This document recalls the definition of patent and copyright and as far as computer programs are concerned and explains what elements can be protected by a patent or by a copyright. Concerning software patents, the practice of the French patent office, the European Patent Office, the United States Patent and Trademark Office and the Japanese Office are detailed. Several examples are mentioned to illustrate the different cases. www.FITT-for-Innovation.eu

1. Software Patents
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2. Introduction
Diversity of IPRs
Intellectual Property Rights (IPRs) are essential assets for valorisation and
technology transfer activities. Many different IPRs exist, offering each a particular
set of legal protection for different kind of assets:
 Patents
 Trade marks
 Copyright
 Designs (registered and unregistered)
 Trade secrets
Only patents and copyrights are reviewed in this document
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3. Introduction
Some IP found in a mobile phone
Trade marks:
 Made by "Nokia”
 Product "N95”
 Software "Symbian", "Java”
Patents:
 Data-processing methods Designs (some of them registered):
 Semiconductor circuits
 Form of overall phone enclosure
 Chemical compounds
 Arrangement of buttons in this oval shape
Copyrights:  Three-dimensional wave form of buttons
 Software code
 Instruction manual Trade secrets: ?
 Ringtone
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4. IPRs general approach
 Any inventor, creator and/or right holder are rewarded with a (bounded) monopoly
on the intangible creation they relate to.
 Intellectual Property (IP) relates to the ownership of
intangible assets
 There are several types of IPRs:
Literary and artistic
creations, protection
logic
Criteria = original creations
Copyright
Signalling & commercial
Industrial-focused Patents Trademarks protection logic
invention logic
Criteria = technical nature, Criteria = type of
novelty, industrial application good/service the brand
relates to
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5. From IPRs to IP management
General Approach
Technical issue idea Technical Solution Code Development Brand Market
Patent Copyright Trademark
 IPRs create a framework
 Patents, Trademarks & Copyrights do not protect the same thing. They are not bound
by the same obligations in order to be granted, neither do they grant the same rights:
 Registration is required (patent, trademark), or not (copyright)
 Scope of protection is different
 Duration and nature of monopolies are different
 An efficient IPR management strategy needs to play on such IPRs complementarities
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6. From IPRs to IP management
The case of software
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7. IPRs in ICT:
From Copyrights to Patents
 Software components PROTECTED by copyright
 The program (architecture, object code + source code)
 The specifications if there is an original document
 An eventual prototype
 Screens and interactivity functionalities if they are original
 The user manual
 Software components NOT PROTECTED by copyright
 Functionalities and algorithms (patent rights)
 The executable code
 Programming languages
 The name, logo (trademarks)
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8. IPRs in ICT:
Patents on computer implemented inventions
A patent is an IP monopoly that grants its
owner:
 the privilege of stopping others from making,
using or selling the claimed invention
 this privilege being:
 temporary
 valid on a given territory
 on an invention related to a process,
a product or a device
 in compensation of the enrichment
of the technological patrimony (published)
 resulting from the publication of the invention
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9. IPRs in ICT:
The European patent application
The European patent application consists of :
• Request for grant
• Description of the invention – a summary of the prior art,
a disclosure of the invention and what problem it is supposed to solve
• Claims – determine the extent of protection conferred by a patent
• Drawings (if any) referred to in the description or the claims –
the description and drawings are used to interpret the claims
• Abstract – around 150 words that can be used as a search tool for other
patent applications
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10. IPRs in ICT:
Software patents
A patent (on software) grants the right holder:
 Right to prevent third parties from commercially exploiting an invention without
authorisation
• Not a right to use – instead a patent protects an invention by giving the
owner of the patent the right to stop anyone from making or using the
invention without their consent
 Rights conferred by a European patent are the same as the rights would be if
conferred by a national patent in each contracting state in respect of which it is
granted
 Right to assign or transfer ownership of a patent and to conclude licensing
contracts
 Maximum term of patent protection is 20 years
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11. IPRs in ICT:
Patentability criteria
Under the European Patent Convention (EPC), patents are granted for:
any inventions in all fields of
technology provided that they are:
new
(does not form part of the state of the
art)
involve an inventive step (is not
obvious to someone skilled in this
technology field)
susceptible of industrial
application (useful in some way)
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12. IPRs in ICT:
What cannot be patented ? (1)
 Discoveries, scientific theories and mathematical methods
 Aesthetic creations
 Schemes, rules and methods for performing mental acts, playing games
or doing business, and programs for computers
 Presentations of information
… as such
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13. IPRs in ICT:
What cannot be patented ? (2)
Why “as such”?
