Software Patents Worldwide General Editor Gregory A. Stobbs Published by: Kluwer Law International PO Box 316 2400 AH Alphen aan den Rijn The Netherlands Website: www.kluwerlaw.com Sold and distributed in North, Central and South America by: Aspen Publishers, Inc. 7201 Mckinney Circle Frederick, MD 21704 United States of America E-mail: [email protected] Sold and distributed in all other countries by: Turpin Distribution Services Stratton Business Park Pegasus Drive Biggleswade Bedfordshire SG18 8TQ United Kingdom E-mail: [email protected] Printed on acid-free paper. DISCLAIMER: The material in this volume is in the nature of general comment only. It is not offered as advice on any particular matter and should not be taken as such. The editor and the contributing authors expressly disclaim all liability to any person with regard to anything done or omitted to be done, and with respect to the consequences of anything done or omitted to be done wholly or partly in reliance upon the whole or any part of the contents of this volume. No reader should act or refrain from acting on the basis of any matter contained in this volume without first obtaining professional advice regarding the particular facts and circumstances at issue.Any and all opinions expressed herein are those of the particular author and are not necessarily those of the editor or publisher of this volume. ISBN 978-90-411-2502-6 © 2013, Kluwer Law International BV,The Netherlands First Published in 2008. This publication is protected by international copyright law. All rights reserved. No part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without the prior written permission of the publisher. Permission to use this content must be obtained from the copyright owner. Please apply to Permissions Department, Wolters Kluwer Legal, 76 Ninth Avenue, 7th Floor, NewYork,NY 10011-5201, USA. E-mail: [email protected] Software Patents Worldwide CONTENTS – vii COUNTRY REPORTS AUSTRIA Rainer Schultes, Arnulf Weinzinger and Georg Heger iii I. Software Patents: An Introduction 1 A. Frequently Asked Questions About Software Patents 1 1. Is Software a Patentable Subject-matter in Austria? 1 2. What Is a Technical Character and a Technical Contribution? 1 3. Are Claims to a Computer Program Acceptable? 2 4. Are Claims for a Data Carrier Necessary? 2 5. Is a Software Patent Enforceable in Austria? 2 6. How is a Software Patent Examined by the APO? 2 7. What Is the Difference between a European Patent Covering Austria and a National Austrian Patent? 3 8. Should I File a Software Patent Application with the EPO or Rather Nationally with the APO? 3 9. Is the Program Logic Patentable? 4 10. What Is the Difference between a Patent and a Utility Model? 4 B. Introduction to the Legal System 5 1. Court System 5 2. Patent System 7 a. Legal Department and Technical Department 7 b. The Appeal Department 8 c. The Nullity Department 9 d. The Supreme Patent and Trademark Senate 9 e. Inspection of Files 9 C. Overview of the Software Industry in Austria 10 II. Legal Basis According to the Current Patent Act 10 A. Patentable (Statutory) Subject-matter 10 B. Novelty and Inventive Step 13 III. How the Patent Office Interprets the Patent Act 16 A. Patent Examination Guidelines 17 B. Specific Guidelines for Software Patents 19 C. Utility Model 22 IV. Historical Development 23 A. Brief History of National Patent Law 23 B. Prior Acts and Treaties that Influence Current Patent Law 23 C. Noteworthy Case Law 24 V. Noteworthy Fields of Technology and the Scope of Protection Afforded 25 VI. Practical Recommendations 27 A. Direct Control of ‘Natural Forces’ 27 B. The Processing of Technical Data 28 C. The Internal Functioning of the Computer 28 VII. Infringement and Enforcement 29 A. Statutory Basis for Software Patent and Enforcement 29 B. Jurisdictional Issues Local Jurisdiction 33 C. How Patent Litigation Is Conducted 35 1. Court Proceedings 35 a. Right to Sue 35 b. Capacity to Be Made a Defendant 35 c. Provisional Proceedings 36 i. Application for Provisional Injunction 36 ii. Further Briefs 36 SPW – Suppl. 15 (December 2013) viii – CONTENTS Software Patents Worldwide iii. Decision 38 iv. Recourses 38 d. Proceedings in the Main Cause 39 i. Complaint 39 ii. Preparatory Brief 39 iii. Hearings 40 iv. Judgment 40 v. Appeals 40 e. Discovery of Evidence 41 f. Enforcement 41 g. Criminal Proceedings 42 h. Anti-Counterfeiting 42 i. Excursus 43 (a) Invalidation Procedure: 43 (b) Declaratory Proceedings: 44 D. How Damages Are Assessed and Enforced 45 E. How Injunctions Are Awarded and Enforced 45 F. Noteworthy Case Law: Applicable to Enforcement 46 VIII. Future Directions 46 A. Where Are we Today? 