Patent 1

Intellectual property law Primary rights Copyright • Authors' rights • Related rights • Moral rights • Patent • model • Trademark • Geographical indication • Trade secret

Sui generis rights Database right • Indigenous • Industrial design right • Mask work • Plant breeders' rights • Supplementary protection certificate

Related topics Criticism • Orphan works • Public domain • more

A patent (pronounced /ˈpætənt/ or English pronunciation: /ˈpeɪtənt/) is a set of exclusive rights granted by a state (national government) to an or their assignee for a limited period of time in exchange for a public disclosure of an . The procedure for granting , the requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a must include one or more claims defining the invention which must be new, non-obvious, and useful or industrially applicable. In many countries, certain subject areas are excluded from patents, such as business methods and mental acts. The exclusive right granted to a patentee in most countries is the right to prevent others from making, using, selling, or distributing the patented invention without permission.[1] It is just a right to prevent others' use. A patent does not give the proprietor of the patent the right to use the patented invention, should it fall within the scope of an earlier patent. U.S patent Under the World Trade Organization's (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights, patents should be available in WTO member states for any , in all fields of technology,[2] and the term of protection available should be the minimum twenty years.[3] Different types of patents may have varying patent terms (i.e., durations).

Definition The term patent usually refers to a right granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. The additional qualification utility patent is used in the United States to distinguish it from other types of patents (e.g. design patents) but should not be confused with utility models granted by other countries. Examples of particular species of patents for inventions include biological patents, business method patents, chemical patents and software patents. Some other types of intellectual property rights are referred to as patents in some jurisdictions: industrial design rights are called design patents in some jurisdictions (they protect the visual design of objects that are not purely Patent 2

utilitarian), plant breeders' rights are sometimes called plant patents, and utility models or Gebrauchsmuster are sometimes called petty patents or innovation patents. This article relates primarily to the patent for an invention, although so-called petty patents and utility models may also be granted for inventions. Certain grants made by the monarch in pursuance of the royal prerogative were sometimes called letters patent, which was a government notice to the public of a grant of an exclusive right to ownership and possession. These were often grants of a patent-like monopoly and predate the modern origins of the patent system. For other uses of the term patent see notably land patents, which were land grants by early state governments in the USA, and printing patent, a precursor of modern copyright. These meanings reflect the original meaning of letters patent that had a broader scope than current usage.

Etymology The word patent originates from the Latin patere, which means "to lay open" (i.e., to make available for public inspection), and more directly as a shortened version of the term letters patent, which originally denoted an open for public reading royal decree granting exclusive rights to a person.

History

In 500 BC, in the Greek city of Sybaris (located in what is now southern Italy), "encouragement was held out to all who should discover any new refinement in luxury, the profits arising from which were secured to the inventor by patent for the space of a year."[5] The Florentine architect Filippo Brunelleschi received a three-year patent for a barge with hoisting gear, that carried marble along the Arno River in 1421.[6] In 1449, King Henry VI granted the first patent [4] with a license of 20 years to John of Utynam for introducing the U.S. Patents granted, 1790–2008. making of colored glass to England.[7] Patents in the modern sense originated in 1474, when the Republic of Venice enacted a decree that new and inventive devices, once put into practice, had to be communicated to the Republic to obtain the right to prevent others from using them.[8] England followed with the Statute of Monopolies in 1623 under King James I, which declared that patents could only be granted for "projects Patents in force in 2000 of new invention." During the reign of Queen Anne (1702–14), the lawyers of the English Court developed the requirement that a written description of the invention must be submitted.[9] The patent system in many other countries, including Australia, is based on British law and can be traced back to the Statute of Monopolies.

In France, patents were granted by the monarchy and by other institutions like the "Maison du Roi". The Academy examined .[10] Examinations were generally done in secret with no requirement to publish a description of the invention. Actual use of the invention was deemed adequate disclosure to the public.[11] The modern French patent system was created during the Revolution in 1791. Patents were granted without examination since inventor's right was considered as a natural one [12] In the United States, during the so-called colonial period and Articles of Confederation years (1778–89), several states adopted patent systems of their own. The first Congress adopted a , in 1790, and the first patent was issued under this Act on July 31, 1790 [13] (to Samuel Hopkins of Vermont for a potash production technique). Patent 3

Law

Effects A patent is not a right to practice or use the invention.[14] Rather, a patent provides the right to exclude others[14] from making, using, selling, offering for sale, or importing the patented invention for the term of the patent, which is usually 20 years from the filing date[3] subject to the payment of maintenance fees. A patent is, in effect, a limited property right that the government offers to inventors in exchange for their agreement to share the details of their inventions with the public. Like any other property right, it may be sold, licensed, mortgaged, assigned or transferred, given away, or simply abandoned. The rights conveyed by a patent vary country-by-country. For example, in the United States, a patent covers research, except "purely philosophical" inquiry. A U.S. patent is infringed by any "making" of the invention, even a making that goes toward development of a new invention—which may itself become subject of a patent. A patent being an exclusionary right does not, however, necessarily give the owner of the patent the right to exploit the patent. For example, many inventions are improvements of prior inventions that may still be covered by someone else's patent.[14] If an inventor takes an existing, patented mouse trap design, adds a new feature to make an improved mouse trap, and obtains a patent on the improvement, he or she can only legally build his or her improved mouse trap with permission from the patent holder of the original mouse trap, assuming the original patent is still in force. On the other hand, the owner of the improved mouse trap can exclude the original patent owner from using the improvement. Some countries have "working provisions" that require the invention be exploited in the jurisdiction it covers. Consequences of not working an invention vary from one country to another, ranging from revocation of the patent rights to the awarding of a compulsory license awarded by the courts to a party wishing to exploit a patented invention. The patentee has the opportunity to challenge the revocation or license, but is usually required to provide evidence that the reasonable requirements of the public have been met by the working of invention. Patent 4

Enforcement

Patents can generally only be enforced through civil lawsuits (for example, for a U.S. patent, by an action for in a United States federal court), although some countries (such as France and Austria) have criminal penalties for wanton infringement.[15] Typically, the patent owner will seek monetary compensation for past infringement, and will seek an injunction prohibiting the defendant from engaging in future acts of infringement. To prove infringement, the patent owner must establish that the accused infringer practices all the requirements of at least one of the claims of the patent. (In many jurisdictions the scope of the patent may not be limited to what is literally stated in the claims, for example due to the "doctrine of equivalents").

An important limitation on the ability of a patent owner to successfully assert the patent in civil litigation is the accused infringer's right to challenge the validity of that patent. Civil courts hearing patent cases can and often do declare patents not valid. A patent can be found invalid on grounds that are set out in the relevant patent legislation that vary between countries. Often, the grounds are a subset of The plate of the Martin ejector seat of the military aircraft, stating that the design is covered by requirements for in the relevant country. Although an multiple patents in Britain, South Africa, Canada infringer is generally free to rely on any available ground of invalidity and "others". Dübendorf Museum of Military (such as a prior publication, for example), some countries have Aviation. sanctions to prevent the same validity questions being relitigated. An example is the UK Certificate of contested validity.

The vast majority of patent rights, however, are not determined through litigation, but are resolved privately through patent licensing. Patent licensing agreements are effectively contracts in which the patent owner (the licensor) agrees to forgo their right to sue the licensee for infringement of the licensor's patent rights, usually in return for a royalty or other compensation. It is common for companies engaged in complex technical fields to enter into dozens of license agreements associated with the production of a single product. Moreover, it is equally common for competitors in such fields to license patents to each other under cross-licensing agreements in order to share the benefits of using each other's patented inventions.

Ownership In most countries, both natural persons and corporate entities may apply for a patent. In the United States, however, only the inventor(s) may apply for a patent although it may be assigned to a corporate entity subsequently[16] and inventors may be required to assign inventions to their employers under a contract of employment. In most European countries, ownership of an invention may pass from the inventor to their employer by rule of law if the invention was made in the course of the inventor's normal or specifically assigned employment duties, where an invention might reasonably be expected to result from carrying out those duties, or if the inventor had a special obligation to further the interests of the employer's company.[17] The inventors, their successors or their assignees become the proprietors of the patent when and if it is granted. If a patent is granted to more than one proprietor, the laws of the country in question and any agreement between the proprietors may affect the extent to which each proprietor can exploit the patent. For example, in some countries, each proprietor may freely license or assign their rights in the patent to another person while the law in other countries prohibits such actions without the permission of the other proprietor(s). Patent 5

The ability to assign ownership rights increases the liquidity of a patent as property. Inventors can obtain patents and then sell them to third parties.[18] The third parties then own the patents and have the same rights to prevent others from exploiting the claimed inventions, as if they had originally made the inventions themselves.

Governing laws The grant and enforcement of patents are governed by national laws, and also by international treaties, where those treaties have been given effect in national laws. Patents are, therefore, territorial in nature. Commonly, a nation forms a with responsibility for operating that nation's patent system, within the relevant patent laws. The patent office generally has responsibility for the grant of patents, with infringement being the remit of national courts. There is a trend towards global harmonization of patent laws, with the World Trade Organization (WTO) being particularly active in this area. The TRIPs Agreement has been largely successful in providing a forum for nations to agree on an aligned set of patent laws. Conformity with the TRIPs agreement is a requirement of admission to the WTO and so compliance is seen by many nations as important. This has also led to many developing nations, which may historically have developed different laws to aid their development, enforcing patents laws in line with global practice. A key international convention relating to patents is the Paris Convention for the Protection of Industrial Property, initially signed in 1883. The Paris Convention sets out a range of basic rules relating to patents, and although the convention does not have direct legal effect in all national jurisdictions, the principles of the convention are incorporated into all notable current patent systems. The most significant aspect of the convention is the provision of the right to claim priority: filing an application in any one member state of the Paris Convention preserves the right for one year to file in any other member state, and receive the benefit of the original filing date. Because the right to a patent is intensely date-driven, this right is fundamental to modern patent usage. The authority for patent statutes in different countries varies. In the UK, substantive patent law is contained in the Patents Act 1977 as amended.[19] In the United States, the Constitution empowers Congress to make laws to "promote the Progress of Science and useful Arts..." The laws Congress passed are codified in Title 35 of the United States Code and created the United States Patent and Trademark Office. In addition, there are international treaty procedures, such as the procedures under the European Patent Convention (EPC) [administered by the European Patent Organisation (EPOrg)], and the Patent Cooperation Treaty (PCT) (administered by WIPO and covering more than 140 countries), that centralize some portion of the filing and examination procedure. Similar arrangements exist among the member states of ARIPO and OAPI, the analogous treaties among African countries, and the nine CIS member states that have formed the Eurasian Patent Organization.

Application and prosecution A patent is requested by filing a written application at the relevant patent office. The person or company filing the application is referred to as "the applicant". The applicant may be the inventor or its assignee. The application contains a description of how to make and use the invention that must provide sufficient detail for a person skilled in the art (i.e., the relevant area of technology) to make and use the invention. In some countries there are requirements for providing specific information such as the usefulness of the invention, the best mode of performing the invention known to the inventor, or the technical problem or problems solved by the invention. Drawings illustrating the invention may also be provided. The application also includes one or more claims, although it is not always a requirement to submit these when first filing the application. The claims set out what the applicant is seeking to protect in that they define what the patent owner has a right to exclude others from making, using, or selling, as the case may be. In other words, the claims define what a patent covers or the "scope of protection". Patent 6

After filing, an application is often referred to as "patent pending". While this term does not confer legal protection, and a patent cannot be enforced until granted, it serves to provide warning to potential infringers that if the patent is issued, they may be liable for damages.[20] [21] [22] For a patent to be granted, that is to take legal effect in a particular country, the patent application must meet the patentability requirements of that country. Most patent offices examine the application for compliance with these requirements. If the application does not comply, objections are communicated to the applicant or their patent agent or attorney and one or more opportunities to respond to the objections to bring the application into compliance are usually provided. Once granted the patent is subject in most countries to renewal fees to keep the patent in force. These fees are generally payable on a yearly basis, although the US is a notable exception. Some countries or regional patent offices (e.g. the European Patent Office) also require annual renewal fees to be paid for a patent application before it is granted.

Economics

Rationale There are four primary incentives embodied in the patent system: to invent in the first place; to disclose the invention once made; to invest the sums necessary to experiment, produce and market the invention; and to design around and improve upon earlier patents.[23] 1. Patents provide incentives for economically efficient research and development (R&D). A study conducted annually by the IPTS shows that the 2,000 largest global companies invested more than 430 billion euros in 2008[24] in their R&D departments. If the investments can be considered as inputs of R&D, patents are the outputs. Based on these groups, a project named Corporate Invention Board, had measured and analyzed the patent portfolios to produce an original picture[25] of their technological profiles. Without patents, R&D spending would be significantly less or eliminated altogether, limiting the possibility of technological advances or breakthroughs. Corporations would be much more conservative about the R&D investments they made, as third parties would be free to exploit any developments. This second justification is closely related to the basic ideas underlying traditional property rights.[23] 2. In accordance with the original definition of the term "patent," patents facilitate and encourage disclosure of innovations into the public domain for the common good. If inventors did not have the legal protection of patents, in many cases, they would prefer or tend to keep their inventions secret. Awarding patents generally makes the details of new technology publicly available, for exploitation by anyone after the patent expires, or for further improvement by other inventors. Furthermore, when a patent's term has expired, the public record ensures that the patentee's idea is not lost to humanity.[23] 3. In many industries (especially those with high fixed costs and either low marginal costs or low reverse engineering costs — computer processors, software, and pharmaceuticals for example), once an invention exists, the cost of commercialization (testing, tooling up a factory, developing a market, etc.) is far more than the initial conception cost. (For example, the internal "rule of thumb" at several computer companies in the 1980s was that post-R&D costs were 7-to-1). Unless there is some way to prevent copies from competing at the marginal cost of production, companies will not make that productization investment.[23] One effect of modern patent usage is that a small-time inventor can use the exclusive right status to become a licensor. This allows the inventor to accumulate capital from licensing the invention and may allow innovation to occur because he or she may choose to not manage a manufacturing buildup for the invention. Thus the inventor's time and energy can be spent on pure innovation, allowing others to concentrate on manufacturability.[26] Another effect of modern patent usage is to cause competitors to design around (or to "invent around" according to R S Praveen Raj[27] ) each other's patents. This promotes healthy competition among manufacturers, resulting in Patent 7

gradual improvements of the technology base. This may help augment national economies and confer better living standards to the citizens.

Costs Some of the costs to society associated with the granting of a patent are: the immediate costs associated with preparing the patent; patent office work; legal costs associated with prosecuting alleged infringements; business costs associated with those legal actions; increasing the cost of determining whether a method is covered by an existing patent, and reduced certainty in the result; restrictions on the use of the patented method (particularly in cases where the method is redeveloped independently). The costs of preparing and filing a patent application, prosecuting it until grant and maintaining the patent vary from one jurisdiction to another, and may also be dependent upon the type and complexity of the invention, and on the type of patent. The European Patent Office estimated in 2005 that the average cost of obtaining a European patent (via a Euro-direct application, i.e. not based on a PCT application) and maintaining the patent for a 10 year term was around 32 000 Euro.[28] Since the London Agreement entered into force on May 1, 2008, this estimation is however no longer up-to-date, since fewer translations are required. In the United States, direct legal costs of patent litigation are on average in the order of a million dollars per case, not including associated business costs, based on an American Intellectual Property Law Association (AIPLA) survey of patent lawyers (2005), and court documents for a sample of 89 court cases where one side was ordered to pay the other side's legal fees.[29]

Criticism Patents have been criticized both in principle and in implementation. In principle, patents have been criticized as a restraint of trade, for conferring a negative right upon a patent owner, permitting them to exclude competitors from using or exploiting the invention, even if the competitor subsequently develops the same invention independently. This may be subsequent to the date of invention, or to the priority date, depending upon the relevant patent law (see First to file and first to invent).[30] As state-granted monopolies, patents have been criticized as inconsistent with free trade. On that basis, in 1869 the Netherlands abolished patents, and did not reintroduce them until 1912.[31] In implementation, patents have been criticized for being granted on already-known inventions. In 1938, R. Buckminster Fuller wrote of the patent application process in the United States:[32] At present, the files, are so extraordinarily complex and the items so multitudinous that a veritable army of governmental servants is required to attend them and sort them into some order of distinguishable categories to which reference may be made when corresponding with patent applicants for the purposes of examiner citation of "" disclosure. This complexity makes it inevitable that the human-equation involved in government servants relative to carelessness or mechanical limitations should occasion the granting of multitudes of "probably" invalid patent claims. Patents may hinder innovation as well in the case of "troll" entities. A holding company, pejoratively known as a "", owns a portfolio of patents, and sues others for infringement of these patents while doing little to develop the technology itself.[33] Other commentators suggest that patent trolls are not bad for the patent system at all but instead realign market participant incentives, make patents more liquid, and clear the patent market.[34] Another theoretical problem with patent rights was proposed by law professors Michael Heller and Rebecca Sue Eisenberg. Based on Heller's theory of the tragedy of the anticommons, the authors argued that intellectual property rights may become so fragmented that, effectively, no one can take advantage of them as to do so would require an agreement between the owners of all of the fragments.[35] Patent 8

Pharmaceutical patents prevent generic alternatives to enter the market until the patents expire, and thus maintains high prices for medication.[36] This can have significant effects in the developing world, as those who are most in need of basic essential medicines are unable to afford such high priced pharmaceuticals.[37] Critics also question the rationale that exclusive patent rights and the resulting high prices are required for pharmaceutical companies to recoup the large investments needed for research and development.[36] One study concluded that marketing expenditures for new drugs often doubled the amount that was allocated for research and development.[38] Other articles shed light on the problems of today's medical research. It sets wrong priorities in research and pricing, and pushes the state-run healthcare systems even of rich nations to their limits.[39] In one response to these criticisms, one review concluded that less than 5 percent of medicines on the World Health Organization's list of essential drugs are under patent.[40] Also, the pharmaceutical industry has contributed US$2 billion for healthcare in developing countries, providing HIV/AIDS drugs at lower cost or even free of charge in certain countries, and has used differential pricing and parallel imports to provide medication to the poor.[40] Other groups are investigating how social inclusion and equitable distribution of research and development findings can be obtained within the existing intellectual property framework, although these efforts have received less exposure.[40] Brazil filed a proposal in 2010 with the WIPO Standing Committee on the Law of Patents about the imbalance of rights between IP title holders and the society as a whole with emphasis on the imbalance of benefits from strong IP rights between the few developed countries and the majority of member states.[41] Such imbalance is also recognized between freedom rights and exclusion rights by the computing profession.[42] Concerns of a similar order have also been documented elsewhere, showing that public campaigns have had a concern for "preventing the over-reach" of IP protection including patent protection, and "to retain a public balance in property rights" of this kind.[43] The same source also noted the shift that had taken place away from the historical classification of such rights as "grants of privilege", towards referring to them in terms of property and rights; a change that encouraged a change of view of the relation of sovereign governments towards them, away from something that the government "may grant" towards a "duty to uphold them".[43]

References

[1] "Patents: Frequently Asked Questions" (http:/ / www. wipo. int/ patentscope/ en/ patents_faq. html#protection). World Intellectual Property Organization. . Retrieved 22 February 2009. [2] Article 27.1. of the TRIPs Agreement. [3] Article 33 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

[4] U.S. Patent Activity 1790 to the Present (http:/ / www. uspto. gov/ web/ offices/ ac/ ido/ oeip/ taf/ h_counts. htm). USPTO. . [5] Charles Anthon, A Classical Dictionary: Containing An Account Of The Principal Proper Names Mentioned in Ancient Authors, And Intended To Elucidate All The Important Points Connected With The Geography, History, Biography, Mythology, And Fine Arts Of The Greeks And Romans Together With An Account Of Coins, Weights, And Measures, With Tabular Values Of The Same, Harper & Bros, 1841, p. 1273. [6] Christine MacLeod, Inventing the Industrial Revolution: The English Patent System, 1660-1800, Cambridge University Press, 2002, ISBN 0-521-89399-2, 9780521893992, p. 11. [7] "United Kingdom Patent Applications". nexis.com. [8] Helmut Schippel (2001) (in (German)). Die Anfänge des Erfinderschutzes in Venedig, in: Uta Lindgren (Hrsg.): Europäische Technik im

Mittelalter. 800 bis 1400. Tradition und Innovation, 4. Aufl. (http:/ / www. wolfgang-pfaller. de/ venedig. htm). Berlin: Wolfgang-Pfaller.de: Patentgesetz von Venedig. pp. 539–550. ISBN 3-7861-1748-9.

[9] "History of Copyright" (http:/ / www. patent. gov. uk/ about-history-copy. htm). UK Intellectual Property Office. 2006. . Retrieved 2007-08-12.

[10] MarketsAndPatents.com (http:/ / www. marketsandpatents. com/ bulletin/ IPB-10152009. html), Nowotarski, Bakos, “A Short History of Private Patent Examination”, IP Bulletin October 2009 [11] Frank D. Prager, “Proposals for the Patent Act of 1790", Journal of the Patent and Trademark Office Society, March 1954, vol XXXVI, No. 3, pp 157 et Seq., citing J. Isore in Revue Historique de Droit Francais, 1937 pp. 117 et Seq. [12] Gabriel Galvez-Behar, La République des inventeurs. Propriété et organisation de l'innovation en France, 1791-1922, Presses universitaires de Rennes, 2008, ISBN 2-7535-0695-7, 9782753506954.

[13] http:/ / patft. uspto. gov/ netacgi/ nph-Parser?Sect1=PTO2& Sect2=HITOFF& u=%2Fnetahtml%2FPTO%2Fsearch-adv. htm& r=1& p=1&

f=G& l=50& d=PALL& S1=1790$. PD. & OS=ISD/ $/ $/ 1790& RS=ISD/ 1790$$ Patent 9

[14] "A patent is not the grant of a right to make or use or sell. It does not, directly or indirectly, imply any such right. It grants only the right to exclude others. The supposition that a right to make is created by the patent grant is obviously inconsistent with the established distinctions between generic and specific patents, and with the well-known fact that a very considerable portion of the patents granted are in a field covered by a former relatively generic or basic patent, are tributary to such earlier patent, and cannot be practiced unless by license thereunder." - Herman v. Youngstown Car Mfg. Co., 191 F. 579, 584-85, 112 CCA 185 (6th Cir. 1911)

[15] DLA Piper Rudnick Gray Cary (2005). "Patent Litigation across Europe" (http:/ / cecollect. com/ ve/ ZZf3096aBBft91T940). cecollect.com. .

[16] "Assignee (Company) Name" (http:/ / www. uspto. gov/ web/ patents/ patog/ week39/ OG/ help/ help. htm#Assignee (Company) Name). Help Page. U.S. Patent and Trademark Office (USPTO). . Retrieved 2007-07-25.

[17] See Section 39 of the UK Patents Act (http:/ / www. ipo. gov. uk/ practice-sec-039. pdf) as an example. The laws across Europe vary from country to country but are generally harmonised

[18] Article 28.2 TRIPs (http:/ / www. wto. org/ english/ docs_e/ legal_e/ 27-trips_04c_e. htm): "Patent owners shall also have the right to assign, or transfer by succession, the patent and to conclude licensing contracts.". [19] United Kingdom law requiring no explicit authority due to the Supremacy of Parliament.

[20] IP Australia website, What does 'patent pending' mean? (http:/ / www. ipaustralia. gov. au/ media/ pages/ whatis/ patents. htm), Consulted on August 5, 2009.

[21] USPTO web site, Patent Marking and "Patent Pending" (Excerpted from General Information Concerning Patents print brochure) (http:/ /

www. uspto. gov/ web/ offices/ pac/ doc/ general/ patpend. htm), Consulted on August 5, 2009.

[22] UK Intellectual Property Office web site, Display your rights (http:/ / www. ipo. gov. uk/ types/ patent/ p-manage/ p-useenforce/

p-displayrights. htm), (under "IPO Home> Types of IP> Patents> Managing your patents> Using and enforcing") Consulted on August 5, 2009. [23] Howard T. Markey (chief judge of the United States Court of Customs and Patent Appeals and later of the Court of Appeals for the Federal Circuit), Special Problems in Patent Cases, 66 F.R.D. 529, 1975.