A patent claim directed solely to an item listed in previous slide will not be
considered an invention and therefore will not be patentable, but …
This applies only if the patent claim relates to that subject-matter or activities
directly ("as such”)
A patent claim that includes a mix of patentable, technical, and
excluded, non-technical, subject-matter can be regarded as an
invention and may be patentable after all
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14. Software patents
The case of programs for computers (1)
Program for a computer "as such" is excluded from patentability,
but…
Not excluded from patentability if, when running on a computer,
it causes a further "technical effect" going beyond the "normal"
physical interaction between the program (software) and the
computer (hardware)
Programs for computers are therefore not automatically excluded
from patentability
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15. Software patents
The case of programs for computers (2)
An invention will be considered patentable if :
 It is related to a technical domain
 It is a technical solution solving a technical problem
 It manipulates technical data with the help of technical
functionalities
 The claims have technical characteristics
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16. Software patents
The case of programs for computers (3)
Examples Counterexamples
Patentable inventions Non-patentable inventions
Process and/or system for
speech recognition Accounting software
Process and/or device for
charging control with power
control Syntactic sorting
software
Process and/or device for
cryptography
Software for establishing
Process and/or system for a financial transaction
video compression
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17. Software patents
The case of “Products computer programs”
 Claims relating to “products computer programs” as computer
programs stored on a data medium are tolerated (not considered as
not patentable), but…
 For this, the claims:
Should be preceded by process claims
Should be based on a technical process which is new and
inventive, and which could be implemented by a computer
program
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18. Software patents
Software protected by a patent
Software components Software components not
protected by a patent protected by a patent
Functionalities as such The program (architecture, object
code + source code)
The specifications if there is an
The algorithms as such original document
An eventual prototype,
The device(s) and technical executable code
system(s)
Screens (unfair competition)
The process (and its technical The user manual and
utilisation) programming language
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19. Why?
Rationale:
 The present document aims to recall on patentability criteria and describes
the differences between patents and copyrights in the field of ICT
 Copyright aims at protecting software as such
 Patent can protect the functionalities of a software as long as they satisfy
patentability criteria
 Both types of protection can/should be used for software IP management
activities;
However:
 Patents offices in USA, Japan and Europe have different practices
 Different protections have different costs
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20. Suggested Reading
Link to bibliography:
“La brevetabilité des logiciels” - Aurelie Jung, Centre d'Etudes Internationales de la Propriété Industrielle, Université
Robert Schuman de Strasbourg, 2006
“Beware of your creations: software patents”, Eugenio Archontopoulos, European Patent Office,
earchontopoulos@epo.org
“Abstract Patent ans Software”, in: “Patent Failure: How Judges, Bureaucrats, and Lawyers Put Innovators at
Risk”, James Bessen and Michael Meurer, Princeton University Press, 2008
“Patenting software in the European Union”, José Ramon Cardeno-Shaadi, Les Nouvelles, Licensing Executive
Society International, September 2007
“Patents for software: European law and practice”, presentation from European Patent Office,
http://documents.epo.org/projects/babylon/eponet.nsf/0/a0be115260b5ff71c125746d004c51a5/$file/patents_for_software_en.pdf
“Autour de la brevetabilité du logiciel”, presentation of Emilie Rollet, Département Brevets, INPI on the conference Intech’Sophia
2008, http://www-sop.inria.fr/intech/protection_logiciel/slide_inpi.pdf
“Patent teaching kit; core module 2: How patents work”, presentation from European Patent Office,
http://documents.epo.org/projects/babylon/eponet.nsf/0/e32d0d43d34f5681c125763c0054b3bb/$file/patent_teaching_kit_en.pdf
Those two last presentations have served to write the present one.
Link to code book: exploitation, valuation, maturation, royalties, licensing, copyright, patent
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