The History and Evolution of Business Method Patents Business methods is a rapidly evolving topic in patent law. Business methods originally could not be patented at all, but they are now considere…
As an introduction, I have chosen this topic mainly on the reason that I have been personally asked by a good friend of mine specifically, in relation to the Intellectual Property (“IP”) issues. As such, it would be interesting to write an article on this topic as part of the Individual Activity 1 instructed by our beloved Pn Nuha.
Foremost, let us have a look at the registered trade marks involved.
REGISTERED TRADE MARKS:
(1) Word mark
(2) Composite marks
(Retrieved from https://iponline.myipo.gov.my/ )
CLASSES (in general as provided under the Nice Classifications).
Class 16 – Refers to goods which includes paper, cardboard and certain goods made of those materials as well as office requisites incorporating the said trade mark.
Class 35 – Refers to services which includes advertising, business management, business administration and office functions.
Class 43 – Refers to services providing food and drink and temporary accommodation.
ISSUES RAISED BY THE PUBLIC (as observed via Facebook posts):
1) The pattern ‘shell out’ has been patented?
Public are easily confused with the different terminologies used in the field of IP especially with regards to the word ‘pattern’, ‘patent’ and ‘trade mark’ (probably due to lack of exposure on the same). As such, it would be best to clarify the same here as follows:
a) Pattern – This term is usually used under the Industrial Design Act 1996 which refers to a ‘two-dimensional features which are put on articles for decorative purposes’. For example, the patterns on the surface of a vase.
b) Patent – Patent generally involves an invention which is new, involve inventive steps and industrially applicable as provided under the Patents Act 1983. Method of doing business however is not patentable. Nevertheless, the apparatus of doing the business may be patentable if it fulfills the statutory requirements of an invention.
c) Trade mark – A trade mark is used as an indicator of origin of a goods or services to the owner of the said mark. As defined under Section 3 of the Trade Marks Act 1976, ‘mark’ include ‘a device, brand, heading, label, ticket, name, signature, word, letter, numeral or any combination thereof’.
In this situation the mark “” and the logo “” has been registered under the Trade Marks Act 1976.
Further, as you may note and as pointed out above, the mark “” is a word mark, and the mark “” is a composite mark being a combination of the crab claw device and the word “shell” + “out”.
2) Can the owner stop other business from using “shell out”?
YES. The owner of the trade mark enjoys exclusive rights over his marks which is also deemed to have been given to the use of the marks in relation to the goods or services for which it is registered.
For example, the “” mark has been registered under Class 43 in relation to the services of providing foods and drinks. As such the protection granted extended to the goods in relation to the services as well such as the food itself.
In the current situation, the owner of the marks has put up a cautionary notice on 14th April 2017:
It is a general practice by the owner of a registered trade mark to put up a cautionary notice on the newspaper as a medium to show that he/she is the owner of the said trade mark in order to defend the mark against any act of infringement. Nevertheless, following to the issuing of the cautionary notice he/she may still initiate legal action against any act of infringement of his registered trade marks.
Please also note that the owner may take legal action not just from the date of the registration of the trade mark, but he may also do the same to any infringement occurring between the filing date and the registration.
3) Can other business use “shell out”?
NO. Any use of an identical or so nearly resembling the registered marks so likely to deceive or cause confusion in the course of the trade in relation to goods or services in respect of which the trade marks are registered will amount to a trade mark infringement except where such act is permitted by the owner of the marks.
However, other business which is beyond those for which the trade mark is registered can still use “shell out”. This would include any attempt to register the same. Such application would rarely be acceptable since it lacks inherent distinctiveness in itself unless the new applicant can show that there is no likelihood of confusion or capable of distinguishing the applicant’s goods or services from the registered owner’s marks.
4) Does this also means that other business should stop selling foods with the same concept – eating seafood masses on table?
NO. Trademark protects the mark itself, having associated with the owner of the mark in respect of the goods and services the owner offers. However, this does not extend to the way or method of doing the business itself.
In other word, other business may still serves foods with the same concept provided that they did not refer it as ‘shell out’.
5) But most business has been using ‘shell out’ for the past few years!
A generic mark refers to the use of the mark as a name or description of an article, substance or service such as Tupperware or Aspirin. However, there are few other instances whereby the mark remains validly registered despite the same has become generic in some other countries such as Cola or Xerox. In this situation particularly, the public claimed that “shell out” referred as eating seafood masses on table.