[24] The 2009 EU Industrial R&D Investment Scoreboard (http:/ / iri. jrc. ec. europa. eu/ research/ scoreboard_2009. htm) produced by the Institute for Prospective Technological Studies

[25] Technological profiles for global companies (http:/ / www. corporateinventionboard. eu/ en/ corporate-rankings) by analysing their patent portfolios [26] Stim, Rishand, "Profit from Your Idea: How to Make Smart Licensing Decisions", ISBN 1-4133-0450-8 (Published 2006)

[27] http:/ / www. thehindubusinessline. com/ 2007/ 03/ 06/ stories/ 2007030600492100. htm [28] With the following assumptions: "18 pages (11 pages description, 3 pages claims, 4 pages drawings), 10 claims, patent validated in 6 countries (Germany, United Kingdom, France, Italy, Spain, Switzerland), excl. in-house preparation costs for the patentee" (the costs relate to

European patents granted in 2002/2003), in European Patent Office, The cost of a sample European patent - new estimates (http:/ / www.

european-patent-office. org/ epo/ new/ cost_analysis_2005_en. pdf), 2005, p. 1. [29] Bessen, James; Meurer, Michael James (2008). Patent failure: how judges, bureaucrats, and lawyers put innovators at risk. p. 132. ISBN 069113491X.. The containing chapter (‘The Costs of Disputes’) also tries to quantify associated business costs.

[30] Gholz, Charles L. (December 2000). "First to File or First to Invent?" (http:/ / www. oblon. com/ Pub/ GholzFirsttoFile. html). Journal of the Patent and Trademark Office Society 82: 891. . Retrieved 2008-02-15. [31] Chang, Ha-Joon. "Kicking Away the Ladder: How the Economic and Intellectual Histories of Capitalism Have Been Re-Written to Justify

Neo-Liberal Capitalism" (http:/ / www. paecon. net/ PAEtexts/ Chang1. htm). Post-Autistic Economics Review. 4 September 2002: Issue 15, Article 3. Retrieved on 8 October 2008. [32] *Fuller, R. Buckminster (1938). Nine Chains to the Moon: An Adventure Story of Thought (First ed.). Phidelphia: Lippincott. p. 277.

[33] Quinion, Michael (June 17, 2006). "Patent Troll" (http:/ / www. worldwidewords. org/ turnsofphrase/ tp-pat1. htm). World Wide Words. . Retrieved 2008-02-15.

[34] McDonough III, James F. (January 31, 2006). "The Myth of the Patent Troll" (http:/ / papers. ssrn. com/ sol3/ papers.

cfm?abstract_id=959945& rec=1& srcabs=980776). The Myth of the Patent Troll. . Retrieved 2010-01-17. [35] Heller, Michael; Eisenberg, Sue (May 1, 1998). "Can Patents Deter Innovation? The Anticommons in Biomedical Research". Science 280 (5364): 698–701. doi:10.1126/science.280.5364.698. PMID 9563938. [36] Banta, D.H. (2001). "Worldwide Interest in Global Access to Drugs". Journal of the American Medical Association 285 (22): 2844–46. doi:10.1001/jama.285.22.2844. [37] Ferreira, L. (2002). "Access to Affordable HIV/AIDS Drugs: The Human Rights Obligations of Multinational Pharmaceutical Corporations". Fordham Law Review 71 (3): 1133–79. PMID 12523370. [38] Barton, J.H.; Emanuel, E.J. (2005). "The Patents-Based Pharmaceutical Development Process: Rationale, Problems and Potential Reforms". Journal of the American Medical Association 294 (16): 2075–82. doi:10.1001/jama.294.16.2075. PMID 16249422.

[39] Schaaber, Jörg (2010/11). "Misguided research" (http:/ / www. inwent. org/ ez/ articles/ 182681/ index. en. shtml). inwent.org. . Retrieved 29 November 2010.

[40] Ghafele, Roya (August 2008). "Perceptions of Intellectual Property: A Review" (http:/ / www. ip-institute. org. uk/ pdfs/ Perceptions of IP. pdf). London: Intellectual Property Institute. . Retrieved 2009-11-05.

[41] WIPO, SCP/14/7, Proposal from Brazil (http:/ / www. wipo. int/ edocs/ mdocs/ patent_policy/ en/ scp_14/ scp_14_7. pdf), Standing Committee on the Law of Patents, Fourteenth Session, January 20, 2010. Patent 10

[42] Kiesewetter-Köbinger, Swen (2010). "Programmers' Capital". Computer 43 (2): 108, 106–107. doi:10.1109/MC.2010.47. [43] Susan K Sell (2003), Private Power, Public Law: The Globalization of Intellectual Property Rights, Cambridge, 2003 (Cambridge University Press: Cambridge Studies in International Relations: 88); quoted from page 179, see also page 5.

External links

• Directory of Intellectual Property Offices (http:/ / www. wipo. int/ directory/ en/ urls. jsp), maintained by World Intellectual Property Organization (WIPO)

• Useful links, "Your guide to intellectual property information and services on the internet." (http:/ / www. epo.

org/ topics/ ip-webguide. html), maintained by the European Patent Office

• OECD Patent statistics (http:/ / stats. oecd. org/ Index. aspx?DataSetCode=PATS_IPC) Article Sources and Contributors 11 Article Sources and Contributors

Patent Source: http://en.wikipedia.org/w/index.php?oldid=408564446 Contributors: *drew, 16@r, 213.106.152.xxx, AVM, AVRS, AdamRetchless, Adriansrfr, Aggarsandeep, Ahacafe, Ahoerstemeier, Alainr345, Alansohn, Alex756, AlexHammer, Alfio, Algae, Algocu, AllanHainey, Alsandro, Altenmann, Altonbr, Amirig, Amitpnt, Ancheta Wis, Andonic, AndrewWTaylor, Andrewottiger, Andy Dingley, Anholt, Anies0807, Ann O'nyme, Ant, Anwar saadat, Apwoolrich, Archidamus, ArglebargleIV, Arolese, Arthena, Ashumishra70, Audriusa, Ausinha, AvantVenger, Avbidder, Avihu, Avneet2707, Ayls, B26tan, BD2412, BKD709, BQZip01, Barek, Barneca, Ben-Zin, Berny68, Beta Trom, Bjh21, Bkaindl, Black Butterfly, Blitrains, Bo Basil, BorgQueen, Boundlessly, Bradeos Graphon, Brian0918, Butwhatdoiknow, Caelio, Calvin 1998, Can't sleep, clown will eat me, Carlwev, Casperdc, Caspian Rehbinder, Cavanaghbmxhotmailcom, Cburnett, CesarB, Cforrester101, Chairboy, CharlesC, Chealer, Cholmes75, Chris Pickett, ChrisCork, Chrislk02, Christian Roess, Collard, Conversion script, Cpl Syx, Cquan, Craiutz, CyborgTosser, Cyktsui, DARTH SIDIOUS 2, DJ Clayworth, DLH, DMacks, DS1953, Dacxjo, Dale Arnett, Damian Yerrick, Dav4is, David Stewart, DavidDouthitt, Dckn2bu, Dctoedt, Ddr, Deagle AP, Deelkar, Denelson83, Denisutku, DerHexer, Dethme0w, Dewey Finn, Discospinster, Dongdonghao, DopefishJustin, Dougie monty, Dreadstar, Dream out loud, Dsvyas, Dwheeler, Earchontopoulos, Eastlaw, Eclecticology, Edcolins, EddieVanZant, EmilyGough, Emx, EnglishLogicKernel, Esprit15d, Eurgain, Evercat, Everyking, Evice, Excirial, Fantasy, Faradayplank, Favonian, Femto, Fennec, Fergusonian, Finell, Fire Dancer, Flatterworld, Frankg, FredLin, Freshcontext, FrozenPencil, Furrykef, GDallimore, Gabbe, Galo1969X, Galoubet, Garglebutt, Gasniera, Gaurav chd7, Gauravlekhrajani, Gdr, Geoff, Giftlite, Ginkgo100, Glacier Wolf, Glenn, Gly, Gokusandwich, Gomm, Gotyear, Gqlawyer1970, GraemeL, Grantmidnight, Greensburger, Gun Powder Ma, Gzornenplatz, Gzuckier, H Padleckas, Hadal, Harris000, Hawthorn, HermanHerman, Heron, Herorev, Hibou8, Huadpe, Hugh Mason, Ibpassociation, Ihan, ImperfectlyInformed, Ingo HH, Iprnewskerala, Ipthief, Ipwatchdog, Iridescent, Irishguy, J.delanoy, JJ100, Jagged, Jchechile, Jerazol, JettaMann, Jganders, Jhjaxson, Jiang, Jmax-, John K, John Nevard, John Quiggin, John Smythe, JohnOwens, JorgeGG, Jpk, Jrtayloriv, Jszack, Juliaschopick, Jurisnipper, Karada, Kcordina, Kenlamance, Khaash, King4057, Kuchiguchi, Kurykh, L Kensington, LVillard, Lcgdirect1, Leandrod, Learned Head, Lexor, Lginger, Lhuddleston, Lifeinneurosurgery, Lightmouse, Linguopatenting, LochVoil, Lord Emsworth, Loren.wilton, Lotje, LoudMac, Luna Santin, Lupo, M3a1xx, MJBurrage, MJustice, MK8, Magister Mathematicae, Mais oui!, Malcolm Farmer, Malcolmxl5, Mani1, MarSch, Mardus, Markashworth, Markus Krötzsch, Masi76, Matt Heard, Mav, MaxSem on AWB wheels, Maxim, Maximus Rex, Mazin07, Mbaumgartner, Mbutts, Miaow Miaow, Michael Hardy, Michaelbusch, Mikaey, Mill, Milominderbinder2, Minabel101, Mindmatrix, Minesweeper, Miquonranger03, Mircea.Vutcovici, Mirror Vax, Mm40, Modulatum, Morven, Mpa5220, Mrmike223, Mufka, Mugander, Muxxa, Mwanner, Mygerardromance, Nabarry, Nbarth, NellieBly, Netesq, Nikai, Nixeagle, Nk, Noctibus, Nostep, Nowa, Nskinsella, Nutria, ObiterDicta, Octrooi, Ohnoitsjamie, Ojcookies, Orie0505, Osbaldo, OwenX, P474900, PHiZ, Paladinwannabe2, Palpalpalpal, Pashute, PatRef, PatentLegal, Patentesque, Patently, Patentmonkey, Patentsonwiki, Pax:Vobiscum, Paxse, Pde, PeR, Pehrs, Penarff, Peterlewis, Pgk, Pharaoh of the Wizards, Philip Trueman, Piano non troppo, Piotrus, Pjrm, Pnm, Possum, Postdlf, Poweroid, PraktiRed, Pratheepps, Pyrrhus16, Quaere verum, Quantockgoblin, Ramaswami2007, Rattler2, Raulasturias, Reddi, Reswobslc, RexNL, Rhobite, Rich Farmbrough, Rich257, Richhill, Rjgodoy, Rjwilmsi, Rmalloy, Robert K S, Robertbyrne, Robigus, Robinhw, Romanm, Ronz, Rossami, Roux-HG, RucasHost, Rvalles, Ryanaxp, S01535, SDC, SFreptile, Salamander7, Sam Francis, Samw, Sandacruz, Sango123, Sara USA, SasiSasi, Savasgum, Schneedrache, Scientus, Sean.hoyland, Semperf, Seoss, Sergei76, ShanePer, Shanen, ShaunMacPherson, Shkdwnstrt, Shoujun, Signalhead, Sionus, Skelta, Smallgwg, Snottily, Solipsist, SpK, Spennacchiotto, Spitzl, Spondoolicks, SpookyMulder, SpyMagician, Squell, Sravan, Srcleere, Staxringold, Stephen C. Carlson, StuRees, Stuartr, Superm401, Suruena, Susfele, Swen, Szyslak, THF, Taejo, Tamaratrouts, Taw, Tdonoughue, Terry0051, Thatguyflint, The Thing That Should Not Be, The wub, TheProject, Thebdj, Thebeginning, Tide rolls, Tim B, Tim Ivorson, Tlesher, Tony Corsini, Torokun, Toytoy, Trödel, Tt 225, Twikimk, Twocs, Tysonwilde, Ultimus, Unbiassed, Uncle G, Uncle Milty, UrbanTerrorist, Utcursch, VBGFscJUn3, VI, Vanadyl, Vanished user 03, Vector Potential, Veinor, VernoWhitney, Versus22, VeryRusty, Vision3001, Vsmith, Walor, Walter, Watch37264, Wavelength, WhatamIdoing, WikHead, Wiki emma johnson, Wikieditor06, William Avery, Wolfkeeper, Wyatt Riot, YUL89YYZ, Youssefsan, Zenglish, Zigger, ZimZalaBim, Zzuuzz, 965 anonymous edits Image Sources, Licenses and Contributors

Image:US Patent cover.jpg Source: http://en.wikipedia.org/w/index.php?title=File:US_Patent_cover.jpg License: Public Domain Contributors: User:Unbiassed File:US patents 1790-2008.png Source: http://en.wikipedia.org/w/index.php?title=File:US_patents_1790-2008.png License: Creative Commons Attribution-Sharealike 3.0 Contributors: User:Spitzl Image:2000patent.PNG Source: http://en.wikipedia.org/w/index.php?title=File:2000patent.PNG License: Creative Commons Attribution-Sharealike 3.0 Contributors: User:Anwar_saadat/bubble_maps_(FAQ) Image:Ejector seat with patents crooped.jpg Source: http://en.wikipedia.org/w/index.php?title=File:Ejector_seat_with_patents_crooped.jpg License: GNU Free Documentation License Contributors: Audrius Meskauskas License

Creative Commons Attribution-Share Alike 3.0 Unported

http:/ / creativecommons. org/ licenses/ by-sa/ 3. 0/ 1 Business method patent

Business method patents are a class of patents which disclose and claim new methods of doing business. This includes new types of e-commerce, insurance, banking, tax compliance etc. Business method patents are a relatively new species of patent and there have been several reviews investigating the appropriateness of patenting business methods. Nonetheless, they have become important assets for both independent inventors and major corporations.[1]

Background In general, inventions are eligible for patent protection if they pass the tests of patentability: patentable subject matter, novelty, inventive step or non-obviousness, and (or utility). A business method may be defined as "a method of operating any aspect of an economic enterprise".[2]

History

France

On January 7, 1791, France passed a patent law that stated that "Any new discovery or invention, in all types of industry, is owned by its author...". Inventors paid a fee depending upon the desired term of the patent (5, 10, 15 years), filed a description of the invention and were granted a patent. There was no preexamination. Validity was determined in courts. 14 out of 48 of the initial patents were for financial inventions. In June of 1792, for example, a patent was issued to inventor F. P. Dousset for a type of tontine in combination with a lottery.[3] These patents raised concerns and were banned and declared invalid in an amendment to the law passed in 1792.

Britain

In Britain, a patent was issued in 1778 to John Knox for a “[p]lan for assurances on lives of persons from 10 to 80 years of age.” [4] At this time in British law, patents could only be issued for manufactured First page of Dousset 1792 French patent for a objects, not manufacturing processes. tontine

United States Patents have been granted in the United States on methods for doing business since the US patent system was established in 1790.[5] The first financial patent was granted on March 19, 1799, to Jacob Perkins of Massachusetts for an invention for "Detecting Counterfeit Notes." All details of Mr. Perkins invention, which presumably was a device or process in the printing art, were lost in the great Patent Office fire of 1836. Its existence is only known from other sources. Business method patent 2

The first financial patent for which any detailed written description survives was to a printing method entitled "A Mode of Preventing Counterfeiting" granted to John Kneass on April 28, 1815.[7] The first fifty years of the U.S. Patent Office saw the granting of forty-one financial patents in the arts of bank notes (2 patents), bills of credit (1), bills of exchange (1), check blanks (4); [6] Header from 1840 US 1700 on a new type of private lottery. detecting and preventing counterfeiting (10), coin counting (1), interest calculation tables (5), and lotteries (17).

On the other hand, cases such as Hotel Security Checking Co. v. Lorraine Co., 160 F. 467 (2d Cir. 1908), which held that a bookkeeping system to prevent embezzlement by waiters was unpatentable, were often read to imply a "business method exception", in which business methods are unpatentable.[8] Another such case was Joseph E. Seagram & Sons v. Marzell, 180 F.2d 26 (D.C. Cir. 1950), in which the court held that a patent on “blind testing” whiskey blends for consumer preferences would be “a serious restraint upon the advance of science and industry” and therefore should be refused.

For many years, the USPTO took the position that "methods of doing business" were not patentable. With the emergence in the 1980 and 1990s of patent applications on internet or computer enabled methods of doing commerce, however, USPTO found that it was no longer practical to determine if a particular computer implemented invention was a technological invention or a business invention. Consequently they took the position that examiners would not have to determine if a claimed invention was a method of doing business or not. They would determine patentability based on the same statutory requirements as any other A diagram showing the growth of business method patents invention.[9] [10]

The subsequent allowance of patents on computer implemented methods for doing business was challenged in the 1998 State Street Bank v. Signature Financial Group, (47 USPQ 2d 1596 (CAFC 1998)). The court affirmed the position of the USPTO and rejected the theory that a "method of doing business" was excluded subject matter. The court further confirmed this principle with AT&T Corp. v. Excel Communications, Inc., (50 USPQ 2d 1447 (Fed. Cir. 1999)). The USPTO continued to require, however, that business method inventions must apply, involve, use or advance the "technological arts" in order to be patentable. This was based on an unpublished decision of the U.S. Board of Patent Appeals and Interferences, Ex Parte Bowman, 61 USPQ2d 1665, 1671 (Bd Pat. App. & Inter. 2001). This requirement could be met by merely requiring that the invention be carried out on a computer. In October 2005 the USPTO's own administrative judges overturned this position in a majority decision of the board in Ex Parte Lundgren, Appeal No. 2003-2088 (BPAI 2005). The board ruled that the "technological arts" Business method patent 3

requirement could not be sustained,[11] as no such requirement existed in law. In light of Ex Parte Lundgren, the USPTO has issued interim guidelines for patent examiners to determine if a given claimed invention meets the statutory requirements of being a process, manufacture, composition of matter or machine (35 USC 101).[12] These guidelines assert that a process, including a process for doing business, must produce a concrete, useful and tangible result in order to be patentable. It does not matter if the process is within the traditional technological arts or not. A price for a financial product, for example, is considered to be a concrete useful and tangible result (see State Street Bank v. Signature Financial Group). The USPTO has reasserted its position that literary works, compositions of music, compilations of data, legal documents (such as insurance policies), and forms of energy (such as data packets transmitted over the Internet), are not considered "manufactures" and hence, by themselves, are not patentable. Nonetheless, the USPTO has requested comments from the public on this position. In 2006, Justice Kennedy of the US Supreme Court cast aspersions on business method patents when he commented that some of them were of "potential vagueness and suspect validity". This was expressed in a concurring opinion to the case of eBay Inc. v. MercExchange, L.L.C.[13] There has been considerable speculation as to how this opinion might affect future business method patent litigation, particularly where a patent owner seeks an injunction to stop an infringer.[14] In 2006, three Justices (Breyer, J., joined by Stevens and Souter, JJ.) dissented from the dismissal of certiorari as improvidently granted in Laboratory Corp. of Am. Holdings v. Metabolite Labs., Inc.,[15] arguing that State Street enunciated an erroneous legal test under which processes that the Supreme Court had held patent-ineligible would be held patent-eligible. On October 30, 2008, the Federal Circuit handed down its long-awaited en banc decision in In re Bilski.[16] The decision appears to hold patent-ineligible many business-method patents granted in the last decade. Bilski announces a two-branch test of patent-eligibility for processes. First, processes that transform an article from one state or thing to another are patent-eligible regardless of whether their use requires a machine. What is an article, however, is debatable. The transformations involved in smelting ores or vulcanizing rubber are clearly patent-eligible. Thus, substances such as ores and rubber, are articles. Processes involving transformation of signals representative of physical parameters may also be patent-eligible. Processes involving transformation of financial data, such as that claimed in machine format in State Street, are probably patent-ineligible. Second, processes that do not make patent-eligible transformations are patent-eligible only if they are claimed as carried out with a “particular machine.” What is a particular machine is unclear. It appears that a programmed general-purpose digital computer is not a particular machine, for this purpose. It is unclear whether a particular machine must be novel and unobvious, and specially adapted for carrying out the new process. The Supreme Court’s decision in Parker v. Flook [17] seems to call for that, but the Bilski court did not choose to opine on this point.[18] A cutting-edge issue in regard to business-method patents is whether they are patent-ineligible because they are not "technological," regardless of whether they meet the other criteria of patent-eligibility and patentability. The majority opinion in In re Bilski refused to hold business methods categorically ineligible on any ground. Judge Mayer's dissent, however, seconded by Judges Dyk's and Linn's concurring opinion, insisted that the US patent system is limited to technology and therefore it excludes trade and business expedients. Judge Mayer equated the US Constitution's limitation of patent grants to the "useful arts"[19] to a limitation to technology, relying on case law stating that technology is the modern equivalent of useful arts.[20] The Supreme Court of the United States granted certiorari in the matter of In re Bilski and the case was argued on November 9, 2009.[21] [22] The Supreme Court decision in Bilski v. Kappos on June 28, 2010 ruled that Bilski's patent was not valid. In November 2007, the United States Internal Revenue Service proposed rules that would require tax filers who paid a license fee for a to declare that to the IRS.[23] Business method patent 4

Jurisdictions Whether a business method is regarded as patentable subject matter depends on the legal jurisdiction. The World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) does not specifically address business method patents.

Australia There is no general prohibition on the patentability of business methods in Australia. Their patentability is determined by applying the tests used to determine the patentability of any type of invention. In a recent decision, Grant v Commissioner of Patents [2006] FCAFC 120, [47], the Full Court of the Federal Court of Australia held that a business method will only be patentable if it has a physical aspect, being a concrete, tangible, physical, or observable effect or phenomenon. Accordingly, 'pure' business methods, being those that do not have a physical aspect, are not patentable in Australia. However, it has been suggested that Grant v Commissioner of Patents was wrongly decided because the court failed to properly apply the existing law as set out in the decision of the High Court of Australia in National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 and that the court should not have imposed a physical aspect requirement.[24]

Canada Pure business methods cannot be patented in Canada because of its pre-constitutional (in 1982) subordination to British Common Law. Article 1(2)(c) of the Patent Law of 1977 “It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of …. a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer.” For example, the Canadian counterpart application of the U.S. patent at issue in the State Street case has been abandoned. However, a business method patent may be patented in Canada if the patent is claimed in a manner which provides that an apparatus is involved. See Mark B Eisen, Arts and Crafts: The Patentability of Business Methods in Canada (2001), 17 C.I.P.R. 279. See also Amazon.com, Inc. v The Attorney General of Canada, 2010 FC 1011, October 14, 2010 [25]

Brazil According to Brazilian Patent Law 9279, "commercial, accounting, financial, educational, advertising, raffling, and inspection schemes, plans, principles or methods" are not considered to be inventions or Utility Models.[26]

European Patent Convention Under the European Patent Convention, "Schemes, rules and methods for (...) doing business" are not regarded as being inventions and are not patentable, "to the extent that a European patent application or European patent relates to such subject-matter or activities as such".[27] But if a new method solves a technical, rather than a purely administrative, problem then it may indeed be patentable. (For example, an improved design of letter-franking machine). Business method patent 5

India Per Section 3(k), business methods are not patentable per se. However they are patentable if a new method solves a "technical" problem and an apparatus/system is involved.

Japan In Japan, business methods are well recognized and accepted as patentable subject matter. The legal standard used to assess whether a business method is patentable requires that inventions be "a highly advanced creation of technical ideas by which a law of nature is utilized." Patents are not issued solely for business methods. The business method must contain a technical aspect that is both tangible and real. However this requirement may be satisfied simply by specifying that the method is implemented using a computer.

