Invention Protection

Agenda

Types of Intellectual Property Patents where is the value? Requirements for patentability The state of the art Patentability of Software Maximizing patent value SaaS Considerations

Intellectual Property
extent of protection defined by the words of the claims prevents identical / similar brands for identical/similar goods/services protects expression (+derivatives)

Patent Claims

Copyright

Trademarks

IP Portfolio

protects 2D Design, shape, surface patterns, configuration (RDR) 3D shape (UDR)

Designs

confidential information / trade secrets by agreement

Patents where is the value?

Freedom of Action
Ensuring others cannot stop you using a technology Can be achieved by mere publication

Offensive
Stop others using a technology

Defensive
Dissuade others enforcing their patents Fight back

Commercialise
Differentiate your products & services Licensing / selling patents

Requirements for Patentability

Not comprised in the state of the art

Novel
invention is not obvious to one of ordinary skill in the art (a mythical person who knows everything but is entirely uncreative)

Inventive

Technical

Software has a technical advantage over the known art

Novelty The State of the Art

Europe:
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

USA:
patents, printed publications or public use Grace period: 1 year prior to application for a patent America Invents Act: no more grace period except that disclosures made by the inventor are not prior art for 1 year prior to application for a patent

Patentability of Software
Argument: Software should not be subject to patent protection
Source code and machine code are forms of recorded expression appropriately protected by copyright Patents on software would be too easily infringed inadvertently

Counterargument:
Idea / Expression dichotomy: patents protect ideas; copyright protects expression Software is an implementation choice: invention could equally be implemented in dedicated hardware

Patentability of Software - Requirements

Europe
Excluded: Mathematical methods; methods of doing business; presentation of information Patentable: Technical Solution to a Technical Problem; Technical Contribution

USA
Patentable: any new and useful process, machine, manufacture, or composition of matter Patentable Processes (e.g. software): tied to a machine; or transforming an article from one state or thing to another

Patents maximise the value?

Valuable patents are

Valid Applicable Discoverable