Though it is a legal principle under the trade mark law that a generic mark may be deemed as an entry wrongfully remaining in the Register of the MyIPO (as provided under Section 33 of the Trade Marks Act 1976) the general principle has always been that the registration of the trade mark remain valid even if the mark has become generic by the use of the public after the registration of the said marks.
However, if other business owner (traders) can prove among others, that the word has become generic which is used by them not in relation to the goods connected in the course of trade with the owner of the registered mark they may apply to the Court to remove the registered mark from the MyIPO’s Register.
6) What if the other business have been using “shell out” before or at the same time with the registered owner?
There are 2 ways to go about the above situation:
(a) Prior use
In the event that other business has been using “shell out” before the registered mark, he/she can show that he/she have used the same in the past over a period of time.
This is usually done by showing substantial evidence of use of the mark in Malaysia to the MyIPO (prior to the filing date of the current registered mark) to substantiate arguments that his/her mark has acquired a secondary meaning by way of its extensive use in relation to the goods / services applied for.
(b) Honest concurrent use
New applicant may need to convincingly argue that he/she has honest concurrent use of his/her mark since at least the date of application of the registered marks.
If the new applicant can prove honest concurrent use, this amounts to an exception to which the Registrar may then exercise his discretion to allow the new applicant’s mark to proceed to registration despite the fact that there may already exists a confusingly similar mark for similar goods or services.
For this purposes, the new applicant needs to adduce evidence which is capable of showing to the Registrar that the relevant public has had sufficient opportunity to become aware that there are two such marks which are in use in the same market and that they are able to be alert to the possibility of confusion and as such some degree of actual confusion may be tolerated.
(c) Application to expunge / remove the registered mark by an aggrieved person:
There are several grounds provided under the Trade Marks Act 1976 to remove / expunge any registered mark such as:
(i) Non use – If the new applicant is able to gather evidence to show that the registered mark has not been used for a period of 3 consecutive years, the new applicant will be able to apply to the High Court to expunge the cited mark on the grounds of non-use.
(ii) The mark has become generic (as discussed earlier).
(iii) Entry made in Register without sufficient cause – This refers to the registrability of the registered mark.
As a conclusion, it is important for the public to be more aware of the various field of protection and the right entails under the Intellectual Property provided under our statutory laws. Trademark particularly did not just merely serve as an indicator of origin of a goods or services to the owner of the said mark but it also protect the quality associated with the mark.
There is no business without monumental hurdles from marketing to branding in order for them to achieve to their current position in the market. To have it widely known using the mark is an effort to distinguish the owner goods from other traders and to built a reputation is not a ONE DAY business. Without the protection accorded by the registration of the trade mark, third parties can easily and unfairly ride on and profit from the owner’s goodwill and reputation present in his/her mark.
AZARITH SOFIA BINTI AZIZ
*The above article is purely for academic purposes only and does not constitute legal advice, opinion or any other form whatsoever.
The U.S. Court of Appeals for the Federal Circuit has reopened the years-long case between Apple and Samsung in which Samsung has been accused of copying the design of the iPhone for its Galaxy S series.
To be clear, the case doesn’t come down to whether or not Samsung infringed on Apple patents. At issue before the court is how the damages will be calculated. Samsung, which was ruled to have violated Apple’s design patents by a jury in 2012, initially found itself on the hook for the profits generated by each of the 11 patents determined to have to been infringed. Effectively, the company would have had to pay Apple a percentage of each sale. The justices disagreed, ruling that the company only needed to pay damages on the infringing components of those smartphones.
In throwing out the case in December, they were persuaded by the “text of the law,” The Hill reports. In delivering the court’s majority opinion, Justice Sonia Sotomayor wrote that “article of manufacture” — the legal term that refers to both a product sold to a consumer and a component of said product — has a “broad meaning,” and that an “article” could refer to “a particular thing.” In Samsung’s case, an “article” could be an infringing smartphone’s appearance, for instance, or software feature.
Samsung initially faced $1 billion in penalties, a total representing all profits generated by the infringing smartphones. That fine was subsequently reduced to $548 million, and then again to $399 million.
Design patents, as the name suggests, protect the unique look of a product. Utility patents protect the functional parts of a product. In the original 2012 case, Apple sued Samsung saying it copied various design patents of the iPhone. The jury ended up siding with Apple, agreeing that Samsung copied the black rectangle shape and rounded corners, the bezel, and a patent that covered the graphical layout of icons on the iPhone. The Korean giant was ordered to pay “total profits” of the phones in question.
“Whoever during the term of a patent for a design, without license of the owner, applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit, but not less than $250, recoverable in any United States district court having jurisdiction of the parties,” the law states.