United States There is no exclusion for methods of doing business under US patent law. Patent applications for methods of doing business are examined using the same standards as any other invention. Current case law (In re Bilski) requires that a method for doing business must be tied to a particular machine (e.g. computer) or transform matter. This case law, however, is under review by the US Supreme Court. In oral arguments presented in November 2009, the justices of the Supreme Court seemed sceptical of the plaintiff's arguments that a business method did not have to be tied to a machine.[28] The Supreme Court decision in Bilski v. Kappos on June 28, 2010 ruled that Bilski's patent was not valid. However, the decision was widely criticized for resolving the immediate problem with Bilski's business method patent while offering little guidance on the actual issue of business method patentability. Ultimately, the court rejected the more 'bright-line' test proposed by the federal circuit as too rigid and resolved the question by restating the statutes broad goals. Therefore, business methods continue to be patentable subject matter; however, the question remains as to how exactly to decide that patentability. On average, the USPTO will issue 20 rejections for every allowance. Patent applications in more conventional technologies, such as electrical connectors will only get 2 rejections for every allowance. [29] Business method patent 6

Classification Methods of doing business that involve the use of a computer are classified in Class 705 ("data processing: financial, business practice, management or cost/price determination"). Class 705 includes sub-categories for industries such as health care, insurance, electronic shopping, inventory management, accounting, and finance.

Delays in examination

The USPTO is experiencing significant delays in examining business method patents. Projected delays of up to 14 years have been reported.[31] The delays are due to a combination of the step change in business method filings as of the State Street Bank decision and the difficulty in hiring qualified examiners with financial services backgrounds (e.g. insurance and banking). It has also been reported, however,[32] that inventors can get their patent applications examined in as little as six months, if they submit a Petition to make special. A petition to make special is a procedure for getting particular patents examined early.

Peer to Patent

In July 2008, the USPTO announced that business method patent applications would be opened up to public commentary as part of the Peer to patent pilot program.[33] Only applicants that volunteer and sign a waiver will have their applications be part of the program. They Average delays to first for Business [30] must apply no later than one month after their applications are Method Patents published.[34] Those that do volunteer will have their applications examined right away. It is hoped that knowledgeable members of the public will review the applications and provide prior art and commentary to assist patent examiners in examining them. A Peer-to-Patent project is also running in Australia (see Peer-to-Patent Australia).

Classification In the 8th edition of the International Patent Classification (IPC), which entered into force on January 1, 2006, a special subclass has been created for business methods: "G06Q". In the previous editions, business methods were classified in "G06F17/60". This is purely a classification matter and will not change the patent laws however.

See also • Patentability • debate • Category:Computer-related patent law • State Street Bank v. Signature Financial Group • Decision T 931/95 (Pension Benefit Systems Partnership) of August 9, 2000 of the Boards of Appeal of the European Patent Office (EPO) • EBay v. MercExchange [35] • • Public participation in patent examination Business method patent 7

References

[1] Rutkowski, T. "Carriers Unaware of IP Ownership Threats and Opportunities", Insurance Networking News, August 1, 2005 (http:/ / web.

archive. org/ web/ 20070929091155/ http:/ / www. insurancenetworking. com/ protected/ article. cfm?articleId=3505)

[2] (http:/ / www. acip. gov. au/ library/ bsreport. pdf) [3] Description des Machines et Procédés Specifies Dans Les Brévets D’Invention, De Perfectionnement et D’Importation, 1811 pp 544 et seq.

(http:/ / books. google. com/ books?pg=RA1-PA559& lr=& as_drrb_is=b& as_minm_is=0& as_miny_is=& as_maxm_is=0&

as_maxy_is=1900& id=cEYFAAAAQAAJ& as_brr=0#v=onepage& q=& f=false)

[4] Bilski v. Kappos, USPTO Brief for the Respondent, September 30, 2009, p30 (http:/ / www. patentlyo. com/ 08-964bsunitedstates. pdf)

[5] “Automated Financial or Management Data Processing Methods (Business Methods)” (http:/ / www. uspto. gov/ web/ menu/ busmethp/

index. html#origins) USPTO white paper’

[6] http:/ / v3. espacenet. com/ textdoc?DB=EPODOC& IDX=US1700

[7] Kneass, John, “A Mode of Preventing Counterfeiting”, US patent x2301 (http:/ / www. uspto. gov/ web/ menu/ busmethp/ x2301. html)

[8] P. Jason Hadley, Jung Hahm, Tanya Harding, Steven Lee, Malcolm T. Meeks, Richard Polidi. "commentary on State Street Bank" (http:/ /

www. law. cornell. edu/ patent/ comments/ 96_1327. htm). University of Cornell Law School. .

[9] State Street Bank v. Signature Financial, decided July 23, 1998 (http:/ / www. law. emory. edu/ fedcircuit/ july98/ 96-1327. wpd. html), citing the then current MPEP Sec. 706.03(a) (1994)

[10] "Section 2106, Patentable Subject Matter - Computer-Related" (http:/ / www. bitlaw. com/ source/ mpep/ 2106. html). MPEP. Seventh Edition (July 1998). .

[11] (http:/ / patentlaw. typepad. com/ patent/ 2005/ 10/ patent_board_el. html)

[12] (http:/ / www. uspto. gov/ web/ offices/ pac/ dapp/ opla/ preognotice/ guidelines101_20051026. pdf) [13] eBay Inc. v. MercExchange, L.L.C., 126 S. Ct. 1837 (2006), Kennedy, J., concurring, page 2

[14] “Injunction Mud” The Patent Prospector, May 16, 2006 (http:/ / www. patenthawk. com/ blog/ 2006/ 05/ injunction_mud. html) [15] 548 U.S. 124 (2006). [16] — F.3d —, 88 U.S.P.Q.2d 1385 (2008). [17] 437 U.S. 584 (1978). [18] The two-branch test is based on the decisions of the Supreme Court in its patent-eligibility trilogy some three decades ago — Gottschalk v. Benson, 409 U.S. 63 (1972); Parker v. Flook, 437 U.S. 584 (1978); and Diamond v. Diehr, 450 U.S. 175 (1981). [19] Article I, section 8, clause 8 of the Constitution Gives Congress the power “To promote the Progress of…useful Arts” by granting patents. The Supreme Court has held that the grant of power is also a limitation on congressional power. Graham v. John Deere Co., 383 U.S. 1, 5-6 (1966). [20] See, for example, Malla Pollack, The Multiple Unconstitutionality of Business Method Patents, 28 Rutgers Computer & Tech. L.J. 61, 96 (2002; Micro Law, "What Kinds of Computer-Software-Related Advances (if Any) Are Eligible for Patents? Part II: The Useful Arts

Requirement," IEEE MICRO (Sept.-Oct. 2008) (available at http:/ / docs. law. gwu. edu/ facweb/ claw/ KindsElg-II. pdf and http:/ /

ieeexplore. ieee. org/ stamp/ stamp. jsp?arnumber=4659278& isnumber=4659262. pdf ).

[21] http:/ / www. supremecourt. gov/ oral_arguments/ argument_transcripts/ 08-964. pdf Transcript of Oral Argument (PDF) in In re Bilski (retrieved Nov. 10, 2009)

[22] http:/ / www. scotuswiki. com/ index. php?title=Bilski_v. _Kappos Links to Briefs in In re Bilski (retrieved Nov. 10, 2009) [23] IRS Patent Transactions Rule Changes, Federal Register / Vol. 72, No. 186 / Wednesday, September 26, 2007 / Proposed Rules 54615

(http:/ / www. regulations. gov/ fdmspublic/ component/ main?main=DocumentDetail& d=IRS-2007-0112-0001) [24] Ben McEniery, ‘Patents for Intangible Inventions in Australia After Grant v Commissioner of Patents (Part 1)’ (2007) 13(2) Computer and

Telecommunications Law Review 70; (Online eprints version) (http:/ / eprints. qut. edu. au/ archive/ 00007006/ 01/ 7006. pdf) and Ben McEniery, ‘Patents for Intangible Inventions in Australia After Grant v Commissioner of Patents (Part 2)’ (2007) 13(3) Computer and

Telecommunications Law Review 100 (Online eprints version) (http:/ / eprints. qut. edu. au/ archive/ 00007444/ 01/ 7444. pdf).

[25] Amazon.com, Inc. v The Attorney General of Canada, 2010 FC 1011, October 14, 2010 (http:/ / www. patentlyo. com/ amazon-dot-com. pdf)

[26] http:/ / www. wipo. int/ clea/ en/ text_html. jsp?lang=EN& id=515

[27] Article 52(2)(c) and (3) (http:/ / www. epo. org/ patents/ law/ legal-texts/ html/ epc/ 2000/ e/ ar52. html) EPC

[28] Court Is "Cool to Patents on Methods" Wall Street Journal, Nov 10, 2009 (http:/ / online. wsj. com/ article/ SB125777966165638699. html)

[29] Nowotarski, Mark, “Reducing Patent Backlog and Prosecution Costs Using PAIR Data”, IP watchdog blog, August 16, 2010 (http:/ /

ipwatchdog. com/ 2010/ 08/ 16/ reducing-patent-backlog-prosecution-costs-using-pair-data/ id=12108/ )

[30] Nowotarski, "How long will it take to get a patent reviewed?" Insurance IP Bulletin, February 2008 (http:/ / www. marketsandpatents. com/

bulletin/ IPB-02152008. html)

[31] (http:/ / weblog. ipcentral. info/ archives/ 2006/ 06/ rip_van_winkle. html)

[32] Nowotarski, "Accelerated Examination", Insurance IP Bulletin, June 2006 (http:/ / www. marketsandpatents. com/ IPB-06152006. html)

[33] USPTO announcement of Peer to Patent expansion, July 16, 2008 (http:/ / www. uspto. gov/ web/ offices/ com/ speeches/ 08-26. htm)

[34] Mark Nowotarski, "Patent Q/A: Peer to Patent", Insurance IP Bulletin, August 15, 2008 (http:/ / www. marketsandpatents. com/ bulletin/

IPB-08152008. html)

[35] http:/ / www. pagebox. net/ bm3. html Business method patent 8

External links

• Software and Business Methods (http:/ / www. wipo. int/ patent/ law/ en/ developments/ software. html) on the WIPO web site • Australia's Advisory Council on Intellectual Property, Report on a Review of the Patenting of Business Systems,

September 2003 (http:/ / www. acip. gov. au/ library/ bsreport. pdf) • United States Patent and Trademark Office, Interim Guidelines for Examination of Patent Applications for Patent

Subject Matter Eligibility, October 2005 (http:/ / www. uspto. gov/ web/ offices/ pac/ dapp/ opla/ preognotice/

guidelines101_20051026. pdf)

Papers

• "Patents on Methods of Doing Business" (http:/ / wikileaks. org/ leak/ crs/ RL30572. pdf), United States Congressional Research Service, June 1, 2000 Article Sources and Contributors 9 Article Sources and Contributors

Business method patent Source: http://en.wikipedia.org/w/index.php?oldid=406638867 Contributors: ArkinAardvark, Avondude, BD2412, Benhoyt, Benmceniery, Brianpie, Butwhatdoiknow, Cherifhabib, Connelly, Dogw00dStati0n, DopefishJustin, Dsweezy, Duduch, Edcolins, Ewlyahoocom, Femto, Fred Bauder, Freshfeesh, GDallimore, Hpl1981, Hstimson, Int21h, Ipwatchdog, JPMcGrath, JamesDIvey, Jheald, John Quiggin, JohnI, Jongrant, Jpgarland, Kingdon, Koweja, Kuru, Mandarax, MrOllie, Mwanner, Nowa, Patentinfo, Petri Krohn, PigFlu Oink, Podmok, PraeceptorIP, Radiojon, Rjwilmsi, Robapalooza, Ruthstark, Scenicdrive, Scientus, Stearnsmot, Stephanwehner, TNaran, TechPurism, The wub, Wikiuser0, Zvibenari, 44 anonymous edits Image Sources, Licenses and Contributors

File:Dousset 1792.png Source: http://en.wikipedia.org/w/index.php?title=File:Dousset_1792.png License: Public Domain Contributors: Nowa Image:Lottery patent header.JPG Source: http://en.wikipedia.org/w/index.php?title=File:Lottery_patent_header.JPG License: Public Domain Contributors: Original uploader was Nowa at en.wikipedia File:Growth in Business Method Patents.jpg Source: http://en.wikipedia.org/w/index.php?title=File:Growth_in_Business_Method_Patents.jpg License: Creative Commons Attribution-Sharealike 3.0 Contributors: Nowa Image:Business method delays.JPG Source: http://en.wikipedia.org/w/index.php?title=File:Business_method_delays.JPG License: GNU Free Documentation License Contributors: Howcheng, Nowa, Superm401 License

Creative Commons Attribution-Share Alike 3.0 Unported

http:/ / creativecommons. org/ licenses/ by-sa/ 3. 0/ Economics and patents 1 Economics and patents

Patents are legal instruments intended to encourage innovation by providing a limited "monopoly" to the inventor (or their assignee) in return for the disclosure of the invention.[1] The underlying assumption being innovation is encouraged because an inventor can secure exclusive rights, and therefore a higher probability of financial rewards in the market place. The publication of the invention is mandatory to get a patent. Keeping the same invention as a trade secret, rather than disclose by publication, could prove valuable well beyond the time of any limited patent term, but at the risk of congenial invention through third party.

Economic benefits Some research suggests rather than encouraging innovation, patents can hinder development, lower R&D investments, and decrease overall economic output.[2] [3] In these models, collaboration and information sharing has a strong impact on new product development and innovation.

Macroeconomic perspective The patent system has an impact on the economy as a whole. The benefits of new results, once the research is publicly known, are available to the whole economy in the relevant field, thereby bringing advantages to all parties in that field, though reducing the direct return to the party performing the pioneering research. This reduces economic incentive for a party to conduct research and innovate. The effects of patents on a given market may vary widely according to the type of market, and whether there are other barriers to entry (e.g., business methods versus regulated medications). Even in socialist monopole economies, the adherence to international patent laws was or becomes strict, as the effect is reciprocal for public economy, as soon as the level of technology development in these economies creates comparable advantage.

Microeconomic perspective The economics surrounding a single patent, or group of patents, revolves around the balance between the expense of obtaining and maintaining the patent(s), and the income derived from owning that/those patents. The grant of a patent provides the inventor temporarily with an exclusive legal right, thereby securing a means to redeem the costs of research (by charging a higher price for its invention or by license fees from others who wish to practice it). Invention is slightly advanced as people are encouraged to research and invent by the individual financial rewards of doing so. A patent is an exclusionary right - preventing others from entering the market - and so its effect may be to increase the patent proprietor's income from that market. The major economic effect is the exclusivity period of the patent rights, when exploitation pays back for the enterprise that funded research and development. However, patenting alone does not guarantee for marketing success. The right to exclude others from entering market with copies is, however, potentially extremely valuable as it can mean total exclusivity in that market for the duration of the patent (generally 20 years from filing). For example, worldwide sales of a patented pharmaceutical can be millions of dollars per day, whereas the generic equivalent sells for less than half the price. A good example of the financial rewards available to the small business from excluding large competitors from a market is the success of the vacuum cleaner. Income improvement from a patent is difficult to measure. One may attempt to measure the difference in price of an "improved" product patent, or compare with the price of the product in markets where (or when) it were not patented. More directly measurable income is that which is received from the licensing or sale of patent rights, or Economics and patents 2

from successful litigation of infringement.

Patent valuation Patent value, like value of other property, may fluctuate over time, as markets change. What was once a pioneering invention may be soon outsold by an unpatented (and non-patent infringement) competitor catering to fringe adopters with products having features even more desirable than the invention. Contrarily, a strong patent grip could stagnate a narrow market as innovation is no longer justified, eventually resulting in reduced demand (for outmoded and over-priced products), and thus reduced patent value, as the market moves away. A particularly difficult question of value arises where inventors/owners use their patents to extract other advantages without actually marketing the invention (e.g., cross-licensing of related patents to avoid litigation, or suppressing a technology that could compete with the owner's other products). How can one determine the value of a patented product (and the underlying patent) that has not actually been produced, let alone sold in any quantity? Furthermore, many products incorporate numerous patented inventions (owned or licensed), and may carry exclusive trademarks, making it difficult to attribute a specific value to an individual patent. Would the same invention be as valuable if owned and marketed under a weak brand? In 2005, the European Commission published a comprehensive study of the value of patents for patent owners as well as for the European economy. The title of the survey was “Study on Evaluation the Knowledge Economy – What are Patents Actually Worth?” Ref [4]. The study was in part based on a survey of 20,000 patent owners who filed EPO patents between 1993 and 1997. The survey was performed in 2003. 9000 patent owners responded. The patent owners were asked how much effort was required to produce their inventions and how much monetary value their patents had been worth. The median effort to create the patentable invention was 1 person-year, with 10% of the patent owners requiring 2 or more person-years. The median value of the patents produced was €300,000, with 10% of patent owners reporting values of €10 million Euros or more.

Notes and references

[1] " (http:/ / www. uspto. gov/ web/ menu/ intro. html)" ==> Article 1, Section 8 of the United States Constitution

[2] Torrance, Tomlinson, Patents and the Regress of Useful Arts (http:/ / papers. ssrn. com/ sol3/ papers. cfm?abstract_id=1411328), Columbia Science and Technology Law Review, Vol. 10, 2009.

[3] Bessen, Maskin, Sequential Innovation, Patents, and Imitation (http:/ / www. researchoninnovation. org/ patent. pdf), January 2000.

[4] http:/ / ec. europa. eu/ internal_market/ indprop/ docs/ patent/ studies/ patentstudy-report_en. pdf

External links

• Economic Development and Patents (http:/ / www. wipo. int/ patent/ law/ en/ developments/ economic. html) and

Competition and Patents (http:/ / www. wipo. int/ patent/ law/ en/ developments/ competition. html) on the WIPO web site Article Sources and Contributors 3 Article Sources and Contributors

Economics and patents Source: http://en.wikipedia.org/w/index.php?oldid=395274765 Contributors: Corruptionfree, Eastlaw, Edcolins, Feezo, Femto, Indicators, JaGa, John Quiggin, Kcordina, Kehiii, Kostmo, Lupinelawyer, Patentinfo, PrincessCaitlai, RandomXYZb, RevRagnarok, Rich Farmbrough, Silhouette media, Snowolf, That Guy, From That Show!, The wub, Wireless friend, 25 anonymous edits License

Creative Commons Attribution-Share Alike 3.0 Unported

http:/ / creativecommons. org/ licenses/ by-sa/ 3. 0/ 1 History of patent law

Intellectual property law Primary rights Copyright • Authors' rights • Related rights • Moral rights • Patent • Utility model • Trademark • Geographical indication • Trade secret

Sui generis rights Database right • Indigenous intellectual property • Industrial design right • Mask work • Plant breeders' rights • Supplementary protection certificate

Related topics Criticism • Orphan works • Public domain • more

The history of patents and patent laws is generally considered to have started in Italy with a Venetian Statute of 1474 which was issued by the Republic of Venice.[1] They issued a decree by which new and inventive devices, once they had been put into practice, had to be communicated to the Republic in order to obtain legal protection against potential infringers. The period of protection was 10 years.[2] Patents, however, existed before the law. In England grants in the form of “letters patent” were issued by the sovereign to inventors who petitioned and were approved: a grant of 1331 to John Kempe and his Company is the earliest authenticated instance of a royal grant made with the avowed purpose of instructing the English in a new industry.[3] [4] The first Italian patent was actually awarded by the Republic of Florence in 1421,[5] and there is evidence suggesting that something like patents was used among some ancient Greek cities.[6] In 500 BC, in the Greek city of Sybaris (located in what is now southern Italy), "encouragement was held out to all who should discover any new refinement in luxury, the profits arising from which were secured to the inventor by patent for the space of a year." [7]

History by country

Ancient Greece Athenaeus, writing in the third century CE, mentions that in 500 BC, in the Greek city of Sybaris (located in what is now southern Italy), there were annual culinary competitions. The victor was given the exclusive right to prepare his dish for one year.[7] [8] Charles Anthon wrote that, in 500 BC, in the Greek city of Sybaris (located in what is now southern Italy), "encouragement was held out to all who should discover any new refinement in luxury, the profits arising from which were secured to the inventor by patent for the space of a year." [7] History of patent law 2

Australia In Australia, the system of granting patents in the Australian Colonies is based upon British law, and can be traced back to the English Statute of Monopolies of 1623. This was enacted in 1624.[9] Prior to the Colonial states enacting their own legislation in the mid 19th Century and forming their own Patent Offices, inventors applied to England for patent registration and protection. When legislatures were established in the Australian Colonies, people could apply (petition the parliament) for a patent to be granted by the Governor of the colony, by way of a Private Bill. The first of these was South Australian Private Act No.1 of 1848, granted to Andrew John Murray of Adelaide, S.A. for "An improved windlass", on the 20th June 1848, for a period of 10 years. A further three Private Acts were granted in South Australia; and several were granted in Western Australia.[10] The first patent act in Australia, other than private acts, was introduced into New South Wales in 1852 (coming into force on 10 January 1854.)[11] Victoria proclaimed its first Patent Act in 1854, with the length of the grant being for 14 years.[12] The administration of the States Patents Acts (NSW, Victoria, Queensland, SA, WA and Tasmania) was transferred to the Commonwealth of Australia from 1 June 1904. IP Australia is the Australian Government agency responsible for administering patents, as well as trade marks, designs and plant breeder’s rights in Australia.[12]

Italy The Florentine architect Filippo Brunelleschi received a three year patent for a barge with hoisting gear, that carried marble along the Arno River in 1421.[13] Patents were systematically granted in Venice as of 1450. These were mostly in the field of glass making. As Venitians emigrated, they sought similar patent protection in their new homes. This led to the diffusion of patent systems to other countries.[8]

England In England the Crown issued letters patent providing any person with a monopoly to produce particular goods or provide particular services. Apart from the grant to John Kempe and his company mentioned above[4] an early example of such letters patent was a grant by Henry VI in 1449 to John of Utynam, a Flemish man, for a 20 year monopoly for his invention. This was the start of a long tradition by the English Crown of granting of letters patent which granted monopolies to favoured persons (or people who were prepared to pay for them).[14] Blackstone (same reference) also explains how "letters patent" (Latin "literae patentes", "letters that lie open") were so called because the seal hung from the foot of the document: they were addressed "To all to whom these presents shall come" and could be read without breaking the seal, as opposed to "letters close", addressed to a particular person who had to break the seal to read them. This power was used to raise money for the Crown, and was widely abused, as the Crown granted patents in respect of all sorts of common goods (salt, for example). Consequently, the Court began to limit the circumstances in which they could be granted. After public outcry, James I of England was forced to revoke all existing monopolies and declare that they were only to be used for "projects of new invention". This was incorporated into the Statute of Monopolies in which Parliament restricted the Crown's power explicitly so that the King could only issue letters patent to the inventors or introducers of original inventions for a fixed number of years. In the reign of Queen Anne (1702–1714) lawyers of the English Court developed the requirement that a written description of the invention must be submitted [15]. These developments, which were in place during the colonial period before independence of the U.S., were the foundation for patent law in the United States, New Zealand and Australia. History of patent law 3

In the United Kingdom, the Patents Act 1977 harmonised UK patent law with the European Patent Convention. Consequently, UK patent law is no longer based on the Statute of Monopolies, but an amalgam of UK and European practices. Coincidentally, the current length of UK/EU patents is still 20 years, similar to that of the original declaration by Henry VI on the manufacture of stained glass (destined for Eton College) [16].

