Legal Protection of Digital Property
PhD(Computer Science) LLM(Intellectual Property) Department of Computer Science
• patentbelongstotheinventor:s.9E
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• if2inventors,thencollectivelyownthe patent and each is entitled to an equal share as “tenants in common” in the patent: s.54(1)
• eachco-ownermay
– license, assign or mortgage his share only with the consent of all others: s.54(3)
– otherwise exploit the patent for his own benefit without the consent of others: s.54(2)
NB. Co-owners’ rights can be varied by contract between themselves.
Employee invention: s.57
• employeeinventionbelongstothe employer in any of the following situations:
– within the employee’s normal or specifically assigned duties AND an invention might reasonably be expected from carrying out the duties
– within the employee’s duties and the employee has a special obligation to further the interests of the employer’s undertaking because of the nature of his duties and his particular responsibilities
NB. Slightly different from the position under copyright law.
E1: X, a technician in ChipTech, a chip manufacturing company, came up with an idea for a new chip while trouble- shooting a faulty chip. He has applied for a patent for the new chip. If the patent is granted, who will be the owner?
E2: Similar to E1. But X is the chief engineer of ChipTech.
Patentable Invention: s.9A
• 4conditions:
– susceptible of industrial application
– new (“novel” or “not anticipated”)
– involves an inventive step (“not obvious”)
– not excluded under ss.9A(2)-(6)
NB. Novelty and inventiveness assessed against “state of the art”.
Susceptible of Industrial Application: s.9D
• canbeusedinanykindofindustry, including agriculture ie. invention must have a useful or practical purpose
NB. Certain matters deemed not susceptible of industrial application eg. medical treatment of human or animal body: s.9A(4).
Novelty: s.9B
• “new”iftheinventiondoesnotformpart of the “state of the art”
• “stateoftheart”comprises
– everything made available to the public (whether in HK or elsewhere) by written or oral description, use, or any other way before the date of filing
NB. Inventor should not disclose the invention before filing for patent!
NB. Assessing novelty requires expert evidence. Same for assessing inventiveness (see below).
• toallowanapplicanttofileapplications in different countries: Paris Convention for the Protection of Industrial Property, Art 4
– patent applications by the same applicant for the same invention in different member countries within 12 months from the date of filing the 1st application deemed to be filed at the same date as the 1st application (“date of priority”)
Q: Why is this necessary?
Inventiveness: s.9C
• “inventive”ifhavingregardtothestateof the art, the invention is “not obvious to a person skilled in the art” (ie. someone who knows the state of the art)
• obviousinventionsinthepast
– mere collocation of known devices » Williams v Nye (1890) 7 RPC 62
– analogous use
» Thermos v Isola (1910) 27 RPC 388
– mere verification of previous predictions
» Genentech v Wellcome Foundation [1989] RPC 147
NB. If an invention is known in the state of the art, a slightly different invention may be novel, but may fail for being obvious (ie. not inventive).
Excluded Subject-Matter
• s.9A(2):notregardedas”inventions”:
– discovery, scientific theory or mathematical method
– aesthetic creation
– scheme, rule or method for performing a mental act, playing a game or doing business, or a computer program
– presentation of information
• BUT exclusion applies “only to the extent to which a patent or patent application relates to such subject- matter or activities as such”
NB. Similar provisions in UK and European Patent Convention.
NB. PRC does not have a similar provision BUT excludes computer programs on another ground (see later).
• truemeaningof”assuch”noteasyto ascertain
• UK’sandEPO’sinterpretationof”as such” has changed over the years!
NB. Exclusions under ss.9A(4)-(6) not relevant to computer programs.
UK’s Early Interpretation of “As Such”
• a computer program by itself (ie “as such”) is not patentable.
• What about a computer program stored in a ROM? cf. Gale’s Application [1991] RPC 305 (CA).
Q: What about a program loaded into a known computer ie. known computer + new program?
NB. UK’s early position on software patent was very different from the US. US Patents Act does not exclude computer programs from patentability
– US Patents Act, s.101: “Whosoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, …”
Subsequent development in UK (influenced by EPO)
• computer program can be patented if the program makes a “technical contribution” to the state of the art ie.
– solves a technical problem;
– uses technical means; AND
– produces technical effect which is observable/measurable eg. reduced energy consumption, improved product quality
Cf. [1989] RPC 561 (CA)
“Technical Effect”
• thenormalinteractionbetweena program and the hardware when the program is run cannot constitute the requisite technical effect
• theremustbefurthereffectsderiving from running the program which have a technical character or which solve a technical problem
• Cf.IBM’sApplication[1999]RPC861 (EPO TBA) (*RR)
• effectofaprogramcanbe
– external eg. program-controlled manufacturing process, OR
– internal eg. program-controlled memory management thereby improving the performance of the computer
NB. Computer program can be claimed on its own! Opened the door for patenting software despite the exclusion.
• BUT the effect of the invention must not itself be excluded by the law eg.
– if net effect is business method, excluded: [1989] RPC 561 (CA) (a computerized trading system in stocks)
– if net effect is performing mental act, excluded: Wang’s Application [1991] RPC 463 (a system enabling an expert to store his knowledge in a hierarchical form so that expert advice could be offered)
E1: A new operating system that features a novel method of data buffering which increases the speed of file transfer on the Internet by 30%. Excluded from patentability?
E2: A ROM containing a computer program which implements a new method of solving differential equations.
PRC’s Position
• computerprogramsbythemselvesare excluded as “rules and methods for mental activities” which are not patentable: PRC Patent Law, Art 25(2)
• BUTifaprogramiscombinedwith hardware to form an “integrated technical solution” that solves a technical problem and produces technical effect, the combination is patentable
Recommended Reading
• IBM’s Application [1999] RPC 861 (EPO TBA)
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