Samsung, and many of its supporters, believe the reward for infringing a design patent should not involve the “total profits.” Since a smartphone is filled with thousands of patented components, infringing design patents should not amount to the total profit of the smartphone. Apple counters that the whole design sells the phone — removing the need to pay total profits would hamper legal protection for new products and design.
In recent court filings, Apple has said while “total profit” should mean that Samsung has to pay the total profit of a sale, “article of manufacturer” could mean specific features and not the whole product. The company said in court that significant financial damage would deter people from stealing designs of products.
In October 2010, executives from Samsung and Apple met and Apple execs suggested Samsung pay $30 per phone and $40 per tablet for infringing on design patents for the iPhone and iPad. Earlier in the year, HTC agreed to pay Microsoft $5 for every Android device ever sold. Apple’s suggestion was too high for Samsung and the company declined.
Apple sued Samsung the following year for “slavishly” copying the iPhone’s design. Samsung countersued for 3G patents, and filed claims in Germany, Japan, and South Korea.
The next six years involved Apple getting judges to ban Samsung devices in various countries, failed settlement talks, and Samsung and Google being forced to scale back the universal search bar on the Galaxy Nexus and Galaxy S3. In the U.K., Apple also had to post a public apology that said Samsung did not copy its designs.
In 2012, however, a trial court verdict was reached in the U.S. The jury sided with Apple, awarding the U.S company $1 billion in damages. That did not stop the iPhone maker, as it quickly followed up with another lawsuit that targeted newer Samsung devices. In 2013, the judge that presided over the first case found that the damages Samsung had to pay were calculated incorrectly. Around $450 million of the $1 billion was invalidated and a retrial kicked off later in the year.
In another blow to Samsung, the retrial earned Apple an additional $290 million in damages, bringing the total Samsung has to pay to $929 million, a little short of the original $1 billion victory. Samsung immediately appealed the decision. In December 2015, Samsung agreed to pay $548 million to Apple, of which $399 million was in dispute — in other words, $149 million was the lowest amount Samsung would have to pay.
That amount was based off total profits made by Samsung — and this is where the Supreme Court comes in. Now, Samsung is arguing that the $399 million is far too excessive.
More than a hundred designers and educators support Apple. They are industry professionals and have provided product design services to companies such as Apple, AT&T, Calvin Klein, Coca-Cola, Ford, General Electric, General Motors, Hewlett-Packard, Google, IBM, the New York Stock Exchange, NASA, Samsung, and more.
Some other notable names include Raymond Riley, executive creative director at Microsoft, Bruce Claxton, the former senior director of design at Motorola Solutions, Calvin Klein, the founder of the fashion brand, Sohrab Vossoughi, a former senior industrial designer at HP, and others.
Who’s with Samsung
A host of Silicon Valley companies are rooting for Samsung, including Google, Facebook, eBay, Dell, HP, Newegg, Vizio, and a smaller coalition of other tech firms. Non-profits like the Electronic Frontier Foundation also support the South Korean giant, as do 50 intellectual property professors from universities like Stanford, Georgetown, Notre Dame, and more.
The decision won’t impact consumers, but it will affect how future design patent disputes are handled.
PATENT OWNER V. PUBLIC HEALTH
One of major concern about patent system is regarding public health. There are some who argued that patent system do unjustice to public because patent will prevent some people, particularly the poor, to have access to medicines.
Thus there is always a debate between these patent owner, mostly large corporations and the public on whether some medicines should be patented or not.
Actually both patent owner and public have their own rights and views in this issue as below;
i. PATENT OWNER VIEW;
Commercial incentives provided by the patent system are not sufficient
ii. PUBLIC VIEW;
Patent rights – prevent access to, or increase prices of, essential medicines
1. PATENT: OWNER’S RIGHTS
To further discuss about both views, first we must understand what is the right of the owner of patents and also the right of the public regarding a patented products especially in Malaysian context.
PATENT ACT 1983
Section 36. Rights Of Owner Of Patent.
(1) Subject and without prejudice to the other provisions of this Part, the owner of a patent shall have the following exclusive rights in relation to the patent:
(a) to exploit the patented invention;
(b) to assign or transmit the patent;
(c) to conclude licence contacts.
2. PATENT: PUBLIC RIGHTS
Although after an owner being granted IP rights for the product, generally the public also has some rights pertaining the usage of that particular product, usually by an action of the government which is the possibility of issuing compulsory licenses, research exceptions or parallel imports.