France King Henry II introduced the concept of publishing the description of an invention in a patent in 1555. The first patent "specification" was to inventor Abel Foullon for "Usaige & Description de l'holmetre", (a type of rangefinder.) Publication was delayed until after the patent expired in 1561.[8] In France, patents were granted by the monarchy and by others institutions like the "Maison du Roi" and the Parliament of Paris. Most often novelty was examined by the Academy.[17] Digests were published irregularly starting in 1729 with delays of up to 60 years. Examinations were generally done in secret with no requirement to publish a description of the invention. Actual use of the invention was deemed adequate disclosure to the public.[18] The modern French patent system was created during the Revolution in 1791. Patents were granted without examination since inventor's right was considered as a natural one. Patent costs were very high (from 500 to 1500 francs). Importation patents protected new devices coming from foreign countries. The French patent law was revised in 1844 : patent cost was lowered and importation patents were abolished. In the 1860s, the French Patent system was contested by liberal economists. Another reform in 1902 allowed a better publication of patents.[19]

United States During the period of America’s Thirteen Colonies a few inventors were able to obtain monopolies (i.e. "patents") to produce and sell their inventions. These monopolies were granted by petition to a given colony’s legislature. In 1646, for example, the Province of Massachusetts Bay granted inventor Joseph Jenks Sr. the exclusive right to set up water mills using a speedier engine he had developed for making edged tools, such as scythes. His monopoly was to run for 14 years. [20] The Patent and Copyright Clause of the US Constitution was proposed in 1787 by James Madison and Charles Cotesworth Pinckney. In Federalist No. 43, Madison wrote, "The utility of the clause will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law. The right to useful inventions seems with equal reason to belong to the inventors. The public good fully coincides in both cases with the claims of the individuals." The first Patent Act of the U.S. Congress was passed on April 10, 1790, titled "An Act to promote the progress of useful Arts".[21] It empowered (section 1) "the Secretary of State, the Secretary for the department of war, and the Attorney General, or any two of them" to approve the grant of a patent to an inventor fulfilling the appropriate formalities "if they shall deem the invention or discovery sufficiently useful and important". The first three members of this Patent Commission were Secretary of State Thomas Jefferson, Secretary of War Henry Knox, and Attorney General Edmund Randolph. The first patent was granted on July 31, 1790 to Samuel Hopkins of Philadelphia for a method of producing potash (potassium carbonate), an essential ingredient used in making soap, glass, and gunpowder (Carnegie Library of Pittsburgh, [22]). The method involved heating ashes from a wood fire to burn off any residual soot, thus making a more concentrated chemical. The earliest law required that a working model of each invention be submitted with the application. Patent applications were examined to determine if an inventor was entitled to the grant of a patent. The requirement for a working model was eventually dropped. The Patent Law was revised in 1793.[23] The rate of patent grants had grown to about 20 per year and the time burden on the Secretary of State was considered to be too burdensome. Patent applications were no longer examined. History of patent law 4

Patents were granted simply by submitting a written description of an invention, a model of the invention, if appropriate, and paying a fee of $30 ($1000 in 2006 US dollars). Currently, (35 U.S.C. Sec. 112) requires a written description of the invention only. The Commissioner of the USPTO may ask for additional information, patent drawings, or diagrams if the description is not clear. The Patent Board was replaced by a clerk in the Department of State. James Madison, Secretary of State, created a separate Patent Office within the State Department and he appointed Dr. William Thornton as its first superintendent in May 1802. On May 5, 1809 Mary Dixon Kies became the first woman to be awarded a U.S. patent. In that same year a Philadelphia court ruled that all patent holders were "in violation of public rights." The ruling was overturned a short time later.[24] In 1810, the Patent Office moved from the Department of State to Blodgetts Hotel. In the same year, they opened the patent model storage to the general public. The patent laws were again revised in 1836.[25] The examination of patent applications was reinstituted. The number of patents granted per year had grown to about 700. Also in 1836 the government began construction of what is now called the Old Patent Office Building, where the offices and models were housed from 1840 until 1932.[26] The Patent Office is now housed in its own complex of buildings in Alexandria, Virginia. The first 10,000 patents issued by the USPTO from July 1790 to July 1836 were destroyed in a fire in December 1836. About 2800 of them were later recovered, but the majority of them are still missing. The recovered patents are now called X-Patents because their patent numbers end with an "X." In 1870 Congress passed "An Act to revise, consolidate, and amend the Statutes relating to Patents and Copyrights" (16 Stat. 198).[27] This law mainly reorganized and reenacted existing law, but also made some important changes, such as giving the commissioner of patents the authority to draft rules and regulations for the Patent Office. From 2005-2009, three consecutive US congressional sessions have debated a patent reform act that would shift the US to a first-to-file rule, limit damages for patent violations, and provide patent defendants more methods for defense. The most recent is the Patent Reform Act of 2009.

Notes

[1] Helmut Schippel: Die Anfänge des Erfinderschutzes in Venedig, in: Uta Lindgren (Hrsg.): Europäische Technik im Mittelalter. 800 bis 1400. Tradition und Innovation, 4. Aufl., Berlin 2001, S.539-550 ISBN 3-7861-1748-9

[2] "Wolfgang-Pfaller.de: Patentgesetz von Venedig" (http:/ / www. wolfgang-pfaller. de/ venedig. htm) (in German / Italian). . [3] Terrell on Patents, 8th edition edited by J R Jones, London (Sweet & Maxwell) 1934. [4] E Wyndham Hulme, The History of the Patent System under the Prerogative and at Common Law, Law Quarterly Review, vol.46 (1896), pp.141-154. [5] Terence Kealey, The Economic Laws of Scientific Research, St. Martin's Press, 1996 [6] Gregory A Stobbs, Software Patents, Aspen Publishers, 2000, ISBN 0-7355-1499-2, page 3. [7] Charles Anthon, A Classical Dictionary: Containing An Account Of The Principal Proper Names Mentioned in Ancient Authors, And Intended To Elucidate All The Important Points Connected With The Geography, History, Biography, Mythology, And Fine Arts Of The Greeks And Romans Together With An Account Of Coins, Weights, And Measures, With Tabular Values Of The Same, Harper & Bros, 1841, page 1273. [8] M. Frumkin, "The Origin of Patents", Journal of the Patent Office Society, March 1945, Vol. XXVII, No. 3, pp 143 et Seq. [9] Brenda M. Rimmer, Science Reference and Information Service International guide to official industrial property publications 3rd edition. London : British Library, 1992 p. 7 (1.1) [10] Barton Hack "A history of the patent profession in colonial Australia, presented at the Annual Conference of the Institute of Patent Attorneys of Australia, Brisbane, Queensland, 29 to 31 March 1984" Melbourne : Clement Hack & Co., 1984 ISBN 0959026606 page 9 [11] ibid. p.10

[12] http:/ / guides. slv. vic. gov. au/ content. php?pid=87344& sid=649913 Patents Research Guide - State Library of Victoria retrieved 16 March 2010 [13] Christine MacLeod, Inventing the Industrial Revolution: The English Patent System, 1660-1800, Cambridge University Press, 2002, ISBN 0521893992, 9780521893992, page 11.

[14] "Blackstone's Commentaries" (http:/ / www. yale. edu/ lawweb/ avalon/ blackstone/ blacksto. htm). . Retrieved 2008-02-24. "THE king's grants are alſo matter of public record. For, as St. Germyn ſays, the king's excellency is ſo high in the law, that no freehold may be given to the king, nor derived from him, but by matter of record. And to this end a variety of offices are erected, communicating in a regular ſubordination one with another, through which all the king's grants muſt paſs, and be tranſcribed, and enrolled; that the ſame may by narrowly inſpected by History of patent law 5

his officers, who will inform him if any thing contained therein is improper, or unlawful to be granted. Theſe grants, whether of lands, honours, liberties, franchiſes, or ought beſides, are contained in charters, or letters patent, that is, open letters, literae patentes: ſo called becauſe they are not ſealed up, but expoſed to open view, with the great ſeal pendant at the bottom; and are uſually directed or addreſſed by the king to all his ſubjects at large. And therein they differ from certain other letters of the king, ſealed alſo with his great ſeal, but directed to particular perſons, and for particular purpoſes: which therefore, not being proper for public inſpection, are cloſed up and ſealed on the outſide, and are thereupon called writs cloſe, literae clauſae; and are recorded in the cloſe-rolls, in the ſame manner as the others are in the patent-rolls..."

[15] http:/ / www. ipo. gov. uk/ types/ patent/ p-about/ p-whatis/ p-history/ p-history-18century. htm

[16] http:/ / ipmall. info/ hosted_resources/ lipa/ patents/ English_Statute1623. pdf

[17] Nowotarski, Bakos, “A Short History of Private Patent Examination”, Insurance IP Bulletin Oct. 2009 (http:/ / www. marketsandpatents.

com/ bulletin/ IPB-10152009. html) [18] Frank D. Prager, “Proposals for the Patent Act of 1790", Journal of the Patent and Trademark Office Society, March 1954, vol XXXVI, No. 3, pp 157 et Seq., citing J. Isore in Revue Historique de Droit Francais, 1937 pp. 117 et Seq. [19] Gabriel Galvez-Behar, La République des inventeurs. Propriété et organisation de l'innovation en France, 1791-1922, Presses universitaires de Rennes, 2008, ISBN 2753506957, 9782753506954.

[20] http:/ / www. myoutbox. net/ popch02. htm|Reference [21] Online at Library of Congress: "A Century of Lawmaking for a New Nation: U.S. Congressional Documents and Debates, 1774 - 1875":

First Congress, Session II, chapter VII, 1790: "An Act to promote the progress of useful Arts" (http:/ / memory. loc. gov/ cgi-bin/

ampage?collId=llsl& fileName=001/ llsl001. db& recNum=232).

[22] http:/ / www. clpgh. org/ clp/ Scitech/ invent/ samhopkins. html

[23] Chap. XI. 1 Stat. 318 from "A Century of Lawmaking for a New Nation: U.S. Congressional Documents and Debates, 1774 - 1875" (http:/ /

memory. loc. gov/ cgi-bin/ ampage?collId=llsl& fileName=001/ llsl001. db& recNum=441). Library of Congress, Law Library of Congress. Retrieved Sept. 4, 2009. [24] Editors, Time-Life (1991). Inventive Genius. New York: Time-Life Books. p. 11. ISBN 0809476991. [25] Chap. CCCLVII. 5 Stat. 117 from "A Century of Lawmaking for a New Nation: U.S. Congressional Documents and Debates, 1774 -1875"

(http:/ / memory. loc. gov/ cgi-bin/ ampage?collId=llsl& fileName=005/ llsl005. db& recNum=154). Library of Congress, Law Library of Congress. Retrieved Oct. 19, 2009.

[26] "National Portrait Gallery Building Chronology" (http:/ / web. archive. org/ web/ 20070425215935/ http:/ / www. npg. si. edu/ inform/

chron. htm). Archived from the original (http:/ / www. npg. si. edu/ inform/ chron. htm) on 2007-04-25. . Retrieved 2007-04-27. [27] Chap.CCXXX. 16 Stat. 198 from "A Century of Lawmaking for a New Nation: U.S. Congressional Documents and Debates, 1774 - 1875"

(http:/ / memory. loc. gov/ cgi-bin/ ampage?collId=llsl& fileName=016/ llsl016. db& recNum=233). Library of Congress, Law Library of Congress. Retrieved Oct. 19, 2009.

References • Kenneth W. Dobyns, The Patent Office Pony; A History of the Early Patent Office, Sergeant Kirkland's Press

1994. (http:/ / www. myoutbox. net/ pohome. htm) • Howard B. Rockman, Intellectual Property law for Engineers and Scientists. • Bugbee, Bruce W. Genesis of American Patent and Copyright Law. Washington, D.C.: Public Affairs Press (1967). • Christine MacLeod, Inventing the Industrial Revolution: The English patent system, 1660–1800, Cambridge University Press.

• Galvez-Behar, G. La République des inventeurs. Propriété et organisation de l'innovation en France (http:/ / www.

pur-editions. fr/ detail. php?idOuv=1907), Presses universitaires de Rennes, 2008. History of patent law 6

External links First patents American

• X Series : U.S. Patent X000001 (http:/ / www. google. com/ patents?vid=X000001) "Improvements in making pot ash and pearle ash"

• 1st Numerical : U.S. Patent 0000001 (http:/ / www. google. com/ patents?vid=1) "Traction Wheel"

• 1st Design : U.S. Patent D000001 (http:/ / www. google. com/ patents?vid=D000001) Script font type

• 1st Reissued : U.S. Patent RE00001 (http:/ / www. google. com/ patents?vid=RE00001) "Grain Drill" Websites

• An Economic History of Patent Institutions (http:/ / eh. net/ encyclopedia/ article/ khan. patents)

• French Patent History (http:/ / ggb. ouvaton. org/ spip. php?rubrique14)

• Patents Research Guide (Australian) (http:/ / guides. slv. vic. gov. au/ patents) Article Sources and Contributors 7 Article Sources and Contributors

History of patent law Source: http://en.wikipedia.org/w/index.php?oldid=408183111 Contributors: Acgyuio, Alberrosidus, Altes2009, Atlastawake, Auric, BD2412, BKD709, BannerMarshall, Bearian, Beno1000, Binarybits, Cfp, Chealer, Cuirmichael, Dacxjo, Danieljackson, David G. Smith, David Woodward, Deon, Dying, Edcolins, Ermengrabby, Fennec, GDallimore, Gun Powder Ma, Hydriotaphia, Inotnuts, John K, John Quiggin, JohnnE, Jusdafax, Kcordina, King4057, Kwamikagami, LC-LawLib, LessHeard vanU, Mdd, MichaelMaggs, Morten Blaabjerg, NSK Nikolaos S. Karastathis, Ndkl, Nowa, Pfaff9, Professor mark phisher, Rjwilmsi, Robert K S, Smallgwg, Terry0051, TimBentley, Ulner, VBGFscJUn3, Violetriga, Wikidea, 35 anonymous edits License

Creative Commons Attribution-Share Alike 3.0 Unported

http:/ / creativecommons. org/ licenses/ by-sa/ 3. 0/ 1 Patent examiner

A patent examiner (or, historically, a patent clerk[1] ) is an employee, usually a civil servant, working at a patent office. Major employers of patent examiners are the European Patent Office (EPO), the United States Patent and Trademark Office (USPTO) and the Japan Patent Office.

Duties Patent examiners review patent applications to determine whether the claimed invention should be granted a patent. The work of a patent examiner usually includes searching patents and scientific literature databases for prior art, and examining patent applications substantively by examining whether the claimed invention meets the patentability requirements such as novelty, "inventive step" or "non-obviousness", "industrial application" (or "utility") and sufficiency of disclosure. In most countries, Examiners are high level employees with clerical staff working under their supervision in supporting roles. For example, in the Indian Patent Office, an entry level Examiner is a Group A gazetted officer. This is the highest post in the set-up of the Indian Government. On April 13, 2007, a "Coalition of Patent Examiner Representatives" expressed concern that in many patent offices, the pressures on examiners to produce and methods of allocating work have reduced the capacity of examiners to provide the quality of examination the peoples of the world deserve [and that] the combined pressures of higher productivity demands, increasingly complex patent applications and an ever-expanding body of relevant patent and non-patent literature have reached such a level that, unless serious measures are taken, meaningful protection of intellectual property throughout the world may, itself, become history.[2] According to Indian newspaper Mint, Indian patent examiners have the world's highest workload and lowest pay. While a patent examiner in the European Patent Office would handle less than seven patent applications per month and a USPTO examiner would handle eight applications per month, an Indian examiner reportedly handles at least 20 applications a month. However an Indian examiner’s monthly salary is less than a third of his/her counterparts in other foreign patent offices.[3]

Patent examiners by office

European Patent Office Patent examiners at the European Patent Office (EPO) are exempted from work- and residence-permit procedures, but since most of EPC contracting states are members of the European Union, the exemption is usually not an issue. The examiners examine patent applications in three official languages, English language, French language, and German language. Examiners search databases, conduct document analysis and patent communications, and judge validity of patents. Examiners may be represented by trade unions, FFPE-EPO [4] and SUEPO [5]. Candidates for examiner positions must meet certain minimum requirements: • EPO member state nationality; • degree in engineering or in science; • good knowledge of two languages out of German, English and French with a willingness to learn the third.[6] Some examiners have work experience in industry, but such experience is not required.[6] EPO examiners are also reportedly required to speak three languages fluently.[7] [8] Patent examiner 2

United States Patent and Trademark Office Patent examiners at the United States Patent and Trademark Office (USPTO) prosecute applications for patents. Examiners make determinations based on federal codes, rules, and judicial precedents. These determinations are appealable through the U.S. Courts. An appeal of these determinations is three steps away from the U.S. Supreme Court. Responsibilities for a patent examiner at the USPTO include: • reviewing patent applications to determine if they comply with basic format, rules and legal requirements; • determining the scope of the invention claimed by the inventor; • searching for relevant technologies to compare similar prior inventions with the invention claimed in the patent application; and • communicating findings as to the patentability of an applicant's invention via a written action to inventors/patent practitioners. Examiners are hired at the GS-5, GS-7, GS-9 or GS-11 grade levels[9] [10] and are currently eligible for two accelerated promotions after six and twelve months of service when they meet the performance of a new examiner. As of July 2007, new examiners are granted a recruitment bonus of $20,000 to $39,600 spread out over four consecutive years of fully successful service.[11] Subsequent promotions are yearly and noncompetitive up to the GS-12 level, provided satisfactory performance is maintained.

According the USPTO, an examiner is measured entirely by his own Biweekly Production Report performance, without regard to the performance of others.[12] Legal, technical and automation training is provided to examiners at the USPTO. Experienced examiners have an option of working primarily from home through a hoteling program implemented in 2006 by the United States Patent and Trademark Office (USPTO).[13] To work as an examiner with the USPTO, a person must be a U.S. citizen.[14] Most patent examiners working at the USPTO have a bachelor’s or master’s degree in engineering or science.[14]

Notable patent examiners and clerks

Name Birth year Death year Description

[15] [16] Genrich Altshuller 1926 1998

[17] [18] [19] Clara Barton 1821 1912 worked at the United States Patent Office (Currently the USPTO)

[20] Albert Einstein 1879 1955 worked at the Swiss Federal Institute of Intellectual Property

[21] Thomas Jefferson 1743 1826 first patent examiner of the U.S. Patent Office

[22] Arthur Paul Pedrick ? 1976 UK Patent Office examiner and, subsequently, prolific inventor Patent examiner 3

References and notes

[1] The title "patent clerk" is used for instance in Gary Stix, The Patent Clerk's Legacy (http:/ / www. sciam. com/ article. cfm?articleID=0007DCB9-91CE-111A-BAF583414B7F4945), Scientific American, September 2004 (an article about Albert Einstein)

[2] Open Letter From a Coalition of Patent Examiner Representatives (http:/ / www. popa. org/ pdf/ misc/ epocipo2007. pdf) (To: Mr. Jon Dudas, Director, United States Patent and Trademark Office, Prof. Alain Pompidou, President, European Patent Office, Dr. Jürgen Schade, President, Deutsches Patent- und Markenamt, Mr. David Tobin, Commissioner of Patents, Registrar of Trademarks and Chief Executive Officer, Canadian Intellectual Property Office, Dr. Friedrich Rödler, President, Österreichisches Patentamt) - Re: The Future of the Patent System, April 13, 2007.

[3] C.H. Unnikrishnan, "Indian IP examiners have world’s highest workload, lowest pay" (http:/ / www. livemint. com/ 2010/ 09/ 13220649/

IndianIPexaminershaveworld. html?atype=tp), Mint, September 14, 2010. Consulted on December 6, 2010.

[4] http:/ / www. ffpe-epo. org

[5] http:/ / www. suepo. org

[6] " Required profile for an EPO patent examiner (http:/ / www. epo. org/ about-us/ jobs/ examiner/ profile. html)". European Patent Office (EPO), retrieved on June 28, 2010.

[7] Better Patents, Better Medicines: Recommendations on How to Improve The European Patent System (http:/ / www. egagenerics. com/ doc/

ega_position_patentquality_2008-10-01. pdf), European Generic medicines Association, Position Paper, October 2008, p.3. [8] David Pressman, "Patent it yourself", Nolo, Thirtheen edition, 2008, p. 313. ISBN 1413308546. [9] GS-5, GS-7, or GS-9 grade levels are part of the General Schedule employee classification scheme within the US government.

[10] See the examiner salary table as of January 1, 2007 (http:/ / apps. opm. gov/ SSR/ tables/ StaticFiles/ SrText/ 0576_20070101. txt)

[11] USPTO Recruitment Incentive (http:/ / usptocareers. gov/ Pages/ PEPositions/ Benefits. aspx#incentive)

[12] " What makes the USPTO a great place to work? (http:/ / www. uspto. gov/ go/ ac/ ahrpa/ ohr/ jobs/ exam. htm)", USPTO Patent Examiner Recruitment, United States Patent and Trademark Office, retrieved on June 12, 2006.

[13] USPTO Patent Public Advisory Committee 2007 Annual Report (http:/ / www. uspto. gov/ go/ com/ advisory/ reports/ ppac_2007annualrpt. pdf#page=10)

[14] Tamara Dillon, "Patent work: The other side of invention" (http:/ / www. bls. gov/ opub/ ooq/ 2009/ fall/ art03. pdf), Occupational Outlook Quarterly, Fall 2009, page 21. [15] "TRIZ was invented and structured by Genrich Altshuller, a patent examiner for the Russian navy." in Praveen Gupta, The Six Sigma Performance Handbook: A Statistical Guide to Optimizing Results, McGraw-Hill Professional, 2004, page 278, ISBN 0071437649 [16] "In 1946, a 20-year-old Soviet patent clerk in Russia named Genrich Altshuller..." in Peter Middleton, James Sutton, Lean Software Strategies: proven techniques for managers and developers, Productivity Press, 2005, page 159, ISBN 1563273055 [17] "Clara Barton, the founder of the Red Cross, held a regular civil service appointment as a patent clerk as early as 1854." in B. Zorina Khan, The Democratization of Invention: patents and copyrights in American economic development, 1790-1920, Cambridge University Press, 2005, page 136, note 25. ISBN 052181135X [18] "Called the “Angel of the Battlefield,” Clara Barton was a former teacher and patent clerk..." in Alan Axelrod, The Complete Idiot's Guide to the Civil War, Alpha Books, 2003, page 147, ISBN 1592571328 [19] "Clara Barton, a former teacher and patent clerk, ..." in Fred D. Cavinder, More Amazing Tales from Indiana, Indiana University Press, 2003, page 79, ISBN 0253216532 [20] Thomas P. Hugues, Einstein, Inventors, and Invention in R. S. (Robert Sonne) Cohen, Mara Beller, Jürgen Renn, Einstein in Context: A Special Issue of Science in Context, Cambridge University Press, 1993, page 25, ISBN 0521448344 [21] Thomas T. Gordon, Arthur S. Cookfair, Patent Fundamentals for Scientists and Engineers, CRC Press, 2000, page 13, ISBN 1566705177

[22] Patenty absurd (http:/ / www. patent. freeserve. co. uk/ pedrick. html)

See also • Law clerk • Patent attorney • Patent engineer • Patent Office Professional Association, the United States patent examiners trade union • Trademark examiner • United States Patent Classification Patent examiner 4

External links • John W. Schoen, " U.S. patent office swamped by backlog; Without more funding, wait time could top 5 years

(http:/ / www. msnbc. msn. com/ id/ 4788834/ )". MSNBC, April 27, 2004. (ed., comments on problems and that 2900 new examiners are being sought by the USPTO.) • Report to Congressional Committees 2005 "USPTO Has Made Progress in Hiring Examiners, but Challenges to

Retention Remain" " (http:/ / www. gao. gov/ new. items/ d05720. pdf) " Article Sources and Contributors 5 Article Sources and Contributors

Patent examiner Source: http://en.wikipedia.org/w/index.php?oldid=409238546 Contributors: Aguilera1709, Bel6789, Bkell, Courcelles, Cquan, Davepape, David Haslam, DavisLee, Edcolins, Feezo, Funandtrvl, GDallimore, Gaius Cornelius, Ganymead, Graemec2, Intpat, Iprnewskerala, Jklin, Juxtapos99, Kthurley, Manny2530, Mmmbeer, Mpa5220, Myfewcents, Najis, Netoholic, Patentmaster, Rich Farmbrough, Selket, TenPoundHammer, USPatent, Vegaswikian, VernoWhitney, Vorbenützer, 82 anonymous edits Image Sources, Licenses and Contributors

Image:Production report.jpg Source: http://en.wikipedia.org/w/index.php?title=File:Production_report.jpg License: Public Domain Contributors: Juxtapos99 License

Creative Commons Attribution-Share Alike 3.0 Unported

http:/ / creativecommons. org/ licenses/ by-sa/ 3. 0/ Patent infringement 1 Patent infringement

Intellectual property law Primary rights Copyright • Authors' rights • Related rights • Moral rights • Patent • Utility model • Trademark • Geographical indication • Trade secret

Sui generis rights Database right • Indigenous intellectual property • Industrial design right • Mask work • Plant breeders' rights • Supplementary protection certificate

Related topics Criticism • Orphan works • Public domain • more

Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a licence. The definition of patent infringement may vary by jurisdiction, but it typically includes using or selling the patented invention. In many countries, a use is required to be commercial (or to have a commercial purpose) to constitute patent infringement. The scope of the patented invention or the extent of protection[1] is defined in the claims of the granted patent. In other words, the terms of the claims inform the public of what is not allowed without the permission of the patent holder. Patents are territorial, and infringement is only possible in a country where a patent is in force. For example, if a patent is filed in the United States, then anyone in the United States is prohibited from making, using, selling or importing the patented item, while people in other countries may be free to make the patented item in their country. The scope of protection may vary from country to country, because the patent is examined by the patent office in each country or region and may have some difference of patentability, so that a granted patent is difficult to enforce worldwide.

