Abstract
More than five centuries ago the first patent statute was passed by the Venetian senate. It already had most of the features of modern patent law, recognizing the public interest in innovation and granting exclusive right in exchange for a full disclosure. Some 350 years later the industrial revolution led to globalisation. The wish to protect intellectual property on a more international level evolved and supranational treaties were negotiated. Patent laws are still different in many countries, however, and inventors are sometimes at a loss to understand which basic requirements should be satisfied if an invention is to be granted a patent. This is particularly true for inventions implemented on a computer. While roughly a third of all applications (and granted patents) relate, in one way or another, to a computer, applications where the innovation mainly resides in software or in a business method are treated differently by the major patent offices. The procedures at the USPTO, JPO and EPO and, in particular, the differences in the treatment of applications centring on software are briefly explained. In later sections of this book, a wealth of examples will be presented. The methodology behind the treatment of these examples is explained.
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- 1.
The Strasbourg Agreement was negotiated in 1971 and entered into force in 1975.
- 2.
The US patents concerned were US6317592, US6272190, US6198783, US6067451, US5819172, US5751773, US5745532, US5631946, US5625670, US5438611 [31].
- 3.
Tukey is also credited in the “Annals of the History of Computers” as the person who, in 1946, coined the word “bit”, a contraction of “binary digit”, the term describing the 1s and 0s that are the basis of computer programs. Tukey suggested the shorter “bit” to computer experts at AT&T Bell Laboratories, where he was a researcher. “Bit” was easier on the tongue than the other possibilities they were considering, such as “binit” and “bigit”, so it stuck. Twelve years later, Tukey came up with the word “software” to describe the programs on which electronic calculators ran, first using it in a 1958 article he wrote for American Mathematical Monthly.
- 4.
Although State Street Bank paved the way, it only dealt with “a data processing system for managing financial services …”. The first case where indeed a method was examined by the Court of Appeal was CAFC 98-1338 AT&T vs. EXCEL [13].
- 5.
35 USC 101: “Whoever 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 therefore, subject to the conditions and requirements of this title”.
- 6.
“European patents shall be granted for any inventions in all fields of technology which are susceptible of industrial application, which are new and which involve an inventive step”.
- 7.
Which is not necessarily a document, see (iii)(a).
- 8.
Where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved (Cf. T641/00 COMVIK [22]).
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Closa, D., Gardiner, A., Giemsa, F., Machek, J. (2010). Introduction. In: Patent Law for Computer Scientists. Springer, Berlin, Heidelberg. https://doi.org/10.1007/978-3-642-05078-7_1
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