Sections 48 to 54 provides for compulsory licences, Section 84 provides for the “Rights of Government”, the term for “Government Use” in the Patents Act. Section 37 (1) provide for research exceptions, Section 37(2) and Section 58A provide for parallel import, based on the international exhaustion of rights principle.
3. PUBLIC – 1 PATENT OWNER – 0
In 2003 Malaysia became the first country to issue a compulsory license following the adoption of the Doha Declaration on TRIPS and Public Health by the 2001 Ministerial Conference of the World Trade Organisation. The Declaration reaffirmed the rights, flexibilities and safeguards vested in WTO Members by the Agreement on Trade-related Aspects of Intellectual Property (TRIPS). Thus for the purposes of ensuring access to medicines, a government or a third party (contractor) authorised by the government can import or manufacture a generic version of a patented drug for “public non-commercial use”. This means the use of those drugs in public hospitals and clinics.
Detailed of the issue written by Marius Meland as below;
Law360, New York (February 26, 2004, 12:00 AM EST) — In a historic move, Malaysia’s government has issued the world’s first compulsory license, allowing a local firm to import patented anti-HIV/AIDS drugs from an Indian generic makers under fixed prices. The move marks the first time a government had issued a compulsory license under last year’s hotly disputed paragraph 6 of the Doha declaration on Trade Related aspects of Intellectual Property Rights (TRIPS) and public health.
The Malaysian government authorized Syarikat Megah Pharma & Vaccines to hold a compulsory licence to import four anti-retroviral HIV/AIDS formulations – containing a total of three active pharmaceutical ingredients from Indian drug maker Cipla.
The patents of Didanosine, one of the key ingredients, is held by Bristol-Myers Squibb, while GlaxoSmithKline owns the patent of Lamivudine and Zidovudine, two other active ingredients.
Under the licence, Cipla is allowed to export and sell these medicines under fixed ceiling prices to the Malaysian government for exclusive supply to government hospitals for two years.
In accordance with the TRIPS rules on compulsory licensing, the Malaysian government is requiring that the brand name, shape or coloring of the tablets be different from of the corresponding patented products in Malaysia.
Compulsory licensing allows a government to temporarily override a patent. This allows generic copies of a patented product to be produced domestically, with compensation paid to the patent holder. For example, a government may issue a compulsory license to a company to produce generics when faced with a public health problem.
The TRIPS Agreement lays out certain procedural requirements that governments must follow when using compulsory licensing, including an expedited procedure for times when a government faces a public health “emergency” and must respond quickly.
Article above clearly show that a government can exercise its rights according to its jurisdiction pertaining a public issue towards a patented product. As far as the rights being stated in its act.
4. CASE EXAMPLE
Discuss below is another two (2) case examples of exercising public rights either by the public or by the government regarding a patented products.
MSF v. Pfizer
Earlier this month, the humanitarian organization Doctors Without Borders (MSF) began legal proceedings to block Pfizer’s attempts to patent its top-selling pneumonia vaccine in India. Called Prevnar 13, the vaccine pulled in over $6 billion last year.
MSF hopes to prevent Pfizer from successfully patenting the drug in India in order to ensure other manufacturers can produce the vaccine at prices more affordable for India’s population and for MSF itself. Only one other drugmaker, GlaxoSmithKline, makes a pneumococcal conjugate vaccine and both versions can be expensive. (Ned Pagliarulo @NedPagliarulo,March 24, 2016 ).
Novartis v. Union of India & Others (2013)
GLIVEC (imatinib mesylate), produced by the pharmaceutical company Novartis, is prescribed in the case of Chronic Myeloid Leukemia, one of the most common blood cancers in eastern countries. After more than a decade of legal battles surrounding its patentability, the Supreme Court of India gave its final decision on April 1st of 2013, rejecting the appeal of the Swiss giant drug manufacturer. In 2006, the Indian Patent Office first refused Glivec’s patent under Section 3(d) of the Indian Patent Act arguing that it was only a modified version of an existing drug, IMATINIB, and therefore that the drug was not innovative.
This case illuminates how India is interpreting international law to fit domestic public health needs.
The Novartis case arguably sets an important precedent for the global pharmaceutical industry and ideally will help improve access to lifesaving medicines in the developing world by demanding that patient health needs supersede commercial interests.