Elements of patent infringement Typically, a party which manufactures, imports, uses, sells, or offers for sale patented technology, during the term of the patent and within the country that issued the patent, is considered to infringe the patent. The test varies from country to country, but in general it requires that the infringing party's product (or method, service, and so on) falls within one or more of the claims of the patent. The process employed involves "reading" a claim onto the technology of interest. If all of the claim's elements are found in the technology, the claim is said to "read on" the technology; if a single element from the claim is missing from the technology, the claim does not literally read on the technology and the technology does not infringe the patent with respect to that claim. In response to allegations of infringement, an accused infringing party will generally assert one or more of the following: • it was not practicing the patented invention; • it was not performing any infringing act in the territory covered by the patent; • the patent has expired; • the patent (or the particular claim(s) alleged to be infringed) is invalid, because the invention in question does not meet patentability or includes a formal defect, rendering the patent invalid or unenforceable; • it has obtained a license under the patent; Patent infringement 2

• the patent holder is infringing patent rights belonging to the accused infringing party, and the party may resolve the dispute in settlement or cross-licensing.

Indirect infringement Under certain jurisdictions, there is a particular case of patent infringement called "indirect infringement." Indirect infringement can occur, for instance, when a device is claimed in a patent and a third party supplies a product which can only be reasonably used to make the claimed device.

Legislation

Japan Infringement under the patent law in Japan is defined by Article 101 of Patent Act (Act No. 121 of 1959),[2] which shows the following acts shall be deemed to constitute infringement of a patent right or an exclusive license: • (i) where a patent has been granted for an invention of a product, acts of producing, assigning, etc., importing or offering for assignment, etc. any product to be used exclusively for the producing of the said product as a business; • (ii) where a patent has been granted for an invention of a product, acts of producing, assigning, etc., importing or offering for assignment, etc. any product (excluding those widely distributed within Japan) to be used for the producing of the said product and indispensable for the resolution of the problem by the said invention as a business, knowing that the said invention is a patented invention and the said product is used for the working of the invention; • (iii) where a patent has been granted for an invention of a process, acts of producing, assigning, etc., importing or offering for assignment, etc. any product to be used exclusively for the use of the said process as a business; and • (iv) where a patent has been granted for an invention of a process, acts of producing, assigning, etc., importing or offering for assignment, etc. any product (excluding those widely distributed within Japan) to be used for the use of the said process and indispensable for the resolution of the problem by the said invention, knowing that the said invention is a patented invention and the said product is used for the working of the invention as a business.

United Kingdom Infringement under United Kingdom patent law is defined by Section 60 [3] of the UK Patents Act 1977 [4] (as amended), which sets out the following types of infringement: • Where the invention is a product, by the making, disposing of, offering to dispose of, using, importing or keeping a patented product. • Where the invention is a process, by the use, or offer for use where it is known that the use of the process would be an infringement. Also, by the disposal of, offer to dispose of, use or import of a product obtained directly by means of that process, or the keeping of any such product whether for disposal or otherwise. • By the supply, or offer to supply, in the United Kingdom, a person not entitled to work the invention, with any of the means, relating to an essential element of the invention, for putting the invention into effect, when it is known (or it is reasonable to expect such knowledge) that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom. Patent infringement 3

United States In United States law, an infringement may occur where the defendant has made, used, sold, offered to sell, or imported an infringing invention or its equivalent.[5] One also commits indirect infringement if he actively and knowingly induces another to infringe, and is liable for that infringement. Types of "indirect infringement" include "contributory infringement" and "induced infringement." No infringement action may be started until the patent is issued. However, pre-grant protection is available under 35 U.S.C. § 154 [6](d), which allows a patent owner to obtain reasonable royalty damages for certain infringing activities that occurred before patent's date of issuance. This right to obtain provisional damages requires a patent holder to show that (1) the infringing activities occurred after the publication of the patent application, (2) the patented claims are substantially identical to the claims in the published application, and (3) the infringer had "actual notice" of the published patent application. The Patent Reform Act of 2009 will, if enacted, make changes such as tightening the definition of "willful" infringement and limit infringement cases to states where the defendant's business operates.

Clearance search, and clearance, validity and enforceability opinions A clearance search, also called freedom-to-operate search or infringement search,[7] is a search done on issued patents or on pending patent applications to determine if a product or process infringes any of the claims of the issued patents or pending patent applications. A clearance search may also include expired art that acts as a 'safe harbor' permitting the product or process to be used based on patents in the public domain. These searches are often performed by one or more professional patent searchers who are under the direction of one or more patent attorneys. A clearance search can be followed by a clearance opinion, i.e. a legal opinion provided by one or more patent attorneys as to whether a given product or process infringes the claims of one or more issued patents or pending patent applications. Clearance opinions may be done in combination with a "validity and enforceability" opinion. A validity and enforceability opinion is a legal opinion as to whether a given patent is valid and/or enforceable. In other words, a validity opinion is a legal opinion or letter in which a patent attorney or patent agent analyzes an issued patent and provides an opinion on how a court might rule on its validity or enforceability.[8] Validity opinions are often sought before litigation related to a patent. The average cost of a validity opinion (according to one 2007 survey) is over $15,000, with an infringement analysis adding an additional $13,000.[9] The cost of these opinions for U.S. patents can run from tens to hundreds of thousands of dollars (or more) depending upon the particular patent, the number of defenses and prior art references, the length of the prosecution file history, and the complexity of the technology in question. An exculpatory opinion (setting forth reasons the patent is not infringed, or providing other defenses such as prior use, intervening rights, or prior invention) is also possible.

Patent infringement insurance Patent infringement insurance is an insurance policy provided by one or more insurance companies to protect either an inventor or a third party from the risks of inadvertently infringing a patent. For inventors, patent infringement insurance covers legal costs in case they have to sue an infringer to enforce their patent. For third parties, patent infringement insurance covers their legal costs in case they are sued for patent infringement by an inventor. Patent infringement insurance is generally considered too expensive to be worth it. The premiums must be high, however, due, at least in part, to the high legal costs of patent infringement cases. A typical patent infringement case in the US costs 1 - 3 million dollars in legal fees for each side. This is despite the fact that 99% of all patent Patent infringement 4

infringement cases are settled. Legal fees in pharmaceutical cases can run 30 million dollars or more, although this should be contrasted with the fact that billions of dollars may be at stake. In June 2006, a Study for the European Commission on the feasibility of possible insurance schemes against patent litigation risks was published.[10] The report concluded that the continuation of the status quo with very little, disproportionately expensive, bespoke patent litigation insurance (PLI) would not meet any objectives for a feasible insurance scheme. Instead, only a mandatory scheme was considered to be viable in order to provide the economic and technical benefits to the EU and individual patentees which would arise from a widespread PLI scheme.

Piracy Since the 1840s, the expression "patent pirate" has been used as a pejorative term to describe those that infringe a patent and refuse to acknowledge the priority of the inventor. Samuel F. B. Morse, inventor of the telegraph, for example, complained in a letter to friend in 1848 [11] I have been so constantly under the necessity of watching the movements of the most unprincipled set of pirates I have ever known, that all my time has been occupied in defense, in putting evidence into something like legal shape that I am the inventor of the Electro-Magnetic Telegraph!! Would you have believed it ten years ago that a question could be raised on that subject? Those who accuse others of being patent pirates say that they take advantage of the high cost of enforcing a patent to willfully infringe valid patents with impunity, knowing that the average small inventor does not have the financial resources required to enforce their patent rights. In the US, for example, an inventor must budget $1 million or more in order to initiate patent litigation. They say that patent pirates also take advantage of countries where patent rights are difficult to enforce and willfully infringe in those countries. Ironically, the term "pirate" has also been used to describe patent owners that vigorously enforce their patents.[12] (See also patent troll) Thus whether one deliberately infringes a patent or whether one vigorously enforces a patent, they may be referred to as a pirate by those that feel they are overstepping their bounds.

Threat to bring a patent infringement action "A threat to bring a patent infringement action is highly likely to influence the commercial conduct of the person threatened, which is why the law of some countries, including the UK, provides that the making of a groundless threat to sue is, within certain carefully prescribed limits, an actionable wrong in itself." [13] This however is not the case in the United States.

References • Kesan, Jay P. and Ball, Gwendolyn G., How Are Patent Cases Resolved? An Empirical Examination of the Adjudication and Settlement of Patent Disputes (2005). U Illinois Law & Economics Research Paper [14] • See Phillips [15] For the Federal Circuits most recent opinion regarding claim construction (). Patent infringement 5

Notes

[1] Article 69 (http:/ / www. epo. org/ patents/ law/ legal-texts/ html/ epc/ 2000/ e/ ar69. html) EPC

[2] Patent Act in Japan (http:/ / www. cas. go. jp/ jp/ seisaku/ hourei/ data/ PA. pdf)

[3] http:/ / ukpatents. wikispaces. com/ section+ 60

[4] http:/ / ukpatents. wikispaces. com/ [5] "[F]or a court to find infringement, the plaintiff must show the presence of every element or its substantial equivalent in the accused device." Wolverine World Wide, Inc. v. Nike, Inc., 38 F.3d 1192, 1199 (Fed. Cir. 1994)

[6] http:/ / www. law. cornell. edu/ uscode/ 35/ 154. html

[7] UK Intellectual Property Office, Freedom-to-operate (FTO) patent search (infringement search) (http:/ / www. ipo. gov. uk/ types/ patent/

p-other/ p-infringe/ p-freedom. htm). Consulted on October 9, 2009.

[8] M. John Sterba Legal opinion letters: a comprehensive guide to opinion letter practice Aspen Publishers Online, 2002 (http:/ / books. google.

com/ books?id=oWDs0U7C_RYC& pg=PT715& lpg=PT715& dq="validity+ opinion"& source=bl& ots=Mo38v34jXn&

sig=D2uGCMZ8SvR4XAQ8farwSUk6_gg& hl=en& ei=_06RSsn4MM67lAe8trGYDA& sa=X& oi=book_result& ct=result&

resnum=4#v=onepage& q="validity opinion"& f=false)

[9] AIPLA Report of the Economic Survey, 2007 (http:/ / www. ccianet. org/ CCIA/ files/ ccLibraryFiles/ Filename/ 000000000226/ Ltr on Rpt

SCP-13-51. pdf)

[10] Patent Litigation Insurance (http:/ / ec. europa. eu/ internal_market/ indprop/ docs/ patent/ studies/ pli_report_en. pdf)

[11] www.fullbooks.com, Samuel F. B. Morse, His Letters and Journals by Samuel F. B. Morse, Part 5 out of 9 (http:/ / www. fullbooks. com/

Samuel-F-B-Morse-His-Letters-and-Journalsx5165. html), retrieved on June 10, 2006 [12] see Testimony by Harold C. Wegner, Professor of Law and Director, Intellectual Property Law Program, George Washington University

National Law Center before the US Senate Wednesday, March 9, 1994 (http:/ / judiciary. house. gov/ legacy/ 4130. htm)

[13] Jeremy Phillips, From when must a threat be compensated? (http:/ / ipkitten. blogspot. com/ 2008/ 06/

from-when-must-threat-be-compensated. html), IPKat, June 14, 2008. Consulted on June 15, 2008.

[14] http:/ / ssrn. com/ abstract=808347

[15] http:/ / patentlaw. typepad. com/ patent/ 2005/ 07/ en_banc_federal. html

See also See List of patent legal concepts for articles on various legal aspects of patents, including special types of patents and patent applications. • Anton Piller order (common procedure in certain countries to obtain proofs of infringement) • Cease and desist order • Enforcement of European patents • Industrial espionage • • Patent retaliation (clause) • Patent troll • • Soft IP • Software hoarding • Copyright infringement • Trademark infringement

Notable infringement cases • Monsanto Canada Inc. v. Schmeiser - A Canadian farmer sued for growing canola seed patented by Monsanto. Article Sources and Contributors 6 Article Sources and Contributors

Patent infringement Source: http://en.wikipedia.org/w/index.php?oldid=403771781 Contributors: Ahoerstemeier, Aryeeka, Bearian, Beno1000, Cburnett, Ccalkins, Closedmouth, Corridor1, Crazywolf, CrisFlagg, DavidDouthitt, Eastlaw, Edcolins, EmilyGough, Erianna, Femto, GDallimore, Guanaco, Ipwatchdog, Jason Leach, Kcordina, King4057, Lupinelawyer, Mateb, Michael Hardy, Milominderbinder2, MrMambo, NYCJosh, Nowa, Pearcedh, Pmetzger, Postdlf, Rl, Sadistic Mika Banc, TJRC, Themepark, Tobes00, Toytoy, Vanadyl, VernoWhitney, Wavelength, Whpq, Wikidemon, 66 anonymous edits License

Creative Commons Attribution-Share Alike 3.0 Unported

http:/ / creativecommons. org/ licenses/ by-sa/ 3. 0/ Patent troll 1 Patent troll

Patent troll is a pejorative term used for a person or company that enforces its patents against one or more alleged infringers in a manner considered unduly aggressive or opportunistic, often with no intention to manufacture or market the patented invention. The term patent pirate is occasionally used to refer to the same practice.[1] Related, less pejorative expressions are non-practicing entity (NPE),[2] non-manufacturing patentee,[3] [4] patent marketer,[3] [5] and patent dealer,[6] which describe a patent owner who does not manufacture or use the patented invention.[2]

Etymology and definition The term "patent troll" was used as early as 1993 to describe companies that file aggressive patent lawsuits.[7] The Patent Troll was originally depicted in "The Patents Video" which was released in 1994 and sold to corporations, universities and governmental entities. In "The Patents Video," an unsuspecting victim is surprised by the Patent Troll who strategically positions himself to collect patent licensing revenue.[8] The metaphor was popularized in 2001 by Peter Detkin, former assistant general counsel of Intel,[9] who first used it to describe TechSearch, its CEO, Anthony O. Brown, and their lawyer, Raymond Niro, while Intel was defending a patent suit against them.[10] Detkin had previously used the term "patent extortionist" to refer to a number of companies who were suing Intel for patent infringement and who were trying to "make a lot of money off a patent that they are not practicing and have no intention of practicing and in most cases never practiced."[9] After Intel was sued for libel, he came up with the term "patent troll" instead.[9] Those accused of being patent trolls typically viewed Intel as being a large and manipulative company who had stolen their ideas.[9] By 2005, Detkin believed that the term was being used more broadly than he had originally intended to mean any unpopular plaintiff.[11] Some definitions could be applied to Intel themselves, contrary to Detkin's intention, in view of their routine practice of asserting patents that they had bought but were not practicing.[11] Patent troll is currently a controversial term, susceptible to numerous definitions, none of which are considered satisfactory from the perspective of understanding how patent trolls should be treated in law.[12] Definitions include a party that does one or more of the following: • Purchases a patent, often from a bankrupt firm, and then sues another company by claiming that one of its products infringes on the purchased patent;[7] • Enforces patents against purported infringers without itself intending to manufacture the patented product or supply the patented service;[13] [14] • Enforces patents but has no manufacturing or research base;[15] • Focuses its efforts solely on enforcing patent rights;[16] or • Asserts patent infringement claims against non-copiers or against a large industry that is composed of non-copiers.[17]

Causes Patent trolls may buy patents cheaply from entities not actively seeking to enforce them. For example, a company may purchase hundreds of patents from a technology company forced by bankruptcy to auction its patents.[18] The cost of defending against a patent infringement suit, as of 2004, is typically $1 million or more before trial, and $2.5 million for a complete defense, even if successful.[19] Because the costs and risks are high, defendants may settle even non-meritorious suits they consider frivolous for several hundred thousand dollars.[19] The uncertainty and unpredictability of the outcome of jury trials also encourages settlement.[20] Patent troll 2

It has also been suggested that distortions in the patent market, such as those caused by long patent application pendency, promote patent trolling.[21]

Effects A core criticism of patent trolls is that "they are in a position to negotiate licensing fees that are grossly out of alignment with their contribution to the alleged infringer's product or service",[22] not their non-practising status or the possible weakness of their patent claims. The risk of paying high prices for after-the-fact licensing of patents they were not aware of, and the costs for extra vigilance for competing patents that might have been issued, in turn increases the costs and risks of manufacturing. On the other hand, the ability to buy, sell and license patents is generally productive. By creating a secondary market for patents, these activities make the ownership of patents more liquid, thereby creating incentives to innovate and patent.[6] [23] Also, aggregating patents in the hands of specialized licensing companies facilitates access to technology by more efficiently organizing ownership of patent rights.[24] [25]

Mechanics Patent trolls operate much like any other company that is protecting and aggressively exploiting a patent portfolio. However, their focus is on obtaining additional money from existing uses, not from seeking out new applications for the technology. They monitor the market for possibly infringing technologies by watching popular products, news coverage and analysis. They also review published patent applications for signs that another company is developing infringing technology, possibly unaware of their own patents. They then develop a plan for how to proceed. They may start by suing a particularly vulnerable company that has much to lose, or little money to defend itself, hoping that an early victory or settlement will establish a precedent to encourage other peer companies to acquiesce to licenses. Alternately they may attack an entire industry at once, hoping to overwhelm it. An individual case often begins with a perfunctory infringement complaint,[19] or even a mere threat of suit, which is often enough to encourage settlement for the nuisance or "threat value" of the suit by purchasing a license to the patent. In the United States, suits are often brought in United States District Court for the Eastern District of Texas, known for favoring plaintiffs and for expertise in patent suits.[26] The uncertainty and unpredictability of the outcome of jury trials also encourages settlement.[20] If it wins, the plaintiff is entitled as damages an award of at least a "reasonable" royalty determined according to the norms of the field of the patented invention.[27] Patent trolls are at a disadvantage in at least two ways. First, patent owners who make and sell their invention are entitled to awards of lost profits. However, patent trolls, being non-manufacturers, typically do not qualify. Further, patent owners' rights to bar infringers from manufacture, use, or sale of technologies that infringe their patents has recently been curtailed in the court decision eBay Inc. v. MercExchange, L.L.C.. Rather than automatically granting an injunction, the US Supreme Court stated that Courts must apply a standard reasonableness test to determine if an injunction is warranted. Writing in Forbes magazine about the impact of this case on patent trolls, writer Jessica Holzer concludes: "The high court's decision deals a blow to patent trolls, which are notorious for using the threat of permanent injunction to extort hefty fees in licensing negotiations as well as huge settlements from companies they have accused of infringing. Often, those settlements can be far greater than the value of the infringing technology: Recall the $612.5 million that Canada's Research in Motion forked over to patent-holding company NTP to avoid the shutting down of its popular BlackBerry service." [28] Patent troll 3

Defenses

Patent troll "companies have no interest in using the patents... but instead hope to reap large sums of money from the lawsuits themselves."[29] This gives them an advantage over manufacturers since they are relatively immune to the typical defensive tactic large entities use against small patent plaintiffs, because the cost of litigation tends to fall more heavily on an accused infringer than on a plaintiff with a contingency-fee lawyer, and because trolls have an almost-unrestricted ability to choose their preferred plaintiff-friendly forums, most prominently the Eastern District of Texas.[19]

Many common techniques used by companies to protect themselves

from producing competitors are rendered ineffective against patent Early Woodward light bulb patent purchased by trolls. These techniques include monitoring patent activities of Thomas Edison to preclude challenges competitors to avoid infringing patents (since patent trolls are not competitors, productive companies usually have no way to find out about the troll or its patents until after significant investments have been made to produce and market a product); going on the offensive with counterclaims that accuse the patent plaintiff of infringing patents owned by the defendant (the mutual threat often leads the parties to arrive at a mutually beneficial cross-licensing arrangement); or a "scorched earth" defense designed to drive up litigation costs (which is equally ineffective because patent trolls plan for and have the finances to fully litigate a case.[19] In fact, some are able to draw on hedge funds and institutional investors to finance their patent cases).[30] Patent "pooling" arrangements where many companies collaborate to bring their patented knowledge together to create new products are also inapplicable to patent trolls because they don't produce products.

Substantial companies that attempt over-reaching patent litigation are subject to losing their patent rights to a defensive claim of patent misuse. However, defendants find it difficult to charge patent trolls with misuse because the antitrust violations typically involved require significant market power on the part of the patent holder.[31] Nevertheless, manufacturers do use various tactics to limit their exposure to patent trolls. Most have broader uses as well for defending their technologies against competitors. These include: • Design arounds can be a defense against patent trolls. The amount of license fee that a patent troll can demand is limited by the alternative of the cost of designing around the troll's patent(s).[32] • Patent watch. Companies routinely monitor new patents and patent applications, most of which are published, to determine if any are relevant to their business activities. • Clearance search. A standard practice is to perform a clearance search for patents or pending patent applications that cover important features of a potential product, before its initial development or commercial introduction. For example, a search by Thomas Edison uncovered a prior patent by two Canadian inventors, Henry Woodward and Mathew Evans for carbon filament in a non-oxidizing environment, (U.S. Patent 181613 [33]), the type of light bulb Edison wanted to develop. Edison bought the patent for US$5,000 ($113414 in present-day terms[34] ) to eliminate the possibility of a later challenge by Woodward and Evans. • . In Europe, third parties may conduct a proceeding to oppose overly broad patents. There is a more limited process in the United States, known as a reexamination. As an example, Research In Motion, filed reexaminations against broad NTP, Inc. patents related to BlackBerry technology. • Litigation. Whereas some companies acquiesce to a troll's demands, others go on the offensive by challenging the patents themselves, for example by finding prior art that invalidates their patentability. They may also broadly challenge whether the technology in question is infringing, or attempt to show patent misuse. If successful, such a defense not only wins the case at hand but destroys the patent troll's underlying ability to sue. Knowing this, the patent troll may back down or lessen its demands. Patent troll 4

• Early settlement. An early settlement is often far less expensive than litigation costs and later settlement values. • Patent infringement insurance. Insurance is available to help protect companies from inadvertently infringing a third party's patents. • Defensive patent aggregation, the practice of purchasing patents or patent rights from patent holders so they don't end up in the hands of an individual or enterprise that can assert them. Increasingly aggregations are focused on purchasing patents and patent rights off the open market, or out of NPE assertion and litigation, which directly impact the businesses of the aggregation's members. The aggregator then provides members a broad license to everything it owns in exchange for an annual fixed-fee. Patent defense companies have been formed In order to counteract problems caused by patent trolls in the high technology industry:[35] • A group of 11 high-tech companies including Cisco Systems, Ericsson, Google, Hewlett-Packard, and Verizon formed in 2008 Allied Security Trust with the goal of identifying and obtaining key patents prior to falling into the hands of patent trolls.[36] • In 2008 RPX Corporation introduced the RPX Defensive Patent Aggregation service to help e-commerce, financial services, hardware manufacturing, networking, software, and wireless companies reduce the risk of NPE assertion and litigation by purchasing patents off the open market.[37] [38]

Criticism of the term • Overbreadth. Defining trolls broadly as patent holders that do not practice or promote the patented invention would include holding companies, most U.S. universities and many individual inventors, for example, Thomas Edison would fall under this definition.[6] Large businesses typically have separate licensing departments, and may have separate patent holding companies, that are distinct from their research and development operations. • Misapplied. Accusations of trolling may be conflated with broader criticisms of the patent office, or of patent rights in general, by those who claim the patent system is "broken",[39] when in fact problems like poor quality patents, and patent thickets, are issues distinct from patent trolling.[6] Critics of the term argue that it is misguided to use it to criticize the patent system, because there are already mechanisms in place to restrain troll-like behavior. The two primary factors are the limited patent term and the obligation to disclose.[40] However, others, such as former Assistant Attorney General Viet Dinh, make the case that the need for patent reform is made all the stronger by the existence of patent trolls who exploit vulnerabilities in the existing patent law.[41] • Political agenda. The term is used in a partisan manner by companies seeking to gain benefit at trial or by public relations by accusing competitors of being trolls, and also those objecting to or wanting to change the current patent laws on equitable grounds[42] Former Microsoft Chief Technology Officer Nathan Myhrvold alleged that use of the expression "patent troll" is primarily a public relations tactic that large corporations use to intimidate individual inventors in an effort to tilt the playing field in their favor.[43] Parties that themselves actively enforce and license patents they do not practice, may criticize other companies for trolling when it suits their interest to do so.[44] • Legality of conduct. Private ownership of property generally, and intellectual property in particular, is a well-established right that cannot be overturned in the United States without raising significant concerns.[45] Under US law patent owners need not commercialize the invention to enforce their patents. Patent owners may negotiate any royalty others can be convinced to pay in exchange for a license to not be prohibited from making, using or selling the patented invention, but the only right conferred by holding a US patent is the right to sue to prevent others from making, using or selling the invention or to collect damages for the breach of that right (UK and , by contrast, contains provisions for compulsory licenses). Moreover, the owner of a patent need not be the inventor. Patents are legally transferrable in the sense that they can be bought, sold and licensed to entities other than the inventor(s).[18] Patent troll 5

Non-practicing entity In response to the aforementioned criticisms, it has been suggested that the term "non-practicing entity" (NPE) be used instead of the term "patent troll". An NPE is "a patent owner who does not manufacture or use the patented invention, but rather than abandoning the right to exclude, an NPE seeks to enforce its right through the negotiation of licenses and litigation." [2]

References and notes

[1] Craig Tyler, Patent Pirates Search For Texas Treasure (http:/ / www. wsgr. com/ news/ PDFs/ 09202004_patentpirates. pdf), Texas Lawyer, September 20, 2004 [2] Jones, Miranda. Casenote. Permanent injunction, a remedy by any other name is patently not the same: how eBay v. MercExchange affects

the patent right of non-practicing entities (http:/ / www. law. gmu. edu/ assets/ subsites/ gmulawreview/ files/ 14-4/ documents/ 7Jones. pdf) (eBay v. MercExchange, L.L.C., 126 S. Ct. 1837, 2006.) 14 Geo. Mason L. Rev. 1035-1070 (2007)

[3] Katherine E. White, Preserving the Patent Process to Incentivize Innovation in Global Economy (http:/ / justice. syr. edu/ sstlr/ wp-content/

uploads/ preserving-the-patent-process-to-incentivize-innovation-in-t. pdf), 13 Syracuse Sci. & Tech. L. Rep. 27 (2006). [4] Or non-manufacturing entity. [5] Susan Walmsley Graf, Improving Patent Quality Through Identification of Relevant Prior Art: Approaches to Increase Information Flow to

the Patent Office (http:/ / www. lclark. edu/ org/ lclr/ objects/ LCB_11_2_Graf. pdf), 11 Lewis & Clark L. Rev. 495 (2007), footnote 8. [6] JAMES F. MCDONOUGH III (2007). "The Myth of the Patent Troll: An Alternative View of the Function of Patent Dealers in an Idea

Economy" (http:/ / papers. ssrn. com/ sol3/ papers. cfm?abstract_id=959945). Emory Law Journal. . Retrieved 2007-07-27.