46 B. A Forecast for the Future 46 CANADA Steven Garland & Colin Ingram iii I. Introduction 1 A. Frequently Asked Questions about Software Patents in Canada 1 1. Is Software Patentable in Canada? 1 2. Are Business Methods Patentable in Canada 1 3. How Are Software Patents Enforced in Canada? 1 4. What Are the Main Differences between Canadian and US Patent Litigation? 2 5. How Much Time Is Required to Enforce Software Patents in Canada? 2 B. Introduction to the Canadian Legal System 3 1. Introduction to the Canadian Court System 3 a. Canadian Courts Having Jurisdiction to Hear Patent Infringement Actions 3 b. Federal Court and Federal Court of Appeal 3 c. Provincial Superior Courts 5 2. Introduction to the Canadian Patent System 5 a. Patent Priority and Filing 5 b. Examination 6 c. Examination Service Standards 7 d. Expedited Examination 7 e. Allowance 8 C. Overview of the Software Industry in Canada 9 II. Legal Basis According to Current Patent Act 10 A. Patentable (Statutory) Subject Matter 10 1. The Definition of ‘Invention’ 10 2. Matter Excluded from Patent Protection 12 B. Utility 13 C. Novelty and Non-obviousness (Inventive Character) 16 1. Novelty 16 a. Patent Applications Filed Before 1 October 1989 16 b. Patent Applications Filed on or After 1 October 1989 17 c. Legal Test for Anticipation 17 2. Non-obviousness (Inventive Step) 19 D. Sufficiency of the Specification 21 III. How the Patent Office Interprets the Patent Act 23 SPW – Suppl. 15 (December 2013) Software Patents Worldwide CONTENTS – ix A. Background 23 B. Patentable Subject Matter 24 1. Art/Process 24 2. Machine 25 3. Manufacture 26 C. Utility 26 D. Sufficiency 27 E. Novelty and Non-obviousness (Inventive Step) 28 F. Claims 29 G. Special Topics 29 1. Graphical User Interfaces (GUIs) 29 2. Data Structures 30 3. Databases 30 4. Computer-Aided Design Programs 30 5. Signals 31 6. Business Methods 31 H. The 8 March 2013 Practice Guidelines 33 IV. Historical Development 36 A. A Brief History of Canadian Patent Law 36 B. Noteworthy Case Law: Having Specific Applicability to Computer Programs, Software, Business Methods 37 1. Lawson v. Commissioner of Patents 37 2. Schlumberger v. Commissioner of Patents 39 3. Shell Oil Co. of Canada v. Canada (Commissioner of Patents) 41 4. Progressive Games, Inc. v. Canada (Commissioner of Patents) 43 5. Amazon.com, Inc. v. Canada (Attorney General) 44 a. Canadian Patent Application No. 2,246,933 45 b. Decision of the Patent Appeal Board (Commissioner of Patents) 46 i. Obviousness 47 ii. Subject Matter 47 c. Decision of the Federal Court (Justice Phelan) 49 i. Adoption of International Principles 49 ii. Form and Substance Approach 50 iii. Definition of ‘Art’ 51 iv. Business Method Exclusion 52 v. ‘Technological’ Requirement 53 vi. Application to the ’933 Application 53 d. Decision of the Federal Court of Appeal (Justice Sharlow) 55 i. Analytical Framework (Construction) 55 ii. The Proper Test for Patentable ‘Art’ 56 iii. The Technological Exclusion 56 iv. Business Method Exclusion 57 v. Requirement for ‘Change in Character or Condition of a Physical Object’ 57 vi. Disposition 57 vii. Caveats and Handling of the Schlumberger Decision 58 viii. Post-Script: Issuance of the Amazon.com’s Patent 62 V. Fields of Technology (Fot) 62 VI. Infringement and Enforcement 62 A. Statutory Basis for Software Patent Enforcement 62 1. Infringement 62 2. Director and Officer Liability 65 3. Scope of Protection: Construing the Patent Claims 66 B. How Software Patent Litigation is Conducted 67 1. Parties 68 a. Plaintiffs 68 b. Defendants 68 2. Pleadings 69 a. The Statement of Claim 69 SPW – Suppl. 15 (December 2013) x – CONTENTS Software Patents Worldwide b. The Defence (and Counterclaim) and Subsequent Pleadings 69 c. Particulars/Motions to Strike 70 3. Interlocutory Steps 70 a. Interim/Interlocutory Injunctions 70 i. Serious Issue 71 ii. Irreparable Harm 71 iii. Balance of Convenience 72 b. Mareva Injunctions 72 4. Scheduling and Case Management 72 5. Settlement 73 6. Severance/Bifurcation 74 7. Summary Judgment/Trial 74 8. Protective Orders 76 9. No Markman Hearings 76 10. Discovery 76 a. Documentary Discovery 77 b. Oral Discovery 77 11. Pre-Trial 79 12. Expert Reports 80 13. Trial 82 a. Time to Trial 82 b. Conduct of Trial 82 14. Appeals 83 C. How Damages Are Assessed and Enforced: How Injunctions Are Awarded and Enforced 83 1. Remedies for Patent Infringement 83 VII. Future Directions 85 CHINA Jinchen Song, Shaohui Du and Nancy L. Fix iii I. Software Patents: an Introduction 1 A. Frequently Asked Questions About Software Patents 1 1. What Inventions Are Patentable in China? 1 2. Are Software Patents Eligible for Protection in China? 1 3. Are Business Methods Patentable in China? 1 4. Are there Any Guidelines for Patenting Software in China? 1 5.