As a conclusion, as we can see from the above discussion and case examples in Malaysia and India, although the IP owner has a specific rights as stated in the act, but when come the issues of public interest, the same act also provide remedies that can be used by the government. So our act actually give both owner and public certain rights in a fair manners.
iv. http://nopr.niscair.res.in/bitstream/123456789/10211/1/JIPR%2015(5)%20357-363.pdf; Compulsory Licensing under TRIPS: How Far it Addresses Public Health Concerns in Developing Nations, Raadhika Gupta NALSAR University of Law, Shameerpet, R R District, Hyderabad 500 078, AP
NAME : MOHD NIZAM BIN MOHD KHIR
MATRIC NUMBER : GP04827
The History and Evolution of Business Method Patents
Business methods is a rapidly evolving topic in patent law. Business methods originally could not be patented at all, but they are now considered on almost the same basis as any other type of invention.
Historically, one could not patent a business method because of a long-standing rule known as the “business method” exception. This rule stated that business methods were not patentable subject matter, and has been cited by cases from more than a century ago.
In addition, the courts did not extend patent protection to computer software, a key component to many business method patents.
- In Gottschalk v. Benson and Parker v. Flook, the Supreme Court ruled that software was like mathematics and laws of nature to be entitled to patent protection.
- The Supreme Court changed its direction in 1981 when it ruled in Diamond v. Diehr that inventions would not be excluded from patent protection simply because they utilized computer software. Since then, courts have broadened the scope of protection available to software-related inventions.
A computer-implemented process for curing rubber was patent eligible, but not because it involved a computer. The claim employed a “well-known” mathematical equation, but it used that equation in a process designed to solve a technological problem in “conventional industry practice.” The invention in Diehr used a “thermocouple” to record constant temperature measurements inside the rubber mold, something “the industry had not been able to obtain.”
The temperature measurements were then fed into a computer, which repeatedly recalculated the remaining cure time by using the mathematical equation. These steps, “transformed the process into an inventive application of the formula. “In other words, the claims in Diehr were patent eligible because they “improved an existing technological process, not because they were implemented on a computer”.
Over the last decade, patents have become the preferred method for legal protection of computer software. In a series of decisions including Computer Associates v. Altai and Lotus v. Borland, federal courts greatly reduced the scope of copyright protection for software to the point where little more is protected than exact copying of software code.
If vendors want broader protection for computer software functionality, they must now seek it under patent laws. This made way for the final step before business methods became patentable subject matter.
In 1998, the Federal Court finally rejected the “business method” exception and extended patent protection to business methods in its decision in State Street Bank v. Signature Financial Group.
That decision upheld a patent on a “hub and spoke” automated data processing system that used a series of calculations to transfer assets among a pool of mutual funds. The court found the exception to be ill-conceived. It stated that it would be inappropriate to prevent an otherwise patentable invention from being issued a patent simply because it is implemented using a computer.
This landmark decision resulted in the court extending patent protection to business methods that used computers.
The rapid evolution of the internet and its recognition as a powerful interactive medium for establishing commercial relations, placing orders, paying invoices, recording transactions and delivery of information services and products, such as audio, video, software, and games online has also led to a flood of business method patent applications in the USPTO.
The hardware and software patents to e-commerce inventions covers virtually all the elements of the internet that act and interact to provide the exchange or delivery of information related to B2B and B2C transactions.
In addition to the generic innovations underlying telecommunication and processing, such as personal computers, servers and telecommunication networks, there are other categories of innovation that may merit protection as patentable inventions, such as:
- Internet and e-commerce specific inventions – e.g. communication protocols and system interfaces;
- Hardware adaptations – made to conventional personal computers, televisions, telephones, servers, and peripherals to provide access more efficiently and effectively and use of the internet;
- User interfaces – such as the single click check-out feature employed by Amazon.com to limit competition from BarnesandNoble.com;
- Product applications – such as games and services (for example, search engines); and
- Operational applications – such as software-based innovations for signal processing, encryption, compression, security, and analysis.
The State Street case made it clear that the focus of the patent inquiry should not be on the subject matter, but rather on the other patent doctrines.
Currently the USPTO is interpreting these doctrines to permit many patents to be issued to applicants claiming internet business methods that seem excessively broad or obvious to people skilled in the relevant art and is construing the scope and non-obviousness requirements more broadly or implying that the current standards are inappropriate in the internet context.
An illustration of an e-commerce invention can be found in the ‘1-Click’ system devised by Amazon.com as a method for expediting online orders.
This method allows a repeat customer to bypass address and credit card data entry forms, because Amazon.com can access that information directly from the customer’s computer. Amazon.com, who was granted a patent on this business method in September 1999,9 promptly filed a lawsuit alleging that BarnesandNoble.com copied the 1-Click process, renaming it ‘Express Lane’ (Amazon.com Inc v BarnesandNoble.com Inc and BarnesandNoble.com LLC).