[7] "patent troll" (http:/ / www. wordspy. com/ words/ patenttroll. asp). wordspy. . Retrieved 2007-07-26.

[8] "The Original Patent Troll Returns" (http:/ / www. iptoday. com/ news-article. asp?id=372& type=ip). Intellectual Property Today. May 8, 2007. .

[9] Brenda Sandburg (July 30, 2001). "You may not have a choice; Trolling for Dollars" (http:/ / www. phonetel. com/ pdfs/ LWTrolls. pdf) (PDF). The Recorder. .

[10] Meet the Original Patent Troll (http:/ / www. law. com/ jsp/ article. jsp?id=1153299926232), IP Law & Business (via law.com), July 20, 2006

[11] R.G. (December 5, 2005). "Has the Enemy of Patent Trolls Become One" (http:/ / www. cioinsight. com/ article2/ 0,1540,1902291,00. asp). Ziff Davis. . Retrieved 2007-07-27. [12] Subramanian, Sujitha (2008). "Patent Trolls in Thickets: Who is Fishing Under the Bridge?". European Intellectual Property Review (Sweet & Maxwell) [2008] (5): pp. 182–188

[13] Alexander Poltorak. "On 'Patent Trolls' and Injunctive Relief" (http:/ / www. ipfrontline. com/ depts/ article. asp?id=10854& deptid=4). ., ipfrontline.com, May 12, 2006

[14] "EPO Scenarios for the Future, 2005, Glossary" (http:/ / documents. epo. org/ projects/ babylon/ eponet. nsf/ 0/

63A726D28B589B5BC12572DB00597683/ $File/ EPO_scenarios_bookmarked. pdf) (PDF). European Patent Office. . Retrieved 2007-07-27.

[15] Morag Macdonald, "Beware of the troll" (http:/ / www. thelawyer. com/ cgi-bin/ item. cgi?id=116783& d=122& h=24& f=46). The Lawyer. September 26, 2005. . Retrieved 2007-07-27.

[16] Danielle Williams and Steven Gardner (April 3, 2006) (PDF). Basic Framework for Effective Responses to Patent Trolls, (http:/ / www.

kilpatrickstockton. com/ publications/ downloads/ IPLinksApril2006. pdf). North Carolina Bar Association, Intellectual Property Law Section. .

[17] What is a troll patent and why are they bad? (http:/ / www. patentlyo. com/ patent/ 2009/ 03/ what-is-a-troll-patent-and-why-are-they-bad. html), By TJ Chiang (Professor at George Mason Law School), March 6, 2009

[18] Michael Kanellos (March 3, 2006). "Patent auctions: Lawyer's dream or way of the future?" (http:/ / web. archive. org/ web/

20070403015832/ http:/ / news. zdnet. com/ 2100-9595_22-6045371. html). zdnet. Archived from the original (http:/ / news. zdnet. com/

2100-9595_22-6045371. html) on 2007-04-03. . Retrieved 2007-07-27.

[19] Craig Tyler (September 24, 2004) (PDF). Patent Pirates Search For Texas Treasure (http:/ / www. wsgr. com/ PDFSearch/

09202004_patentpirates. pdf). Texas Lawyer. . Retrieved 2007-07-27. [20] Justin Watts (June 2007). "Waiting for Godot". Patent World.

[21] Joff Wild (2008-05-08). "Mutual recognition raises its head as EPO boss says backlog won't be mastered" (http:/ / www. iam-magazine.

com/ blog/ Detail. aspx?g=e84ef872-f9b9-448c-bbd4-0bdce2de184f). Intellectual Asset Management Magazine. . Retrieved 2008-06-19.

[22] Matthew Sag and Kurt W. Rohde (August 21, 2006). "Patent Reform and Differential Impact" (http:/ / papers. ssrn. com/ sol3/ papers. cfm?abstract_id=925722). Northwestern University. .

[23] Don Clark (March 9, 2006). "Inventors See Promise In Large-Scale Public Patent Auctions" (http:/ / online. wsj. com/ article_email/

SB114187357457393357-lMyQjAxMDE2NDAxOTgwNzkzWj. html). the Wall Street Journal Online. . Retrieved 2007-07-27.

[24] IPFrontline Staff (March 11, 2006). "Making Innovation Pay" (http:/ / www. ipfrontline. com/ depts/ article. asp?id=9899& deptid=8). ipFrontline.com. . Retrieved 2007-07-27. Patent troll 6

[25] Nicholas Varchaver, Who's afraid of Nathan Myhrvold?, [[Fortune Magazine (http:/ / money. cnn. com/ magazines/ fortune/

fortune_archive/ 2006/ 07/ 10/ 8380798/ index. htm)], June 26, 2006]

[26] Sam Williams (February 6, 2006). "A Haven for Patent Pirates" (http:/ / www. technologyreview. com/ InfoTech-Software/

wtr_16280,300,p1. html). Technology Review. . Retrieved 2007-07-07.

[27] "US patent law, [[Title 35 of the United States Code|35 U.S.C. (http:/ / www. uspto. gov/ web/ offices/ pac/ mpep/ documents/

appxl_35_U_S_C_284. htm#usc35s284)] § 284 (http:/ / www. law. cornell. edu/ uscode/ 35/ 284. html)"]. .

[28] Jessica Holzer (May 16, 2006). "Supreme Court Buries Patent Trolls" (http:/ / www. forbes. com/ home/ businessinthebeltway/ 2006/ 05/ 15/

ebay-scotus-patent-ruling-cx_jh_0516scotus. html). Forbes.com. . Retrieved 2007-07-27.

[29] Nick Bilton, An Explosion of Mobile Patent Lawsuits (http:/ / bits. blogs. nytimes. com/ 2010/ 03/ 04/

an-explosion-of-mobile-patent-lawsuits/ ), The New York Times, Bits (blog), March 4, 2010. Consulted on March 4, 2010.

[30] Nathan Vardi (May 7, 2007). "Patent Pirates" (http:/ / www. forbes. com/ free_forbes/ 2007/ 0507/ 044. html). Forbes Magazine. . Retrieved 2007-07-27.

[31] Jose Cortina (July 26, 2006). "Antitrust Considerations In Patent Enforcement: A Patent Doesn't Mean Grant Of Monopoly Power" (http:/ /

infringement. blogs. com/ philip_brooks_patent_infr/ 2006/ 07/ antitrust_consi. html). Local Tech Wire. . Retrieved 2007-07-27.

[32] Golden, John M., Patent Trolls' and Patent Remedies (http:/ / papers. ssrn. com/ sol3/ papers. cfm?abstract_id=991698), Texas Law Review, Vol. 85, p. 2130, 2007.

[33] http:/ / www. google. com/ patents?vid=181613

[34] Consumer Price Index (estimate) 1800–2008 (http:/ / www. minneapolisfed. org/ community_education/ teacher/ calc/ hist1800. cfm). Federal Reserve Bank of Minneapolis. Retrieved December 7, 2010.

[35] "In Fight Against Patent Trolls, A New Arrow in the Quiver", Wall Street Journal,11/24/08 (http:/ / blogs. wsj. com/ law/ 2008/ 11/ 24/ in-fight-against-patent-trolls-a-new-arrow-in-the-quiver)

[36] Rick Merritt, Patent pools may flow in wake of latest alliance (http:/ / www. eetimes. com/ news/ latest/ showArticle. jhtml?articleID=208802271), EE Times, 07/02/2008 11:08 PM EDT. Consulted on July 6, 2008.

[37] "RPX, Can it Defend Against Patent Trolls", 11/24/08 (http:/ / news. cnet. com/ 8301-13578_3-10106953-38.

html?tag=newsEditorsPicksArea. 0) [38] Wall Street Journal, "Tech Guru Riles the Industry by Seeking Huge Patent Fees", 9/17/08

[39] Judy Newman (May 9, 2006). "Innovators fear the patent trolls" (http:/ / www. madison. com/ wsj/ mad/ business/ index. php). .

[40] "The Case for Abandoning the Term 'Patent Troll'" (http:/ / web. archive. org/ web/ 20070929000957/ http:/ / www. rkmc. com/

The_Case_for_Abandoning_the_Term_Patent_Troll. htm). Archived from the original (http:/ / www. rkmc. com/

The_Case_for_Abandoning_the_Term_Patent_Troll. htm) on 2007-09-29. . Retrieved 2007-07-27.

[41] (http:/ / www. patentfairness. org/ pdf/ Patent Reform - Protecting Property Rights and the Marketplace of Ideas (Viet D. Dinh)(12 03 07). pdf) Professor Viet Dinh, former Assistant Attorney General for Legal Policy, Dec. 3, 2007

[42] Caroline Horton Rockafellow. "Examining Patent Troll Debate: Should They Be An Endangered Species?" (http:/ / www. wral. com/

business/ local_tech_wire/ biotech/ story/ 1167734/ ). Local Tech Wire. . Retrieved 2007-07-27.

[43] Nathan Myhrvold (March 30, 2006). "Inventors Have Rights, Too!" (http:/ / online. wsj. com/ article/ SB114368437650611883. html). Wall Street Journal. . Retrieved 2007-07-27.

[44] Stefanie Olsen (August 9, 2004). "Google, Yahoo bury the legal hatchet" (http:/ / news. com. com/ Google,+ Yahoo+ bury+ the+ legal+

hatchet/ 2100-1024_3-5302421. html). CNET. . Retrieved 2007-07-27.

[45] Michael Smith (October 11, 2006). "Patent Pirates only exist in Neverland" (http:/ / mcsmith. blogs. com/ eastern_district_of_texas/ files/

patent_pirates_exist_only_in_neverland. pdf) (PDF). Texas Lawyer. . Retrieved 2007-07-27., Texas Lawyer, November 11, 2004

External links

• Scholarly article on nuisance value patent infringement lawsuits, Author: Ranganath Sudarshan (http:/ / www.

chtlj. org/ sites/ default/ files/ media/ articles/ v025/ v025. i1. Sudarshan. pdf)

Further reading • Connell O'Neill, The Battle Over Blackberry: Patent Trolls and Information Technology, The Journal of Law, Information, and Science, 2008, Vol. 17, p. 99-133.

• Maggie Shiels, Technology industry hits out at "patent trolls", BBC News, June 2, 2004. (http:/ / news. bbc. co.

uk/ 1/ hi/ business/ 3722509. stm)

• Lorraine Woellert, A Is Breaking Out On The Hill, Business Week, July, 2005. (http:/ / www.

businessweek. com/ magazine/ content/ 05_27/ c3941058_mz013. htm)

• Joe Beyers, Rise of the patent trolls, CNET News.com, October 12, 2005. (http:/ / news. com. com/ Rise+ of+

the+ patent+ trolls/ 2010-1071_3-5892996. html) Patent troll 7

• Raymond P. Niro, The Patent Troll Myth, Professional Inventors Alliance web site, August 4, 2005. (http:/ /

www. piausa. org/ patent_reform/ articles/ raymond_p_niro_08_04_2005) • Raymond P. Niro, Who is Really Undermining the Patent System – "Patent Trolls" or Congress?. 6 J. Marshall

Rev. Intell. Prop. L. 185 (http:/ / jmripl. com/ Publications/ vol6/ issue2/ niro. pdf) (2007).

• Jennifer Kahaulelio Gregory, "The Troll Next Door", 6 J. Marshall Rev. Intell. Prop. L. 292 (http:/ / www. jmripl.

com/ Publications/ Vol6/ Issue2/ Gregory. pdf) (2007).

• Simon Phipps, On Cane Toads, Fire Ants and Patents, SunMink, February 13, 2005. (http:/ / blogs. sun. com/

webmink/ entry/ on_cane_toads_fire_ants)

• Bakos, Tom, "Patent Trolls", Insurance IP Bulletin, Vol. 2005.3, June 2005. (http:/ / marketsandpatents. com/ IPB

06152005. mht) • Ferrill, Elizabeth, "Patent Investment Trusts: Let's Build a PIT to Catch the Patent Trolls", N.C. J. of Law &

Tech., Vol 6, Iss. 2: Spring 2005. (http:/ / www. jolt. unc. edu/ Vol6_I2/ pdf/ Ferrill 4-23-05. pdf) • Kurt Leyendecker, "Patent Trolls!", Control, Protect & Leverage, A Leyendecker & Lemire Blog, March 14,

2006. (http:/ / www. lld-law. com/ 2006/ 03/ patent-trolls. html) • Steven Rubin (March, 2007). "Hooray for the Patent Troll!". IEEE Spectrum. • Colleen Chien, Of Trolls, Davids, Goliaths, and Kings: Narratives and Evidence in the Litigation of High-Tech

Patents, 87 N.C. L. Rev. 1571 (2009), available at SSRN (http:/ / papers. ssrn. com/ sol3/ papers.

cfm?abstract_id=1396319). Summarized at Jotwell (http:/ / ip. jotwell. com/ finding-a-place-for-data-in-the-patent-troll-debate). Article Sources and Contributors 8 Article Sources and Contributors

Patent troll Source: http://en.wikipedia.org/w/index.php?oldid=407577735 Contributors: A Nobody, Agradman, Aldaron, AlmostReadytoFly, Altenmann, Andrevan, Arny, Atropos235, Bab269, Batt1826, BillFlis, Billinghurst, Blm19732008, Bradrules, Branciforte3241, Brianhe, Carlossuarez46, Carroy, Chatsworthbob, Chrismiceli, Corpx, CyrilB, Dalac, Dale Arnett, Darklilac, DavidDouthitt, Dekimasu, Dispenser, Dynablaster, Eastlaw, Edcolins, Einstein9073, Elpato, Enon, Ewlyahoocom, Fmccown, Furrykef, Fxer, GDallimore, Galoubet, Ghostface74, Greensburger, Hdante, Ilaiho, Ipthief, IronGargoyle, Isaac Dupree, Jamo.au, Jane023, JazzyGroove, Jheald, Jhsounds, Jushi, Jwpark83, Kmarinas86, Krassotkin, Kvn8907, Laduree6th, Lightbound, Ligulem, Lindigo, Longhair, Lradrama, Mahjongg, Masshightech, Mateo LeFou, Mattsag, Mechamind90, Meltonkt, Michael Frind, Michaelwigle, Mike1942f, Mild Bill Hiccup, Mmmbeer, Mmmpotatoes, Moonriddengirl, Mrzaius, Mwalts, NetRolller 3D, Nowa, OccamzRazor, Patent Lawyer 001, Patentboy, PaulWay, Piotrus, Pnchavez, Pnm, PraeceptorIP, Propaniac, Quark1005, Randolf Richardson, Redxiv, Riotgear, Rjwilmsi, Rl, SamJohnston, Sangwine, Shadowjams, Shlomital, Sikon, SimonP, Slashme, Spidern, Spitzl, Srleffler, Swen, Technobadger, Technolawyer1964, Ternto333, That Guy, From That Show!, Timc, Tiptoety, TomTheHand, Toounstable, Torokun, Towel401, Tregoweth, Vectro, Verne Equinox, Vpolavia, Vuo, Waerloeg, White 720, Whpq, WikHead, Wikidemon, Woodjr, Work permit, Yomangani, Yupik, 관인생략, 219 anonymous edits Image Sources, Licenses and Contributors

Image:Woodward light bulb.JPG Source: http://en.wikipedia.org/w/index.php?title=File:Woodward_light_bulb.JPG License: Public Domain Contributors: Monkeybait, Nowa License

Creative Commons Attribution-Share Alike 3.0 Unported

http:/ / creativecommons. org/ licenses/ by-sa/ 3. 0/ Patentability 1 Patentability

Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent. By extension, patentability also refers to the substantive conditions that must be met for a patent to be held valid.

Requirements The patent laws usually require that, in order for an invention to be patentable, it must • be of patentable subject matter, ie a kind of subject-matter that is eligible for patent protection, • be novel (i.e. at least some aspect of it must be new), • be non-obvious (in United States patent law) or involve an inventive step (in European patent law); and • be useful (in U.S. patent law) or be susceptible of industrial application (in European patent law[1] ). Usually the term "patentability" only refers to "substantive" conditions, and does not refer to formal conditions such as the "sufficiency of disclosure", the "" or the "best mode requirement". Judging patentability is one aspect of the official examination of a patent application performed by a patent examiner. Although the grant of a patent creates a presumption that the claimed invention is valid, errors in the granting procedure may occur and previously unconsidered prior art may be brought to light only after the patent was granted, but under higher scrutiny based on the presumption of validity. Prior to filing a patent application, inventors sometimes obtain a patentability opinion from a patent agent or patent attorney regarding whether an invention satisfies the substantive conditions of patentability.

Opposition and reexamination Many national and regional patent offices provide procedures for reconsidering whether or not a given patent is valid after grant. Under the European Patent Convention, any person can file an opposition provided they act promptly after grant of the patent. In the United States, members of the public can initiate reexamination proceedings. Japan provides similar options as well. Members of the public can also initiate lawsuits in the courts of various nations to have patents declared invalid. United Kingdom patents can be reviewed by way of a non-binding opinion issued by the Patent Office, or by formal applications for revocation before the Patent Office or the Court. If the patent survives a revocation action, this is noted for future reference by way of a Certificate of contested validity.

Infringement The fact that an invention is patentable does not necessarily mean that that invention does not also infringe another patent. The first patent in a given area may have a broad claim covering the concept of the invention since there is no prior art in that area. Later, a specific implementation of that concept may be invented, which is patentable as it is not disclosed in the earlier patent, but that falls within the claim to the general concept. The later inventor must, therefore, obtain a licence from earlier proprietor to be able to exploit his invention. Thomas Edison's thin carbon filament light bulb was a patentable improvement over the earlier patented Woodward and Evans thick carbon filament light bulb. Thomas Edison bought the Woodward patent for $US 5,000 before he began his development work so that Woodward would not be able to sue him for patent infringement after Edison became commercially successful. Patentability 2

Legislations

United States Under United States patent law, inventorship is also regarded as a patentability criterion. It is a constitutional requirement. Congress' ability to grant patents is authorized only for the inventor. This was confirmed by case law: "Inventorship is indeed relevant to patentability under 35 U.S.C. § 102(f), and patents have in the past been held unenforceable for failure to correctly name inventors in cases where the named inventors acted in bad faith or with deceptive intent." [2] Details on patentability in the U.S. can be found in the Manual of Patent Examining Procedure or MPEP. This is published by the United States Patent and Trademark Office (USPTO) and is the reference manual used by both patent examiners and patent agents/attorneys. Chapter 2100 [3], in particular, gives a comprehensive overview of the standards for patentability, a discussion of the related case law, and guidance on how to overcome an examiner's rejection of a given set of claims. In the United States, the patent grant is presumptive, e.g. a patent shall issue unless the patent statutes preclude the grant. In other words, the burden is on the Patent Office to prove why a patent should NOT be granted.[4] Once a patent issues, however, it is presumed valid and a court may declare it invalid only on the basis of clear and convincing evidence.

Quotes [The question whether there is a patentable invention] is as fugitive, impalpable, wayward, and vague a phantom as exists in the whole paraphernalia of legal concepts. It involves, or it should involve, as complete a reconstruction of the art that preceded it as is possible. The test of invention is the originality of the discovery, and discovery depends upon the mental act of conceiving the new combination, for substantially every invention is only a combination. Nothing is more illusory, as nothing is more common, than to assume that this can be measured objectively by the magnitude of the physical readjustments required. Courts never tire, or at least in earlier times they never did, of expatiating upon the freshness of insight which observes a little, but fruitful, change which had theretofore escaped detection by those engaged in the field. When all is said, we are called upon imaginatively to project this act of discovery against a hypostatized average practitioner, acquainted with all that has been published and all that has been publicly sold. If there be an issue more troublesome, or more for litigation than this, we are not aware of it. (...) - US Judge Learned Hand in Harries v. Air King Prod. Co., 183 F.2d 158, 162 (2d Cir. 1950).[5]

Footnotes

[1] Article 57 (http:/ / www. epo. org/ patents/ law/ legal-texts/ html/ epc/ 2000/ e/ ar57. html) EPC [2] Board of Education ex rel Board of Trustees of Florida State University v. American Bioscience Inc, 67 USPQ 2d 1252 (Fed Cir 2003) (http:/

/ www. ll. georgetown. edu/ federal/ judicial/ fed/ opinions/ 02opinions/ 02-1109. html)

[3] http:/ / www. uspto. gov/ web/ offices/ pac/ mpep/ documents/ 2100. htm

[4] A person shall be entitled to a patent unless... 35 USC 102 (http:/ / www. uspto. gov/ web/ offices/ pac/ mpep/ documents/

appxl_35_U_S_C_102. htm)

[5] (http:/ / www. jurisearch. com/ newroot/ caselink. asp?series=F. 2d& citationno=183+ F. 2d+ 158) Patentability 3

See also See List of patent legal concepts for articles on various legal aspects of patents, including special types of patents and patent applications. • Idea-expression divide A copyright law concept often [erroneously] raised in the patent context.

