grace period effectively is limited to publications by the inventor himself or someone who directly obtained the information from the inventor.
A third-party publication would destroy the novelty of the invention. This is debated though; a court decision may be necessary to settle the point.
US patent law requires the inventor to include the best way to practice the invention in the patent application 35 US Code section This way, the inventor cannot get a patent and still keep some essential or advantageous aspect a secret.
Until the Leahy-Smith America Invents Act , failing to include the best mode could invalidate the patent. With this Act, there is no sanction anymore although formally it must still be included. In contrast, European patent law has no such requirement. At least one way of practicing the invention must be included in the application Article 83 EPC , but there is nothing that states this way must be the best way, or even a good way.
Until , US patents were only published after grant. This has been changed, and now in the US patent applications are published 18 months after their filing date, unless they have been withdrawn or they are filed with a non-publication request, stating that the application is US only.
This is very similar except for the request to the European situation, where all patent applications are published 18 months after their filing date, unless they have been withdrawn.
If the novelty search has been completed by that time, the search report is included with the publication. As of the writing of this post, the PEG issued on October provides the latest guidance using which examiners are evaluating the subject matter eligibility of a software patent application.
Inventors and their attorneys should use these guidelines to ensure that the disclosure of the patent application provides sufficient detail to overcome the evaluations the examiner is expected to perform. The Oct. In such a case, further analysis pursuant to the second step of the Alice test will be required. Since, in most patent applications, the examiner is the judge appeals can get prohibitively expensive , the easiest way to overcome an Alice type subject matter eligibility rejection would be to augment the invention with a software implementation.
Please note: this can only be done at initial stages of drafting an application prior to its filing. Providing a technical implementation of how the software performs the task would pass the Alice test.
However, this often requires the inventor to describe the invention in technical terms. The inventor needs to provide sufficient detail on how the tasks are performed by the computer. The patent application described that if multiple users were going to the same venue e.
The patent application described the following key features the app could perform:. The patent application augmented the disclosure with flow charts, etc. Particularly, the examiner determined that the invention could be performed by conventional means, like in the human mind or by using a pen and paper e.
A computer is just a box of tricks. To increase your chances to obtain a patent, the apparatus, system or method is better described in terms of functional blocks. Each block does a particular thing. Claims should be directed to the block, not the manner of implementation of the block. Set out the blocks in one or more schematic block diagrams, illustrating the functional connectivity between the blocks.
The behavior of each functional block can be described and illustrated in one or more flow charts. Examples of purely software inventions that have gained patent protection in Europe include an optical character recognition OCR machine that distinguishes and sets out mathematical equations from other images or text, and a network comprising plural nodes each routing packet data and adjusting packet routing data according to assessed behavior of neighboring nodes.
The character recognition machine was a programmed computer. Each network node was also a programmed processor. Things are much easier in the USA. The statutory definition of inventions that are eligible to receive patent protection is found in section of title 35, United States Code. The USA is liberal in what it considers patentable. Software, even employing a mathematical method that provides an information presentation result, has been deemed patentable.
If whatever it is produces a useful result, even as a business method, it is considered patentable. There has been an inevitable connection in the USA between software and business methods. I give a final optimistic note concerning software patents in the UK, sometimes considered the graveyard of all hope.
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