Archive | 2012, December | (4) posts

Patenting in the cloud

In the field of distributed computing, user devices with limited computing power may be connected to a remote computing system where the main purpose of the user device is to receive commands from the user and to display processed data provided by the remote computing system. The main computational processing takes place at the remote computing system, typically formed by a “cloud” of network-connected computer resources. As the computational processing is shifted from the user device to the remote computing system, it is possible to provide the user with computing services that are typically not available in a stand-alone user device due to factors such as cost, computational power and licensing issues. This provides an opportunity to completely rethink how and where to place your company’s computing resources. It also allows you to decide whether you should upgrade your internal servers or outsource the computational power and storage to an external provider.

Accordingly, a new service-based business model is made available, which however introduces problems in regards to how to handle the intellectual property of the software providing the service. The main concern typically relates to the possibility of geographically positioning the servers in another country than in which the user is active. Geographical distribution of for example patented software, in different countries and jurisdictions put an undesirable spin on the enforceability of patent rights. It is easy to see how this could potentially allow a wilful infringer to position servers in a country or jurisdiction that provides good bandwidth and accessibility, but where no patent rights are enforceable.

However, based on fairly recent case law (e.g. Football Dataco & others v Sportradar GmbH & another (Case C-173/11) as well as NTP, Inc. v. Research-in-Motion, Ltd. (RIM), 418 F.3d 1282, 75 U.S.P.Q.2d 1763 (Fed. Cir. 2005)), it has been made clear that the courts generally try to look to where the beneficial use of the invention is obtained. This provides at least some relief in view of the above identified geographical disparity between servers running patented software and the possibility of patent enforcement.

This is however only half of the truth. The fact is that the courts (i.e. in relation to the RIM case) prefer to look at patent infringement from a “system” perspective, i.e. where the beneficial use of a system may be obtained even though servers are placed in one country and the users in another. It is a different story with method claims where it for example has been determined that each step of the process must be performed within the same country (i.e. the USA) in order to be seen as infringing.

Based on the above, care must thus be taken in crafting your intellectual property strategy when deciding to protect, for example, new computational and/or social media related software-based methods having the possibility to be executed within the cloud, where geographical disparity between user devices and the computing system is apparent. Obviously, it is of great importance to conduct a general review of the possibility of including patent claims from all different perspectives (providing they are considered patentable). This means including both device and method claims drafted from the perspective of the different computing nodes, the system including both the computing node(s) and the user device, as well as from the perspective of the user/user device.

In addition, the choice of where to file patent applications may differ slightly from the normal filing strategy (where filing a patent application in the USA is typically the first priority for software related inventions). Accordingly, it may be a good idea to also consider filing patent applications in countries where it may be suitable to place computer servers.  An example of such a country is Sweden, where for example Facebook at present builds a 28 000 m2 server farm, their first outside of the USA. The reason for placing the server farm in Sweden is in this case due to the high reliability in regards to electricity and network connectivity.

To summarize, achieving a desired level of patent protection for cloud-based inventions is more complicated than for a physical object where the provision (manufacture and/or sale) of the object as well as the use generally take place in a single jurisdiction at any given time. The same, of course, applies where all steps of a patented method are performed by a single user in a single location. It is therefore essential to review your intellectual property strategy taking into account possibilities with regard to claim construction as well as the choice of countries in which to file patent applications.

Magnus Nilsson, European Patent Attorney

Awapatent attended SIPPS 2012 in Shanghai

A couple of weeks ago we participated in the Second Session of Shanghai Intellectual Property Practice Summit. The summit aimed at providing Chinese companies input on how to protect and utilize their IP in the best possible way outside China. It was supported by Shanghai Pudong Intellectual Property Bureau and Shanghai Pudong Science & Technology Association, hosted by Shanghai Pudong Intellectual Property Protection Association and organized by Shanghai Shenxin Law Firm.

There were several very interesting presentations covering different juridistictions all over the world. Our contribution was made by Maria Stenbäck who gave a presentation on European patent prosecution, including the Unitary patent and the Unified patent court .

The conference confirmed our earlier experiences that there is a huge interest in IP matters in China and that all people involved – from companies, universities and the government – are very interested in learning more about all advantages IP protection can bring and how they can use them to their benefit. The Chinese patent law has existed in less than 30 years, but in these quite few years China has come a very long way in providing possibilities to protect intellectual property and to defend intellectual property rights, and further progress is being made at an impressive speed. It is also very fascinating to see how important promotion of inventions are regarded from different parts of the society – from the “Beijing spirit” characterized by the four words patriotism, innovation, inclusiveness and virtue, which can be found around the capital, to the current five year plan.

We are looking forward to our next visit to this interesting region, to continue following the developments in this area.

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Does Santa Deliver?

He has his own style and he sticks to it.

The potbellied, glistening, jolly man with the white beard in his red robe with white fur trimmings is the universally recognized symbol of the festive season. 

But it is commercialization in its purest form. In 1931 the Coca-Cola Company wanted to boost sales over winter, then a season where sales of soft drinks were weak.

The original Saint Nicholas was a Byzantine Bishop in Myra in today’s Turkey. He gained a reputation for secret gift-giving, such as putting a coin in the shoes of the needy. After his death he was made a saint and he is the patron saint of merchants and sailors. Therefore, a sea faring nation like Denmark typically has lots of churches dedicated to him.

Through the ages Saint Nicholas, Nikolaus etc. has been depicted wearing a bishop’s cloak and a mitre. And a halo. He is a saint after all. His name day is 6 December (19 December in the Julian calendar) and as many things concerning religion it seamlessly fused with Christmas. He was eventually referred to as Father Christmas, Jultomten, Julenissen, Babbo natale, Père Noël, der Weihnachtsmann, Sinterklaas – which in North America has become Santa Claus. 

For Coca-Cola winter was a period with low sales of soft drinks. In 1931 they decided to launch an advertising campaign in order to change this. This campaign took to the hearts of consumers and it lasted of over 30 years – thoroughly cementing our perception of what Santa Claus/Father Christmas looks like. 

So when people moan that Christmas has become more and more commercial they are absolutely right. In the shape we normally think of Santa Claus it is Coca-Cola’s doing. But we should perhaps bear in mind that this is a result of the evolving of a historical figure and lots of myths and local customs.

…and finally: did you know that Santa too needs qualified IP-advise? Through many years Awapatent has managed IP-matters for the Santa Claus of Greenland Foundation which makes sure that the thousands of children who annually send their wishes to Santa also get a reply … from Santa. We are not, though, responsible for the presents.

Thorbjørn Swanstrøm, Attorney at Law

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Further theoretical training

An intense first practice period of the trainee program has ended, and what seems to be an even more intense second period of theoretical training has started. Only the first week so far and already we have covered new topics like for example presentations of the EPO and new aspects of Swedish patent law and also continued with further studies of topics recognized from out first theory period, like IP-language and application drafting. The first week has also included a client visit.

After five weeks of practice, making our first attempts to apply what we have learned so far, with the support and guidance of our supervisors, I think we are all eager to once again work on our theoretical knowledge. This time around, compared to our first theory period which for most of us was our first encounter with the world of IP-work, I think the future practical applications of the training are a bit clearer to all of us. This brings new perspectives to the classroom training and also makes some of the topics treated somewhat more approachable! And besides the challenging IP-tuition, after five weeks at our respective offices of Awapatent during the practice period, it is nice to get back together and gain an insight into everyone’s different experiences so far.

Lovisa Rogne, Associate