External links

• Patentability requirements in United States patent law (http:/ / www. uspto. gov/ web/ offices/ pac/ mpep/

documents/ 2100. htm), from the USPTO web site

• Guidelines for Examination in the EPO c.iv (http:/ / www. epo. org/ patents/ law/ legal-texts/ html/ guiex/ e/ c_iv. htm) "Patentability" (European Patent Office) Article Sources and Contributors 4 Article Sources and Contributors

Patentability Source: http://en.wikipedia.org/w/index.php?oldid=406648790 Contributors: Anomie, BD2412, Beno1000, Edcolins, Femto, GDallimore, Ipwatchdog, Jheald, Jrtayloriv, Kcordina, Manikandanbs, Mmmbeer, Natalie Erin, Nowa, Patentdude, Patentinfo, Patently, Postdlf, PraeceptorIP, Smably, Toytoy, Umakant Mishra, Witysaur, Xezbeth, 13 anonymous edits License

Creative Commons Attribution-Share Alike 3.0 Unported

http:/ / creativecommons. org/ licenses/ by-sa/ 3. 0/ Software patent 1 Software patent

Computer programs, software and patent law

Topics Software patent Debate List of patents Treaties TRIPS Agreement Patent Cooperation Treaty European Patent Convention Countries United Kingdom United States Case law European Patent Office United Kingdom Related topics Business methods

Software patent does not have a universally accepted definition.[1] One definition suggested by the Foundation for a Free Information Infrastructure is that a software patent is a "patent on any performance of a computer realised by means of a computer program".[2] [3] There is intense debate over the extent to which software patents should be granted, if at all. Important issues concerning software patents include: • Where the boundary between patentable and non-patentable software should lie;[4] • Whether the inventive step and non-obviousness requirement is applied too loosely to software;[5] and • Whether patents covering software discourage, rather than encourage, innovation.[6]

Background A patent is a set of exclusionary rights granted by a state to a patent holder for a limited period of time, usually 20 years. These rights are granted to patent applicants in exchange for their disclosure of the inventions. Once a patent is granted in a given country, no person may make, use, sell or import/export the claimed invention in that country without the permission of the patent holder. Permission, where granted, is typically in the form of a license which conditions are set by the patent owner: it may be gratis or in return for a royalty payment or lump sum fee. Patents are territorial in nature. To obtain a patent, inventors must file patent applications in each and every country in which they want a patent. For example, separate applications must be filed in Japan, China, the United States and Software patent 2

India if the applicant wishes to obtain patents in those countries. However, some regional offices exist, such as the European Patent Office (EPO), which act as supranational bodies with the power to grant patents which can then be brought into effect in the member states, and an international procedure also exists for filing a single international application under the Patent Cooperation Treaty (PCT), which can then give rise to patent protection in most countries. These different countries and regional offices have different standards for granting patents. This is particularly true of software or computer-implemented inventions, especially where the software is implementing a business method.

History and current trends

Early example of a software patent On 21 May 1962, a British patent application entitled "A Computer Arranged for the Automatic Solution of Linear Programming Problems" was filed.[7] The invention was concerned with efficient memory management for the simplex algorithm, and could be implemented by purely software means. The patent was granted on August 17, 1966 and seems to be one of the first software patents.[8]

United States

The United States Patent and Trademark Office has granted patents that may be referred to as software patents since at least the early 1970s.[9] In Gottschalk v. Benson (1972), the United States Supreme Court ruled that a patent for a process should not be allowed if it would "wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself", adding that "it is said that the decision precludes a patent for any program servicing a computer. We do not so hold."[10] In 1981, the Supreme Court stated that "a claim drawn to subject matter otherwise statutory does not become

nonstatutory simply because it uses a mathematical formula, computer Growth of software patents in US program, or digital computer" and a claim is patentable if it contains "a mathematical formula [and] implements or applies the formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect".[11]

Due to different treatment of federal patent rights in different parts of the country, in 1982 the U.S. Congress created a new court (the Federal Circuit) to hear patent cases. Following several landmark decisions by this court, by the early 1990s the patentability of software was well established, and in 1996 the USPTO issued Final Computer Related Examination Guidelines stating that "A practical application of a computer-related invention is statutory subject matter. This requirement can be discerned from the variously phrased prohibitions against the patenting of abstract ideas, laws of nature or natural phenomena" (emphasis added).[12] The recent expansion of the Internet and e-commerce has led to many patents being applied for and being granted for business methods implemented in software and the question of whether business methods are statutory subject matter is a separate issue from the question of whether software is. There have been several successful enforcement trials in the USA, some of which are listed in the list of software patents article. Software patent 3

Europe Within European Union member states, the EPO and other national patent offices have issued many patents for inventions involving software since the European Patent Convention (EPC) came into force in the late 1970s. Article 52 [13] EPC excludes "programs for computers" from patentability (Art. 52(2)) to the extent that a patent application relates to a computer program "as such" (Art. 52(3)). This has been interpreted to mean that any invention which makes a non-obvious "technical contribution" or solves a "technical problem" in a non-obvious way is patentable even if that technical problem is solved by running a computer program.[14] Computer-implemented inventions which only solve a business problem using a computer, rather than a technical problem, are considered unpatentable as lacking an inventive step (see T 258/03). Nevertheless, the fact that an invention is useful in business does not mean it is not patentable if it also solves a technical problem.

United Kingdom United Kingdom patent law is interpreted to have the same effect as the European Patent Convention such that "programs for computers" are excluded from patentability to the extent that a patent application relates to a computer program "as such". Current case law in the UK states that an (alleged) invention will only be actually regarded as an invention if it provides a contribution that is not excluded and which is also technical. A computer program implementing a business process is therefore not an invention, but a computer program implementing an industrial process may well be.

Japan Software-related inventions are patentable. To qualify as an invention, however, there must be "a creation of technical ideas utilizing a law of nature" [15] although this requirement is typically met by "concretely realising the information processing performed by the software by using hardware resources".[16] Software-related inventions may be considered obvious if they involve: the application of an operation known in other fields; the addition of a commonly known means or replacement by equivalent; the implementation in software of functions which were previously performed by hardware; or the systematisation of known human transactions.[17]

Other countries In India, a clause to include software patents was quashed by the Indian Parliament in April 2005.[18] In Australia, pure or abstract methods of doing business are not considered to be patentable, but if the method is implemented using a computer, it avoids the exclusion for business methods.[19] In New Zealand computer programs are to be excluded from patentability under a 2010 Patents Bill, but guidelines permitting embedded software are to be drafted once the bill has passed.[20] [21] [22] [23] [24] In the Philippines, "schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers" are non-patentable inventions under Sec. 22.2 of Republic Act No. 8293, otherwise known as the "Intellectual Property Code of the Philippines." In South Korea, software is considered patentable and many patents directed towards "computer programs" have been issued.[25] In 2006, Microsoft was ordered to halt sales of its "Office" suite due to a patent infringement ruling by the Supreme Court of Korea.[26] The company was found to have infringed upon patents directed towards automatic language translation within software programs.[26] Software patent 4

Patentable subject matter Patents are intended to promote innovation by encouraging the timely disclosure of how to make and use inventions and by protecting investments made to commercialize inventions. They attempt to accomplish this by requiring that a prompt and full disclosure is made by an inventor of how to make and use the invention and by granting a monopoly right for a limited period of time to a patent owner to prevent others from making, using or selling the invention in exchange for said prompt and full disclosure. There is debate as to whether or not these aims are achieved with software patents.

Proposals In seeking to find a balance, different countries have different policies as to where the boundary between patentable and non-patentable software should lie. In Europe, a number of different proposals for setting a boundary line were put forward during the debate concerning the proposed Directive on the patentability of computer-implemented inventions, none of which were found acceptable by the various parties to the debate. Two particular suggestions for a hurdle that software must pass to be patentable include: • A computer program that utilises "controllable forces of nature to achieve predictable results".[27] • A computer program which provides a "technical effect".[28] In the US, Ben Klemens, a Guest Scholar at the Brookings Institution, proposed that patents should be granted only to inventions that include a physical component that is by itself nonobvious.[29] This is based on Justice William Rehnquist's ruling in the U.S. Supreme Court case of Diamond v. Diehr that stated that "... insignificant postsolution activity will not transform an unpatentable principle into a patentable process." By this rule, one would consider software loaded onto a stock PC to be an abstract algorithm with obvious postsolution activity, while a new circuit design implementing the logic would likely be a nonobvious physical device. Upholding an "insignificant postsolution activity" rule as per Justice Rehnquist's ruling would also eliminate most business method patents.

Obviousness A common objection to software patents is that they relate to trivial inventions.[30] A patent on an invention that many people would easily develop independently of one another should not, it is argued, be granted since this impedes development. Different countries have different ways of dealing with the question of inventive step and non-obviousness in relation to software patents.

Inventive step test in Europe See Inventive step requirement in Europe and, for instance, T 258/03.

Perceived negative effects

Compatibility There are a number of high profile examples where the patenting of a data exchange standards forced another programming group to introduce an alternative format. For instance, the PNG format was largely introduced to avoid the GIF patent problems, and Ogg Vorbis to avoid MP3. If it is discovered that these new suggested formats are themselves covered by existing patents, the final result may be a large number of incompatible formats. Creating such formats and supporting them costs money, creates inconvenience to users and even threatens to split the Internet into several partially incompatible sub-networks (ASF and non-ASF, for example). Software patent 5

Conflicts

Computer-implemented invention (CII) A microsite [31] of the EPO website states that a generally accepted and widely used definition of a CII is "an invention whose implementation involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realised wholly or partly by means of a computer program."[32] A similar definition is provided by The Guidelines for Examination at the EPO.[33] The EPO, in contrast, deny that they grant software patents.[34] They further argue that the term software patent is itself a misleading concept since it could imply that an invention must be in the form of software to count as a CII. The case law of the EPO[35] and various national courts in Europe[36] states that a computer program cannot be patented in the guise of an object or as hardware if the underlying invention is still a computer program as such. Computer-implemented invention also covers inventions relating to computer control of processes external to a computer, such as anti-lock braking systems (ABS). Such inventions are not caught by many definitions of software patent, such as the one proposed by the FFII.[2] Additionally, the EPO do not grant patents to all computer-implemented inventions since they must still provide a technical solution to a technical problem to be viewed as being inventive, whereas the term software patent implies a granted patent. Nevertheless, the fact that the EPO deem that many software-related patent applications describe inventions is a point of contention.

Overlap with copyright Protection by patent protection and copyright constitute two different means of legal protection which may cover the same subject-matter, such as computer programs, since each of these two means of protection serves its own purpose.[37] Software is protected as works of literature under the Berne Convention. This allows the creator to prevent another entity from copying the program and there is generally no need to register code in order for it to be copyrighted. Patents, on the other hand, give their owners the right to prevent others from using a claimed invention, even if it was independently developed and there was no copying involved. In fact, one of the most recent EPO decisions T 424/03 [38] clarifies the distinction, stating that software is patentable, because it is basically only a technical method executed on a computer, which is to be distinguished from the program itself for executing the method, the program being merely an expression of the method, and thus being copyrighted. Patents cover the underlying methodologies embodied in a given piece of software, or the function that the software is intended to serve, independent of the particular language or code that the software is written in. Copyright prevents the direct copying of some or all of a particular version of a given piece of software, but do not prevent other authors from writing their own embodiments of the underlying methodologies. Copyright can also be used to prevent a given set of data from being copied while still allowing the author to keep the contents of said set of data a trade secret. Whether and how the numerus clausus principle shall apply to the legal hybrid software[39] to provide a judicious balance between property rights of the title holders and freedom rights of computing professionals[40] and the society as a whole,[41] is in dispute.[42] Software patent 6

Free and open source software There is tremendous animosity and disgust in the free software community towards software patents. Much of this has been caused by free software or open source projects shutting down[43] when the holders of patents covering aspects of a project demanded license fees that the project could not or was not willing to pay or offered licenses under terms which the project was unwilling to accept, or could not accept because it conflicted with the free software licence in use.[44] Several patent holders have offered royalty-free patent licenses. Companies that have done this include Apple Inc, IBM, Microsoft,[45] Nokia, Novell,[46] Red Hat,[47] Sun Microsystems[48] and Unisys. Such actions have rarely appeased the free and open source software communities for reasons such as fear of the patent holder changing their mind or problems with some of the license terms.[49] In 2005 Sun Microsystems announced that they were making a portfolio of 1,600 patents available through a patent license called Common Development and Distribution License.[50] In 2006, Microsoft's patent pledge not to sue Novell Linux customers, openSUSE contributors, and free/open source software developers[51] and the associated collaboration agreement with Novell[52] was met with disdain from the Software Freedom Law Center[53] while commentators from the stated that the agreement would not comply with GPLv3.[54] [55] Draft versions of the GNU GPL version 3 may also conflict with patents on software by preventing any patent holder from enforcing their patents against a user if said patent holder also distributes software covered by those patents under the GPL.[56]

Unisys case In the late 1990s, Unisys claimed to have granted royalty free licenses to hundreds of not-for-profit organizations that used the patented LZW compression method and, by extension, the GIF image format. However, this did not include most software developers and Unisys were "barraged" by negative and "sometimes obscene" emails from software developers.[57]

Jurisdictions Substantive law regarding the patentability of software and computer-implemented inventions, and case law interpreting the legal provisions, are different under different jurisdictions. Software patents under multilateral treaties: • Software patents under TRIPs Agreement • Software patents under the European Patent Convention • Computer programs and the Patent Cooperation Treaty Software patents under national laws: • Software patents under United States patent law • Software patents under United Kingdom patent law Software patent 7

Litigation Several successful litigations show that software patents are enforceable in the US. See List of software patents for more examples. Similarly in Japan, software patents have been successfully enforced. In 2005, for example, Matsushita won a court order barring Justsystem from infringing Matsushita's Japanese patent 2,803,236 covering word processing software. A Tokyo court ordered Justsystem to pull their product from the market. On September 30, 2005, Intellectual Property High Court of Japan, which was established in April 2005, granted Justsystems' appeal and overturned the Tokyo District Court decision in October 2005.[58]

Licensing

Patenting software is widespread in the US. As of 2004, approximately 145,000 patents had issued in the 22 classes of patents covering "computer implemented inventions". (see table to the right). Many software companies cross license their patents to each other. These agreements allow each party to practice the other party's patented inventions without the threat of being sued for patent infringement. Microsoft, for example, has agreements with IBM, Sun Microsystems, SAP, Hewlett-Packard, Siemens AG, Cisco, Autodesk[59] and recently Novell. Microsoft cross-licensed its patents with Sun, despite being direct competitors, and with Autodesk even though Autodesk has far fewer patents than Microsoft.

The ability to negotiate cross licensing agreements is a major reason that many software companies, including those providing open source software, file patents. As of June 2006, for example, Red Hat has Total US software patents by class of invention as of 2004 developed a portfolio of 10 issued US patents, 1 issued European patent, 163 pending US patent applications, and 33 pending international PCT (Patent Cooperation Treaty) patent applications. Red Hat uses this portfolio to cross license with proprietary software companies so that they can preserve their freedom to operate.[47]

Many software patent holders license their patents in exchange for monetary royalties. Some patent owners, such as IBM, are in the business of selling the products they patent and view licensing as a way to increase the return on their investment in innovation. IBM generates an additional $US 2 billion per year by licensing.[60] Other patent holders are in the business of inventing new "computer implemented inventions" and then commercializing the inventions by licensing the patents to other companies that manufacture the inventions. Walker Digital, for example, has generated a large patent portfolio from its research efforts, including the basic patent on the Priceline.com reverse auction technology. US universities also fall into this class of patent owners. They collectively generate about $1.4 billion per year through licensing the inventions they develop to both established and start up companies in all fields of technology, including software.[61] Still other patent holders focus on obtaining patents from original inventors and licensing them to companies that have introduced commercial products into the marketplace after the patents were filed. Some of these patent holders, such as Intellectual Ventures, are privately held companies financed by large corporations such as Microsoft, Intel, Google, etc. Others, such as Acacia Technologies, are publicly traded companies with institutional investors being the primary shareholders.[62] The practice of acquiring patents merely to license them is controversial in the software industry. Companies that have this business model are pejoratively referred to as patent trolls. It is an integral part of the business model that Software patent 8

patent licensing companies sue infringers that do not take a license. Furthermore, they may take advantage of the fact that many companies will pay a modest license fee (e.g.$100,000 to $1,000,000) for rights to a patent of questionable validity, rather than pay the high legal fees ($2,000,000 on up) to demonstrate in court that the patent is invalid.

Explanatory notes

[1] "Defining a Software Patent" (http:/ / softwarepatentwatch. wordpress. com/ defining-software-patent). Public Patent Foundation. . Retrieved 2007-05-30.

[2] "The Gauss Project" (http:/ / www. ffii. se/ erik/ EPIP/ img8. html). FFII. . Retrieved 2007-05-30. [3] In 2005, the European Patent Office suggested that a software patent is a patent for a computer program claimed as such, or an algorithm or computer-implemented business method that make no technical contribution. European Patent Office continues to advocate harmonisation in

the field of CII patents (http:/ / www. epo. org/ about-us/ press/ releases/ archive/ 2005/ 06072005. html) The FFII are an anti-software patent group and the material associated with their definition of a software patent suggests that the purpose of the definition is to identify patents that should not be granted as a matter of policy.

[4] Software patents in Europe: debunking the myths (http:/ / www. out-law. com/ page-4814), OUT-LAW News, 19/08/2004

[5] "Public consultation on level of the inventive step required for obtaining patents" (http:/ / www. ipo. gov. uk/ response-inventive. pdf) (PDF). UK Intellectual Property Office. . Retrieved 2007-06-05.

[6] Patenthawk.com blog entry (http:/ / www. patenthawk. com/ blog/ 2005/ 04/ patent_economics_part_4_incent. html)

[7] GB 1039141 (http:/ / v3. espacenet. com/ textdoc?DB=EPODOC& IDX=GB1039141)

[8] Beresford, K (2000) Patenting Software under the European Patent Convention, London: Sweet & Maxwell, page 4. See also http:/ / www2.

warwick. ac. uk/ fac/ soc/ law/ elj/ jilt/ 2003_1/ kretschmer/ .

[9] U.S. Patent 3552738 (http:/ / www. google. com/ patents?vid=3552738), U.S. Patent 3553358 (http:/ / www. google. com/

patents?vid=3553358) and U.S. Patent 3553384 (http:/ / www. google. com/ patents?vid=3553384) granted 5 January 1971, and U.S. Patent

3996564 (http:/ / www. google. com/ patents?vid=3996564) granted December 7, 1976 can be easily found using the Bessen/Hunt technique. Earlier patents may exist but US patent database does not permit full text searching for earlier patents

[10] Gottschalk v Benson, 409 U.S. 63 (http:/ / supreme. justia. com/ us/ 409/ 63/ case. html) (1972)

[11] Diamond v. Diehr, 450 U.S. 175 (http:/ / supreme. justia. com/ us/ 450/ 175/ case. html) (1981)

[12] Final Computer Related Examination Guidelines (http:/ / www. bitlaw. com/ source/ soft_pats/ final. html)

[13] http:/ / www. epo. org/ patents/ law/ legal-texts/ html/ epc/ 2000/ e/ ar52. html

[14] T469/03 (http:/ / legal. european-patent-office. org/ dg3/ pdf/ t030469eu1. pdf), Reasons 5.1 to 5.3

[15] Examination Guidelines for Patent and Utility Model in Japan (REQUIREMENTS FOR PATENTABILITY) (http:/ / www. jpo. go. jp/

tetuzuki_e/ t_tokkyo_e/ Guidelines/ 2_1. pdf), pages 1-3 [16] Examination Guidelines for Inventions for Specific Fields (Computer Software-Related Inventions) in Japan, Japanese Patent Office, April

2005 (http:/ / www. jpo. go. jp/ tetuzuki_e/ t_tokkyo_e/ Guidelines/ 7_1. pdf), page 10 (2.2.1) [17] Examination Guidelines for Inventions for Specific Fields (Computer Software-Related Inventions) in Japan, Japanese Patent Office, April

2005 (http:/ / www. jpo. go. jp/ tetuzuki_e/ t_tokkyo_e/ Guidelines/ 7_1. pdf), pages 16-17 ("Systematization of human transactions")

[18] Software patents under Ordinance face reversal (http:/ / www. financialexpress. com/ fe_full_story. php?content_id=86454)

[19] AIPLA International Patent Law Handbook: Software and Business Method Inventions Australia (http:/ / www. aipla. org/ html/

Patent-Handbook/ countries/ australia/ AUsoftware. html)

[20] http:/ / www. beehive. govt. nz/ release/ minister+ announces+ way+ forward+ software+ patents

[21] http:/ / www. itwire. com/ it-policy-news/ government-tech-policy/ 40451-new-zealand-says-no-to-software-patents

[22] http:/ / www. cpaglobal. com/ newlegalreview/ 4617/ south_pacific_cousins_part_way

[23] http:/ / www. tgdaily. com/ business-and-law-features/ 50667-new-zealand-bans-software-patents

[24] http:/ / computerworld. co. nz/ news. nsf/ news/ nzict-says-patents-integral-to-software-protection

[25] EPO web site, Patent information, East Asian patent information, Virtual helpdesk, Korea, FAQ, FAQ - Korea (http:/ / www. epo. org/

patents/ patent-information/ east-asian/ helpdesk/ korea/ faq. html#new2). Consulted on October 29, 2008.

[26] Candace Lombardi, Microsoft lost in translation (http:/ / news. cnet. com/ 8301-10784_3-6138379-7. html), cnet.com, News Blog, November 27, 2006. Consulted on October 29, 2008. [27] Amendment 23 introduced on September 2003 by the European Parliament to the proposed Directive on the patentability of

computer-implemented inventions (http:/ / www. europarl. eu. int/ meetdocs/ committees/ itre/ 20030219/ 488498en. pdf), "Dispositions program decision" (BGH 22/6/1976), Nordic Patent Law treaty.

[28] Decision T 59/93 (http:/ / legal. european-patent-office. org/ dg3/ biblio/ t930059eu1. htm) of the Boards of Appeal of the European Patent Office, Reasons, point 3.4

[29] Wall Street Journal, 25 March 2006, p A9 WSJ link (http:/ / online. wsj. com/ article_print/ SB114325217495908172. html) (subscription required)

[30] Stallman, Richard (June 20, 2005). "Patent absurdity" (http:/ / www. guardian. co. uk/ technology/ 2005/ jun/ 20/ comment. comment). The Guardian (London). . Retrieved May 23, 2010.

[31] http:/ / cii. european-patent-office. org/ law_practice/ index. en. php Software patent 9

[32] Computer-Implemented Inventions (CII) (http:/ / cii. european-patent-office. org/ law_practice/ index. en. php)

[33] EPO microsite on CIIs (http:/ / www. european-patent-office. org/ legal/ gui_lines/ e/ c_iv_2_3_6. htm)

[34] EPO CII Brochure (http:/ / cii. european-patent-office. org/ _pdf/ cii_brochure_en. pdf)

[35] T0158/88 (http:/ / legal. european-patent-office. org/ dg3/ biblio/ t880158ep1. htm)

[36] Judgment in CFPH's application (http:/ / www. bailii. org/ ew/ cases/ EWHC/ Patents/ 2005/ 1589. html#para25) [37] Decision T 1173/97 of the Boards of appeal of the EPO, July 1, 1998, Reasons 2.4 - see T 1173/97 on the EPO boards of appeal section of

the EPO web site (http:/ / legal. european-patent-office. org/ dg3/ biblio/ t971173ex1. htm).

[38] http:/ / legal. european-patent-office. org/ dg3/ biblio/ t030424eu1. htm [39] Burk "Copyrightable functions and patentable speech" CACM 44, 2, 69 DOI 10.1145/359205.359231 [40] Kiesewetter-Köbinger, Swen (2010). "Programmers' Capital". Computer 43 (2): 108, 106–107. doi:10.1109/MC.2010.47. [41] STANDING COMMITTEE ON THE LAW OF PATENTS, Proposal from Brazil (January 20, 2010). "Proposal from Brazil in respect of

exceptions and limitations to patent rights" (http:/ / www. wipo. int/ edocs/ mdocs/ patent_policy/ en/ scp_14/ scp_14_7. pdf). WIPO. . Retrieved 4 February 2010.

