Archive | 2014, June | (4) posts

Important judgement on business method patent in the United States

On 20 June 2014, the U.S. Supreme Court handed down an important decision, Alice v. CLS Bank, clarifying the extent to which business methods can be patented. The earlier stages of the proceedings have been well covered in the media as this is one of relatively few times the Supreme Court has interpreted 35 U.S.C. § 101, with a potential to shape the future of computer-implemented inventions in general. Some of the claims at issue were actually not explicitly drawn to computer implementations or software, but the Court alleges it has considered the claims with an understanding that they “require generic computer implementation.”

One of Alice’s claims is found here, and the full judgement here. From the explosion of analyses by local practitioners, we were particularly impressed by 1, 2 and 3 and recommend them to you.

The judgement affirms the lower-instance judgment, which in turn is in keeping with current practice in the USPTO. In brief, the Court decided to revoke Alice’s patent because the method claims were allegedly directed to an “abstract idea” whose implementation was too generic to transform the idea into a patentable invention. The computer system and storage media claims were refused for the same reason; possibly the decision would have been different had the claims recited more implementation details. The language may be problematic to practitioners: just how abstract is an “abstract idea”? and is a programmable computer too “generic”? The challenging task of steering clear of “abstract ideas” and “generic implementation” is illustrated by the allowed and rejected claims from previous Supreme Court judgements: compare, in the same claim tableFlook and Diehr.

The present case highlights the limited usefulness of the concept “software patents.” While patents covering software typically cause little or no public debate when granted for inventions in conventional technology, software realizing business methods is more controversial. As shown by an overwhelming majority of the submitted amicus curiae briefs in Alice, the IT industry has a keen desire to dissociate itself from the “plague of abstract computer-related patents”, as the brief by Amazon, Google and others puts it. The brief cites Bill Gates in 1991 (in another court case), where he claims the software industry would have been at a “complete standstill” if the early inventors had applied for all the patents they could. The statement illustrates not only that the USPTO has become more stringent, but also reminds us of the much higher IP awareness in Mr Gates’ industry today, which has had to get used to – and benefit from – the existence of patents just like in other technical fields.

As European practitioners, we regularly ask American patent attorneys to prosecute our applications before the USPTO, making it essential for us to keep our drafting practices up-to-date, to be able to present the invention from the right angle and in all required detail. Unlike judgements like Bilski (2010), the Alice case represents no sudden change but will probably be received as a sign that the practice has stabilized. With its insistence on technical improvement, the Alice judgement in fact lands its conclusions rather close to the current European examination practice, despite its very different legal starting point.

The judgement should be reassuring also to Japanese applicants, whose applications are normally drafted to convince the JPO examiner that “information processing by software is concretely realized by using hardware resources” (JPO Guidelines, part VII), sometimes rephrased to mean that the implementation is “particularly suitable for a use purpose”. This intention should also limit abstraction and genericness.

Anders Hansson and Joacim Lydén, European Patent Attorneys

Patenting software in the US

On June 11, 2014 Awapatent hosted a seminar about software patenting in the US. The seminar was arranged by Danish-American Business Forum (DABF). US patent Attorney Eric S. Barr from Sughrue Mion PLLC was invited to give a talk about recent developments within this field. Eric gave a very informative and inspiring talk where he among other things provided valuable information about the two US Supreme Court Decisions: Limelight v. Akamai and Nautilus v. Biosig both of which have been decided within the last two weeks.

I provided a talk about patentability of software in Europe with a focus on the difference between EP and US practice. The seminar was concluded by a very interesting case presented by Peter Wilmar Christensen. Peter is GM for Europe and Co-founder of Greenwave systems. Peter talked about the value software patents provides for Greenwave systems and also shared the experiences he has obtained from in his earlier career. There were a lot of questions and a good atmosphere.

Some video presentations from the seminar have been made available here.

Lasse Henze, European Patent Attorney

Protecting the FIFA brands

With the 2014 FIFA World Cup coming up in Brazil times are busy for organizer The Fédération Internationale de Football Association, FIFA. FIFA continuously takes action against ambush marketers, advertising or promoting around the World Cup without authorization.

The preparations of the 2014 FIFA World Cup were initiated several years ago and an important part thereof has been the work with trademarks. FIFA has developed and protected an assortment of words, logotypes, titles, symbols and other trademarks, for example FIFA, WORLD CUP, COPA 2014 and BRAZIL 2014. FIFA recognizes the commercial rights to the FIFA World Cup as its greatest commercial asset and the fact that it is essential that they protect the integrity of the event’s brand for several reasons. The fact that FIFA would not be able to stage the event without the support of commercial affiliates is one of the main reasons for protecting an exclusive use of the trademarks.

In order not to risk losing its legal rights to the exclusive use of the trademarks FIFA therefore continuously work against any unauthorized use of its trademarks and had already by June 2013 taken action against 100 ambush marketers somehow trying to take advantage of the interest and profile of the event by creating a commercial association or seeking promotional exposure without the authorization of FIFA. Also, counterfeit products bearing FIFA’s official trademarks without the required license such as footballs, keychains and toys is a problem which FIFA needs to deal with.

FIFA works with brand protection in three steps. The first step is communication, meaning that FIFA in order to avoid accidental unauthorized use communicate the regulations through awareness campaigns. The next step and important element in the brand protection work is surveillance in order to identify trademark infringements. An example thereof is the enactment of Commercial Restriction Areas (CRAs) around the stadiums and other official sites. The CRA is an imaginary line wherein local laws provide additional legal protection against prohibited marketing activities without limiting any commercial activities not specifically targeting the FIFA event. Enforcement is the third step in the brand protection. When detecting an infringing situation FIFA’s brand protection team assesses the most effective way to bring the situation to an end, without having to resort to disproportionate enforcement actions. In more serious situations where the intention to take a free ride on the goodwill of the FIFA trademarks is clear, FIFA may need to engage in court proceedings to put the infringement to an end and to seek financial compensation. However, according to FIFA their approach to brand protection still focuses rather on education and guidance. The results thereof will be well visible this summer.

Hanna Hansson, Attorney at Law

Adopting a stricter view on ethics?

The everyday work of an IP attorney may seem to amount largely to pencil pushing, but it does in fact involve a surprisingly large number of decisions, where moral issues have to be considered. For instance, can I take on this new client without risking to step on existing clients’ toes?

Events of the last weeks testify that such issues affect everybody in the IP business, also those at the very top.

First, we heard that the renowned Judge Randall Rader from the US Court of Appeals for the Federal Circuit (CAFC) had left his post as head of the CAFC. According to his own words the reason was that he had “crossed lines established for the purpose of maintaining a judicial process whose integrity must remain beyond question”. It appears that Judge Rader’s communication with attorneys appearing before his court had been a bit too friendly.

A few days later it came out that the Chairman of the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) had taken the consequence of the decision in case R19/12. A series of tasks previously handled by the Chairman in his capacity as Vice-President of Directorate General 3 will be taken over by the President of the EPO and the Chairman will no longer be part of the President’s Management Committee.

The question at hand in R19/12 was whether the Chairman could reasonably be suspected of partiality due to his position on the Management Committee, where he could influence the work of the EPO divisions, whose decisions could later be appealed to the EBA. In a configuration without the Chairman the EBA decided that the suspicion of partiality was in fact legitimate.

Is it merely a coincidence that these stories turn up so soon after each other? Or is this a new wave of Puritanism sweeping over the IP community?

Vibeke Warberg Rohde, European Patent Attorney