The Progress Bar
Now, none of us are strangers to the progress bar, right? We download something, and a little bar pops up to let us know how much longer we must wait. Or, in the case of pizza delivery company, that bar tells when my food will arrive.
Hundreds of companies make use of that little bar, with percentages telling us what has been completed and what is left to finish.
The problem is, Apple owns the patent on the progress bar
The Singapore Scenario
The law of patents in Singapore is governed by the Patents Act (Cap 221) (‘Act’) which came into force on 23 February 1995.
The Act (based generally on the UK Patents Act 1977) provided Singapore with an independent patent system. It was amended in 1995 to bring the law into conformity with TRIPS. Singapore has also acceded to several major international conventions dealing with, inter alia, patent protection, including the Paris Convention, PCT and Budapest Treaty, which came into force with respect to Singapore on 23 February 1995.
Singapore, as a member, is required to comply with ‘TRIPS-specific’ provisions on patents.
TRIPS contain specific provisions dealing with patentability and exclusions, rights conferred and exceptions thereto, term of protection, process patents, government use and compulsory licenses. Article 27.1 of TRIPS makes patent protection available for any invention, whether products or processes, in all fields of technology, provided they satisfy the requirement of being new, involving an inventive step (‘non-obvious’) and are capable of industrial application (‘useful’). Such rights are available and enjoyed without discrimination as to the place of invention, the field of technology and whether the products are imported or locally produced.
The earlier discussion in this paper on the approach of TRIPS to computer programs and business method patents is relevant and applicable in the Singapore context with even greater force as Singapore is a member state.
The earlier Singapore Patents Act 1994 contained s 13(2) (which is like art 52(2) and (3) EPC) which expressly excluded, inter alia, the patentability of method for doing business ‘as such’.
Section 13(2) was deleted from the Act with effect from 1 January 1996. One view taken is that, notwithstanding the deletion, patentability of business methods remains open and is dependent on whether they constitute ‘inventions’ under the Act.
Another view is that the deletion was merely declaratory and does not reduce business methods patents.
It is concluded that the deletion is intended to give the Registrar of Patents and the courts the discretion to determine whether business method inventions are patentable in line with current global trends.
Singapore practices a ‘self-assessing’ regime of patents. The Intellectual Property Office of Singapore (‘IPOS’) will grant a patent regardless of the outcome of the search and examination process. Validity of a patent will be put to the test in any subsequent proceedings for revocation and/or infringement. IPOS has no examiners, and specifications are sent either to Australia or Austria.
Singapore is a small island nation-state with no natural resources and no hinterland. To survive in the New Economy, Singapore will harness the information technology and internet revolution and plug into the global economy.
It is therefore likely that, IPOS in line with the current trend, grant a business method patent if the invention satisfies the requirement of novelty, inventive step, and industrial applicability.
Japan and Australia Scenario
In Japan, the Japan Patent Office expressly states that they would allow patenting of computer software, or ‘Business Method Patents’ subject to several restrictions.
However, patent rights are denied for software dealing with application of a technology to another specific field, automation of manual tasks and any change of design based on artificial arrangements.
The Patent Office also published a guideline regarding the patentability of software. The stand of the Japan courts can be best summarized in Justsystem Corporation v Matsushita Electric Industrial Co. Heisei 17 (NE) 10040 (2005), where the newly formed Intellectual Property Court then held that the manufacture and sale of a word processing software constitutes indirect infringement of Article 101, Subparagraph 2 of the Patent Law, thus recognizing software as patentable products.
In Australia, the leading authority is the case of National Research Development Corporation v. Commissioner of Patents (1959) 102 CLR 252, where the High Court said “a process, to fall within the limits of patentability … must be one that offers some advantage which is material, in the sense that the process belongs to a useful art as distinct from a fine art … that its value to the country is in the field of economic endeavor. “
If the methods of doing business are pure or abstract then they are not considered to be patentable, but if the method is implemented using a computer, it avoids the exclusion business methods.
Section 13. Non-patentable inventions of The Malaysian Patent Act 1983
Notwithstanding the fact that they may be inventions within the meaning of section 12, the following shall not be patentable:
(a) discoveries, scientific theories, and mathematical methods;
(b) plant or animal varieties or essentially biological processes for the production of plants or animals, other than man-made living micro-organisms, micro-biological processes and the products of such micro-organism processes;
(c) schemes, rules or methods for doing business, performing purely mental acts or playing games;
(d) methods for the treatment of human or animal body by surgery or therapy, and diagnostic methods practiced on the human or animal body: Provided that this paragraph shall not apply to products used in any such methods.