[42] Schricker/Straus "Stellungnahme 2000" (http:/ / ec. europa. eu/ internal_market/ indprop/ docs/ comp/ replies/ planck_en. pdf); Hoffmann

„Mehrfachschutz geistigen Eigentums im deutschen Rechtssystem 2008 (http:/ / www. buchhandel. de/ WebApi1/ GetMmo.

asp?MmoId=4804929& mmoType=PDF) ISBN 978-3831608065; Peukert "Güterzuordnung als Rechtsprinzip" 2008 ISBN 3161497244

[43] http:/ / www. gnu. org/ patent-examp/ patent-examples. html

[44] http:/ / swpat. ffii. org/ patents/ effects

[45] http:/ / www. microsoft. com/ resources/ sharedsource/ silverlightcontrolslicense. mspx

[46] Patent Policy (http:/ / www. novell. com/ company/ policies/ patent/ )

[47] redhat.com | Red Hat Patent Policy (http:/ / www. redhat. com/ legal/ patent_policy. html)

[48] http:/ / java. sun. com/ javase/ 6/ jdk-6u2-license. txt

[49] "Microsoft's Open Specification Promise: No Assurance for GPL" (http:/ / www. softwarefreedom. org/ resources/ 2008/ osp-gpl. html). Software Freedom Law Center. .

[50] Sun Grants Global Open Source Community Access to More than 1,600 Patents, Sun press release, January 25, 2005 (http:/ / www. sun.

com/ smi/ Press/ sunflash/ 2005-01/ sunflash. 20050125. 2. xml)

[51] "Community Commitments - Microsoft & Novell Interoperability Collaboration" (http:/ / www. microsoft. com/ interop/ msnovellcollab/

community. mspx). November 2, 2006. .

[52] "Microsoft and Novell Announce Broad Collaboration on Windows and Linux Interoperability and Support" (http:/ / www. novell. com/

news/ press/ item. jsp?id=1196). November 2, 2006. . "Novell press release"

[53] "Microsoft’s developer patent pledge “worse than useless” says SFLC" (http:/ / www. businessreviewonline. com/ os/ archives/ 2006/ 11/

microsofts_deve. html). November 10, 2006. .

[54] "Microsoft makes Linux pact with Novell" (http:/ / news. com. com/ Microsoft+ makes+ Linux+ pact+ with+ Novell/

2100-1016_3-6132119. html). November 2, 2006. .

[55] "Microsoft patent deal could leave Novell behind" (http:/ / www. cbronline. com/ article_news. asp?guid=C1856F2A-F214-4A65-A8C1-4B6CBC1CEED5). November 24, 2006. .

[56] HP may fork the GPL (http:/ / news. zdnet. co. uk/ software/ 0,1000000121,39280371-2,00. htm) Stephen Shankland, CNET News.com, Published: 3 August 2006 09:05 BST

[57] Unisys Not Suing (most) Webmasters for Using GIFs (http:/ / slashdot. org/ articles/ 99/ 08/ 31/ 0143246. shtml)–Slashdot article from August 31, 1999

[58] "Decision Summary, 2005 (Ne) 10040 Appeal Case of Seeking Injunction against Patent Infringement" (http:/ / www. ip. courts. go. jp/ eng/

documents/ pdf/ g_panel/ decision_summary2005ne10040. pdf). Intellectual Property High Court. . Retrieved 2009-01-08.

[59] IDG News Service (http:/ / www. arn. idg. com. au/ index. php?taxid=620938001& id=63439861)

[60] Newsweek Article (http:/ / www. msnbc. msn. com/ id/ 5578247/ site/ newsweek/ )

[61] untitled (http:/ / www. autm. org/ events/ File/ FY04 Licensing Survey/ 04AUTM-USLicSrvy-public. pdf)

[62] http:/ / premium. hoovers. com/ subscribe/ co/ overview. xhtml?ID=fffrfkrhrrxhjcxxkh Software patent 10

References

External links

• Software and Business Methods (http:/ / www. wipo. int/ patent/ law/ en/ developments/ software. html) on the WIPO web site

• FFII Annotated Bibliography (http:/ / swpat. ffii. org/ archive/ mirror/ impact/ index. en. html)

Economic studies

• Bessen; Hunt (2004), An Empirical Look at Software Patents (http:/ / www. researchoninnovation. org/ swpat. pdf). This paper includes a method of identifying software patents that has proved popular with organisations

such as the Public Patent Foundation. (http:/ / www. pubpat. org/ softwarepatentwatch/ )

• The Software Patent Experiment (http:/ / www. researchoninnovation. org/ softpat. pdf) (PDF) Bessen & Hunt 2004.

• A Review of Bessen and Hunt's Analysis of Software Patents (http:/ / www. researchineurope. org/ policy/

hahn_wallsten. pdf) by Robert Hahn and Scott Wallsten of the American Enterprise Institute.

• A Reply to Hahn and Wallsten (http:/ / www. researchoninnovation. org/ hahn. pdf) by Bessen and Hunt, 2004.

• Federal Trade Commission 2003 patent report (http:/ / www. ftc. gov/ os/ 2003/ 10/ innovationrpt. pdf) (PDF file)

Also FFII review of FTC report (http:/ / www. ffii. org. uk/ swpat/ ftc/ ftc. html).

• CEP Discussion Paper No 740 (http:/ / cep. lse. ac. uk/ pubs/ download/ dp0740. pdf), August 2006, Strategic Patenting and Software Innovation by Michael Noel and Mark Schankerman, London School of Economics and Political Science

Books

• Patent Failure (http:/ / press. princeton. edu/ titles/ 8634. html), James Bessen and Michael Meurer, Princeton University Press, 2008.

• Math You Can't Use: Patents, Copyright, and Software (http:/ / www. brookings. edu/ press/ books/

mathyoucantuse. htm), Ben Klemens, Brookings Institution Press, 2005. • The Patent Wars: The Battle to Own the World's Technology, Fred Warshofsky • Information Feudalism - Peter Drahos

• Florian Müller, No Lobbyists As Such (http:/ / crashrecovery. org/ NoLobbyistsAsSuch. pdf) (2006). 377 page play-by-play memoir of the story of Florian's part in the campaign over the EU software patent directive.

Papers and presentations

• R Hunt. You can patent that? (http:/ / www. phil. frb. org/ files/ br/ brq101bh. pdf) (PDF file) Overview of the legal history and trends.

• N. Szabo. Elemental Subject Matter (http:/ / szabo. best. vwh. net/ elementalsubjectmatter. pdf) (PDF file) How software came to be patentable in the United States.

• François Pellegrini. Analysis of software patentability in Europe (http:/ / www. labri. fr/ perso/ pelegrin/ papers/

swpat_europe_20061030. pdf) Chapter 11 of Software Patents - Legal Perspectives, pages 192-209, 2007. Amicus Books - ICFAI University Press, ISBN 81-314-0653-9.

• Hideo Furutani. Patentability of Business Method Inventions in Japan Compared with the US and Europe (http:/ /

www. furutani. co. jp/ office/ ronbun/ Business_method_patents_in_Japan. pdf) (PDF file) Presented at USPTO, Arlington, Virginia (2003)

• Richard Stallman: The Dangers of Software Patents (http:/ / www. ifso. ie/ documents/ rms-2004-05-24. html), May 24, 2004 Software patent 11

• Alexandre Abecassis: Patenting Software Innovations: A brief overview of the situation in some jurisdictions of

interest (http:/ / ewh. ieee. org/ reg/ 7/ canrev/ cr55/ IEEECanadianReview_no55. pdf) (PDF file) IEEE Canadian Review No55, pp24–27

• Brian Kahin: The Software Patent Crisis (http:/ / www. si. umich. edu/ ~kahin/ softwarepatentcrisis. htm), April 1990, Technology Review Article Sources and Contributors 12 Article Sources and Contributors

Software patent Source: http://en.wikipedia.org/w/index.php?oldid=406639559 Contributors: 122589423KM, Aberglas, Afelton, Ahoerstemeier, Alai, Alerante, Alvin-cs, AnOddName, Ann O'nyme, Apyule, Archidamus, Arebenti, ArnoldReinhold, Ashawley, Asparagus, Astrix, Atoll, Audriusa, AzaToth, B k, BAxelrod, BD2412, Barak, Bbtommy, BenM, Bilboq, Bkaindl, Bob A, Bobblehead, Boulahbel, Brockert, CRGreathouse, CanisRufus, CatherineMunro, Cathy Linton, Cbdorsett, Cburnett, CesarB, Chealer, ColdFeet, Colmmack, Computer hoss, Connelly, Cquan, DSP-user, Dan Gardner, Darthnader37, David.Monniaux, Denelson83, Dispenser, Dissident, Doc Tropics, DocendoDiscimus, DonDiego, DopefishJustin, Dunkstr, Dwheeler, Easterangel, Edcolins, Edwulf, Erik Carson, Esnaj, Euractiv, Everyking, Fantasy, Femto, Ffransoo, Fgouget, Finlay McWalter, Frecklefoot, Fredrik, Frotz, Furrykef, GDallimore, GNUtoo, Gest, Glenn, Goplat, Gracefool, Gronky, Guaka, Guy Peters, Guyjohnston, H2g2bob, Hephaestos, Heron, Hstimson, J. M., JLaTondre, James Foster, Jeroen Hellingman, Jerome Baum, Jesse Viviano, Jheald, Jiang, Jimnieken, Jmchuff, JoeHenzi, John254, Jorge1000xl, Josce, Joy, Jrtayloriv, Julesd, Kallerdis, Karlhendrikse, Kensys, Koavf, Koweja, Kozuch, Kraftlos, Kuru, Legios, Lemmie, Lentower, LilHelpa, LimoWreck, Linton, Lmov, Lyml, Lysy, ManuelGR, Markvs, Masi76, Maximus Rex, Melaen, Mhwebbink, MikeWren, Minesweeper, Mojodaddy, Motherofinvention, Mozzerati, MrJones, Naddy, Naerhu, Nichalp, Nihonjoe, Nikai, NoSoftwarePatents, Nowa, Nowhither, NuclearWarfare, Ordew, Patentinfo, Paul, Pde, Pearle, Peco, Philgp, Pikiwedia, Pillefj, Poccil, Podmok, Positron, Quinwound, Quota, Radagast83, Rclaessen, Rdsmith4, RedWolf, Rich Farmbrough, Rjwilmsi, Rl, Rwwww, Saaska, Sam Hocevar, Sander123, Schneelocke, Scientus, Scohoust, Scott McNay, Sean s oreilly, Sgeo, Shlomital, Sikon, Slike2, Smokizzy, Speck-Made, Stephen C. Carlson, Stephenjudge, SteveSims, Steven jones, Stolsvik, Superm401, Swamp ig, Sweepspam, Swen, Taintain, Tannin, TeaDrinker, Tempshill, Thincat, Thingg, Thiseye, Thisiszintzo, Tillwe, Tim Ivorson, Timo Honkasalo, TomK32, Tomwsulcer, Torokun, TurboForce, Txwikinger, Unyoyega, Vanished user 03, VernoWhitney, Walter, Wayne Hardman, Wayward, Webmink, Wild Pegasus, Youssefsan, Zarboki, Zero0w, Zigger, Zundark, 304 anonymous edits Image Sources, Licenses and Contributors

Image:Scale of justice 2.svg Source: http://en.wikipedia.org/w/index.php?title=File:Scale_of_justice_2.svg License: Public Domain Contributors: User:DTR Image:Software patents2.JPG Source: http://en.wikipedia.org/w/index.php?title=File:Software_patents2.JPG License: GNU Free Documentation License Contributors: Original uploader was Nowa at en.wikipedia Image:UScomputerpatents.JPG Source: http://en.wikipedia.org/w/index.php?title=File:UScomputerpatents.JPG License: Public Domain Contributors: Original uploader was Nowa at en.wikipedia License

Creative Commons Attribution-Share Alike 3.0 Unported

http:/ / creativecommons. org/ licenses/ by-sa/ 3. 0/ Utility model 1 Utility model

Intellectual property law Primary rights Copyright • Authors' rights • Related rights • Moral rights • Patent • Utility model • Trademark • Geographical indication • Trade secret

Sui generis rights Database right • Indigenous intellectual property • Industrial design right • Mask work • Plant breeders' rights • Supplementary protection certificate

Related topics Criticism • Orphan works • Public domain • more

A utility model is an intellectual property right to protect inventions. This right is available in a number of national legislations, as described below. [1] It is very similar to the patent, but usually has a shorter term (often 6 to 15 years) and less stringent patentability requirements. The German and Austrian utility model is called the "Gebrauchsmuster", which influenced some other countries such as in Japan. In Indonesia the utility model is called a "Petty Patent".

Definition A utility model is a statutory monopoly granted for a limited time in exchange for an inventor providing sufficient teaching of his or her invention to permit a person of ordinary skill in the relevant art to perform the invention. The rights conferred by utility model laws are very similar to those granted by patent laws, but are more suited to what may be considered as "incremental inventions"[2] . Terms such as "petty patent", "innovation patent", "minor patent", and "small patent" may also be considered to fall within the definition of "utility model".[3] A "utility innovation" is available in Malaysia. [4]

Requirements for grant Most countries having utility model laws require that the invention be new. However, many patent or utility model offices do not conduct substantive examination and merely grant the utility model after checking that utility model applications comply with formalities. Some countries exclude particular subject matter from utility model protection. For example, methods, plants and animals are normally barred from utility model protection. In Germany a utility model is considered to be new if it does not form part of the state of the art. The state of the art comprises any knowledge made available to the public by means of a written description or by use within Germany before the date relevant for the priority of the application. Description or use within the six months preceding the date relevant for the priority of the application shall not be taken into consideration if it is based on the conception of the applicant or his predecessor in title. [5] In Spain, the novelty requirement for obtaining a utility model (Spanish: modelo de utilidad) is "relative", i.e. only public written disclosure of the invention in Spain is prejudicial against the novelty of the invention claimed in the utility model. This is in sharp contrast with Spanish patents for which absolute novelty is required. What constitutes a "disclosure of the invention in Spain" has been the subject of two recent decisions of the Spanish Supreme Court [6] . Utility model 2

Application Utility model applications may be prepared and filed at local patent offices in countries where utility model protection is available. The table below is a list of countries having utility model protection under various names as at March 2008.[7]

Country Type of Protection Maximum Term PCT route Conversion from Patent Application [8] available

[9] [10] utility model 10 years Yes Yes Albania

[11] Angola utility model no set term No No

[12] Argentina utility model 10 years No Yes

[13] ARIPO utility model 8 years Yes Yes

[14] Armenia utility model 10 years Yes Yes

[15] Aruba small patent 6 years Yes via Netherlands Yes

[16] Australia innovation patent 8 years Not unless by Yes division

[17] Austria utility model 10 years Yes Yes by division

[18] Azerbaijan utility model unknown Yes Yes

[19] Belarus utility model 8 years Yes unknown

[20] Belgium short patent 6 years No No

[21] Belize utility model 7 years Yes Yes

[22] Bolivia utility model 10 years No unknown

[23] Botswana utility model 7 years Yes unknown

[24] Brazil utility model 15 years Yes probably

[25] Bulgaria utility model 10 years Yes probably

[26] Chile utility model 10 years No unknown

[27] China utility model patent 10 years Yes unknown

[28] Colombia utility model 10 years Yes probably by division

[29] Costa Rica utility model 12 years Yes Yes

Czech Republic utility model 10 years Yes Yes by division

Denmark utility model 10 years Yes Yes by division

Ecuador utility model 10 years Yes Yes by division

Estonia utility model 8 years Yes Yes

Ethiopia utility model unknown unknown unknown

[30] Finland utility model 10 years Yes Yes

[31] France utility model 6 years No Yes

Georgia utility model 8 years Yes Yes Utility model 3

Germany utility model 10 years Yes Yes

Ghana utility model 7 years Yes Yes

Greece utility model 7 years No Yes

Guatemala utility model 10 years No Yes

Honduras utility model 15 years Yes unknown

Hungary utility model 10 years Yes Yes

Indonesia Petty Patent/Simple 5 years Yes Yes Patent

Ireland short term patent 10 years No Yes

Italy utility model 10 years No Yes

Japan utility model 10 - 15 years Yes Yes

Kazakhstan utility model 8 years Yes Yes

Kenya utility model 10 years (From date of Yes Yes registration)

Korea (south) utility patent 15 years Yes Yes

Kuwait utility model 7 years No unknown

Kyrgyzstan utility model unknown Yes unknown

Laos petty patent 7 years No unknown

Lesotho utility model 7 years Yes Yes

Macau utility model unknown No unknown

Malaysia utility innovation 15 years Yes No

Mexico utility model patent 5 years Yes Yes. Art. 49 of the Mexican Law for Industrial Property

Mexico utility model 10 years Yes unknown

Moldova utility model unknown Yes probably

Mozambique utility model unknown Yes probably

Netherlands short term patent (*) 6 years No unknown

Nicaragua utility model unknown Yes probably

OAPI utility model 8 years Yes probably not

Panama utility model 10 years No unknown

Peru utility model patent 5 years No Yes

[32] Philippines utility model 7 years Yes Yes

Poland utility model 10 years Yes Yes

Portugal utility model no set term Yes unknown

Russia utility model 8 years Yes Yes

Sierra Leone utility model unknown Yes probably

[33] Slovakia utility model 10 years Yes Yes

Slovenia short term patent 10 years Yes probably

South Africa functional design 10 years No No

Spain utility model 10 years Yes Yes Utility model 4

Taiwan utility model 10-12 years No Yes

Tajikistan utility model 9 years Yes probably

Tangier Zone utility model 10 years No unknown

Tonga utility model 7 years No No

Trinidad and utility certificate 10 years Yes unknown Tobago

Turkey utility model 10 years Yes Yes

Uganda utility certificate 7 years No Yes

Ukraine utility model 8 years Yes Yes

United Arab utility model 10 years Yes unknown Emirates

Uruguay utility model patent 10 years No Yes

Uzbekistan utility model 8 years Yes probably

Venezuela utility model 10 years No Yes

Vietnam utility model 6 years Yes Yes

(*) The Dutch short term patent is no longer granted since June 5th 2008[34] .

References

[1] WIPO web site, Where can Utility Models be Acquired? (http:/ / www. wipo. int/ sme/ en/ ip_business/ utility_models/ where. htm) [2] U. Suthersanen, Incremental Inventions in Europe: A Legal and Economic Appraisal of Second Tier Patents, in Journal of Business Law, 2001, 319 ff [3] Kelsey Martin Mott, The Concept of the Small Patent, in The International Business Executive, 5 February 2007, Volume 5, Issue 3 , pp 23 - 24

[4] Intellectual Property Corporation of Malaysia (MyIPO) - Patent Manual and Specification (http:/ / www. myipo. gov. my/ index.

php?option=com_content& task=view& id=12& Itemid=7) [5] Utility Model Law § 3 Abs. 1 [6] RJ 1996/7239 "Scott c. Sarrió y Sarrió Tisú" and RJ 2004/2740 "PEMSA c. Interflex"

[7] Bill's Patent Attorney Stuff (http:/ / www. billanderson. com. au/ pats_frame. htm)

[8] "Types of Protection under the PCT" (http:/ / www. wipo. int/ pct/ en/ texts/ pdf/ typesprotection. pdf) (PDF). . Retrieved 2008-02-12.

[9] "Ladas & Parry Newsletter, November 2004" (http:/ / www. ladas. com/ BULLETINS/ 1994/ 1194Bulletin/ Albania_NewIPLaw. html). . Retrieved 2008-02-16.

[10] "PCT Applicants Guide - Albania" (http:/ / www. wipo. int/ pct/ guide/ en/ gdvol2/ annexes/ al. pdf) (PDF). . Retrieved 2008-02-16. [11] Manual for the Handling of applications for patents, designs and trade marks throughout the world, Kluwer Law International, Update No. 104, January 2006. [12] Manual for the Handling of applications for patents, designs and trade marks throughout the world, Kluwer Law International, Update No. 113, September 2007.

[13] "ARIPO website" (http:/ / www. aripo. org/ index. php?lng=en). . Retrieved 2008-04-27.

[14] "WIPO Information on Armenia" (http:/ / www. wipo. int/ export/ sites/ www/ ipstats/ en/ resources/ pdf/ armenia. pdf) (PDF). . Retrieved 2008-04-27. [15] Manual for the Handling of applications for patents, designs and trade marks throughout the world, Kluwer Law International, Update No. 111, May 2007. [16] Manual for the Handling of applications for patents, designs and trade marks throughout the world, Kluwer Law International, Update No. 110, March 2007. [17] Manual for the Handling of applications for patents, designs and trade marks throughout the world, Kluwer Law International, Update No. 110, March 2007.

[18] "Coalition for Intellectual Property Rights - Information on Armenia" (http:/ / www. cipr. org/ legal_reference/ countries/ azerbaijan/

Azerb_Patent_ENG. pdf) (PDF). . Retrieved 2008-04-27. [19] Manual for the Handling of applications for patents, designs and trade marks throughout the world, Kluwer Law International, Update No. 108, November 2006. Utility model 5

[20] Manual for the Handling of applications for patents, designs and trade marks throughout the world, Kluwer Law International, Update No. 114, November 2007.

[21] "Belize Corporate & IP Services" (http:/ / belizecorporateip. com/ faqs-pt. shtml). . Retrieved 2008-02-14. [22] Manual for the Handling of applications for patents, designs and trade marks throughout the world, Kluwer Law International, Update No. 113, September 2007.

[23] "Ladas & Parry Newsletter, December 1997" (http:/ / www. ladas. com/ BULLETINS/ 1997/ 1297Bulletin/ Botswana_NewIPLaw. html). . Retrieved 2008-02-14.

[24] "Lei nº 9.279, de 14 de maio de 1996." (http:/ / www. planalto. gov. br/ ccivil_03/ Leis/ L9279. htm). . [25] Manual for the Handling of applications for patents, designs and trade marks throughout the world, Kluwer Law International, Update No. 104, January 2006. [26] Manual for the Handling of applications for patents, designs and trade marks throughout the world, Kluwer Law International, Update No. 111, May 2007. [27] Manual for the Handling of applications for patents, designs and trade marks throughout the world, Kluwer Law International, Update No. 101, June 2005. [28] Manual for the Handling of applications for patents, designs and trade marks throughout the world, Kluwer Law International, Update No. 90, November 2001.

[29] "WIPO Collection of laws for electronic access" (http:/ / www. wipo. int/ clea/ docs_new/ pdf/ es/ cr/ cr002es. pdf) (PDF). . Retrieved 2008-02-14.

[30] "Patentti- ja rekisterihallitus" (http:/ / www. prh. fi/ fi/ hyodyllisyysmallit. html). .

[31] "Comparison of Utility Model Laws by Nation" (http:/ / www. jpo. go. jp/ shiryou_e/ toushin_e/ shingikai_e/ pdf/ en_utility/ material3. pdf) (PDF). . Retrieved 2008-032-10.

[32] "Intellectual Property Code of the Philippines" (http:/ / www. congress. gov. ph/ download/ ra_10/ RA08293. pdf) (PDF). Congress of the Philippines. . Retrieved 2008-10-29.

[33] "Slovak Law on Utility Models, No. 478 of 1992" (http:/ / www. indprop. gov. sk/ pdf/ en/ pravo_92478. pdf) (PDF). . Retrieved 2008-02-16. [34] Website NL Octrooicentrum "Vanaf vandaag geen zesjarig nationaal octrooi meer ..." Article Sources and Contributors 6 Article Sources and Contributors

Utility model Source: http://en.wikipedia.org/w/index.php?oldid=400773504 Contributors: Arnout Steenhoek, Dsm, Earthlyreason, Edcolins, Guswen, Jorde30, Kbjoern, Khatru2, Lenticel, Pearcedh, Pocopen, Rjwilmsi, Skelta, Stansult, 35 anonymous edits License

Creative Commons Attribution-Share Alike 3.0 Unported

http:/ / creativecommons. org/ licenses/ by-sa/ 3. 0/