In view of the development of USPTO/EPO/IPOS and rest of TRIPS members, it would be natural for software developers in South East Asia to expect at least partial patent protection for their software, particularly with the implementation of the Multimedia Super Corridor in Malaysia, as well as the emphasis on information technology in Singapore.
With the advancement of technology, copyright protection no longer provides sufficient protection to inventors of computer software. The developed world has recognized this, and thus, allowed to a certain extent, software patents. In Malaysia and Singapore there is at present no case law that has interpreted these sections to allow software patents in certain circumstances. Continue reading “The global expansion of e-Commerce has sparked the discussion on potential patent protection for business methods. My side of the coin by M Thavasegaran”
Legal requirements for nanotechnology patents
Basic requirements for European patent applications
All European patent applications, including those relating to nanotechnology, have to meet the requirements of the European Patent Convention (EPC). To get your nanotechnology patent granted: – your invention must be new (the principle of “novelty”) – it must involve an inventive step, and – it must be susceptible to industrial application. Furthermore, the invention must be adequately disclosed and the claims of the application must be clear, concise and supported by the description. How do I find out if my invention is new? When trying to determine whether or not your invention is new, it can be useful to look at catalogues and trade journals to see what is already on the market. However, the single most important source of information for seeing what inventions already exist has to be the vast collection of published patent documents describing the relevant state of the art. A search of the patent literature using Espacenet will help to give you an indication of whether or not your invention is new.
Novelty and size
For an invention to be regarded as patentable it must be new, i.e. there must be no evidence that the same invention has ever been described before. With regard to nanotechnology, the question is whether making a known device smaller is in itself novel. Generally speaking, this is not the case. Patent applications directed towards the downscaling of an entity have to meet additional criteria if they are to comply with the requirement of novelty. A smaller version of a known device is considered new if it shows the same effect as the bigger one, but to a greater extent, such that it is reasonable to assume that the size was selected on purpose. In general, if there is a technical effect that is enhanced in a selected sub-range, the device is new and not just a part of the prior art.
In nanotechnology, inventions are often defined by a parametric range. For example, particle A has a diameter in the range of 20-30 nm. What if a particle B of the same material is known and has a diameter of less than 1 µm? At first sight, it seems that particle A is not new because the claimed range of 20-30 nm is already included in particle B’s range of less than 1 µm. However, A will be considered as new provided that the selected sub-range is – narrow compared with the known range – sufficiently far removed from any specific examples disclosed in the prior art and from the end points of the known range – not an arbitrary miniaturisation of a known particle.
To be patentable, an invention must also be the product of an inventive step.
Novelty and inventive step are different criteria. Novelty basically exists if there is any difference between the invention and the known art. The question – “is there inventive step?” – only arises if there is novelty. The answer to this question is positive if a person who is skilled in the technical field of the invention and familiar with the prior art would not – on his own – have arrived at the solution provided by the invention.
When assessing whether or not a nanotechnology invention involves an inventive step, the key question is often whether the miniaturisation of a known device is inventive. Is it just a random selection, or is there a new technical advantage to be had from making it smaller?
If the inventor has simply taken the known prior art and made it smaller, without showing any particular technical advantage to making the invention this particular size, it is not inventive. In other words, there is no inventive step when the mere reduction of dimensions shows no additional or surprising effect and is arrived at arbitrarily.
However, if the invention provides a new technical advantage which was not to be found in the prior art, and it was not an obvious thing for a skilled person with a thorough knowledge of the state of the art to arrive at, then the miniaturisation could be considered inventive.
One of the features of an invention relating to a field-effect transistor was that it had an insulating layer with a thickness of 3–18 nm.
When assessing whether this feature involved an inventive step, it was decided that the thickness range for the dielectric film merely followed a trend towards miniaturisation in semiconductor devices.
The applicant also failed to demonstrate any particular effects produced by the film having this specific thickness. The thickness in this case was deemed to be an arbitrary selection, and the patent was not granted.
In many cases, nanotechnology is the product of highly sophisticated preparation methods and tools for manipulating materials in the nanometre or even molecular range. Some of these methods when applied to a highly specific problem go beyond the knowledge of the person of average skill in the field, and even beyond that of experts.
Sufficiency of disclosure, i. e. providing the skilled person with sufficient information as to how the invention is performed, is therefore a very important requirement for nanotechnology applications. The application as filed has to enable the skilled person to carry out the invention over the whole of the (broad) field claimed. To this end, the skilled person needs detailed information about the processes and tools used.
It is not sufficient to say “nanoelectrodes with a diameter of 5 nm were deposited onto a substrate”, since this cannot be done with commonly known methods. The precise conditions for carrying out the method have to be described.
Points to remember
Clarity can be a problem in nanotechnology applications, particularly if relative terms or unusual terminology are used. It is important to use terminology that has a well-recognised meaning or to word the application more precisely.
The application as a whole must disclose the invention in such a way that a person skilled in the art can carry it out.
Making something smaller does not automatically make it new or inventive. Miniaturisation-based inventions should always demonstrate an enhanced technical effect derived from the size.
The above video briefly explained the types of Intellectual Property (IP). There is limited information on Utility Innovation. Thus, today I will explain about Utility Innovation in IP.
Do you know what is Utility Innovation (UI)? Some people may not aware that UI is one of the IP elements. Terms such as ‘petty patent’, ‘innovation patent’, ‘minor patent’, and ‘small patent’ may also be considered to fall within the definition of UI.
Utility Innovation is another type of intellectual property that is very similar to patent. It is an exclusive rights conferred to an innovator that manages to come up with an incremental improvement to an existing product or process. With the exclusive right, the innovator can work the incremental invention by preventing others from exploiting the same without prior consent.
This exclusive right is available in a number of national jurisdictions, which include Malaysia. The protection is territorial. In Malaysia, UI is governed by Patents Act 1983. The term of protection for a utility innovation is 10 years and subject to renewal for two consecutive 5 years. In the event that a particular inventor renew the invention twice, the duration of protection is equivalent to patent i.e. 20 years. However, an application for extension must be accompanied by an affidavit of the owner of the certificate for the utility innovation showing that the utility innovation is in commercial or industrial use in Malaysia explaining satisfactorily its non-use.
So, what is the difference between UI and patent?
UI and patent seem to have overlaps. How?
- Firstly, it is possible to apply for both patent and utility innovations in respect of one invention. However, only one can be granted for the same invention.
- Secondly, it is also possible for the application for a patent to be converted into a certificate of utility innovations and vice versa. To do this, certain formalities would have to be complied with.
Since UI is considered as incremental invention, the requirement for obtaining protection also less stringent. To qualify protection for UI, the requirement of inventive step is omitted. The diagram below might help you in understanding what I mean.
The threshold of novelty for utility innovations is also lower than a normal patent. Only local newness is required, i.e. that it must not be known or disclosed in Malaysia.
- no requirement for worldwide disclosure as disclosure outside Malaysia is disregarded for the purpose of determining prior art.
Based on section 14(1) of Second Schedule of Patent Act 1983, a utility innovation is new to Malaysia if it is not anticipated by prior art.
The procedure of registration of UI is similar to patents. Each application will go through the formality and substantive examination. All rules pertaining to acquisition, exercise and termination of right of patents would be applicable to UI.
In a nutshell, patent and UI can be concluded as table below:
Now, lets see the application statistic of UI and patent in Malaysia. Based on the explanation above, it seems to be easier to get protection under UI rather than patent. Nevertheless, the statistics of application in MyIPO for UI is minimal compared to patent.
Data as at year 2011. The statisics showed that the application for UI is marginal as compared to patent application (regardless local or foreign applicants).
So, why we should apply for UI if we have an invention that might no be granted a patent? There are some advantages of UI, as follows:
- One of the main advantages is that filing a UI is much cheaper than obtaining and maintaining a patent
- UI is normally granted faster than a patent due to lower threshold than patent
- UI may encourage local innovation so that local industries produce more goods
- UI can protect valuable inventions/innovations which would otherwise not be protected under the standard patent law or other intellectual property laws
- UI can provide revenue to governments in the form application fees etc.
- Registered UI rights can act as a source of valuable information via published specifications
- The existence of a UI may reduce incentives for industry to lobby for the inclusion of minor inventions
Many of Malaysians are actually creative and innovative in nature. Perhaps without they realized, the tweak on any instrument they use in their daily life can be registered as UI. Based on my very own experience in my hometown, there are many new instruments that villagers invent to solve their daily problem. Some of them are really have a good prospect! However, lack of information about IP and particularly UI may lead to small number of UI’s registration. Therefore, MyIPO’s continuously put an effort in giving awareness to Malaysian about IP. Perhaps we can see the number of application in UI increase!
Okay, I think enough for now. Till we meet again.