Patents Flashcards Preview

BS3924: Intellectual Properties and Information Rights A 22/23 (S2) > Patents > Flashcards

Flashcards in Patents Deck (37)
Loading flashcards...
1
Q

what is a patent?

A

Is an exclusive right granted for an invention. Generally speaking, a patent provides the patent owner with the right to decide how - or whether - the invention can be used by others. In exchange for this right, the patent owner makes technical information about the invention publicly available in the published patent document.

  • A patent is a time limited right granted by a
    government to a person in exchange for an
    enabling disclosure of an invention.
  • A balance between two competing goals- giving
    adequate economic incentives to pioneering
    inventors to invent while making sure that the
    improvers that follow, and the public as a whole,
    could make effective use of the inventions.

or

A legal title which grants the holder the
exclusive right to prevent others from
taking advantage of her patent without her
authorization.

2
Q

how long does a patent last?

A
  • For a limited time (up to 20 years).
  • US: 20 Years
  • EU: 20 Years
  • UK: 5 Years (up to 20 if renewed annually from
    the 5th year)
3
Q

What right does a patent grant to its owner? why would someone get a patent?

A
  • THE RIGHT TO EXCLUDE third parties from making, using or selling the infringing product.
  • A patent is sometimes considered as a contract
    between the applicant and society.
  • Applicants and patent owners are interested in
    benefiting - personally - from their inventions.
  • They have the right to prevent others from making,
    using, offering for sale, selling or importing a product
    that infringes their patent, for a limited amount of
    time and in the country for which the patent has been
    granted.
  • The exception to this is used for non-commercial
    purposes, for example, private use or academic
    research
4
Q

what is the underlying philosophy around patents?

A
  • Society is interested in:
  • encouraging innovation so that better products can be made and better production methods can be used for the benefit of all,
  • protecting new innovative companies so that they can compete with large established companies, in order to maintain a competitive economy,
  • learning the details of new inventions so that other engineers and scientists can further improve them, and
  • promoting technology transfer, for example from universities to industry.
  • In return for this protection, the applicant has to
    reveal his invention to the public, so others can
    build on it. As a rule, patent offices publish
    applications after 18 months. At this stage they
    become visible to everyone.
  • This “social contract“ is institutionalised in the
    form of patent law.
  • Did you know that Patents are granted in nearly
    every country in the world?
5
Q

what is the relevant legislation for patents?

A

The main legislation is Patent Act 1977.

Other relevant legislation include
Patent Act 2004
Patent Rules 2007
Intellectual Property Act 2014
1994 Agreement on Trade-related Aspects of IP(TRIPS)
Patent Cooperation Treaty 1970 (PCT)
Paris Convention 1883

6
Q

What is patentable?

A
  • Process – the steps involved in the manufacture of
    an article—for example a specific medicine.
  • Machine –an apparatus or component.
  • Composition of Matter – chemicals, materials.
  • Improvements – on any of the categories above
  • According to the European Patent Convention, or EPC,
    “European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.”
  • “New to the world” means that there should have been no previous public disclosure of the invention before the date of filing.
  • “Inventive step” is quite difficult to assess. To ascertain whether an invention involves an inventive step, the European Patent Office compares it with what would have been obvious to an imaginary person skilled in the art at the time of filing.

industrial application

7
Q

When is an invention “new”?

A
  • The invention must be new at the date of filing of the
    patent application.
  • “New” means that the invention does not form part of
    the state of the art.
  • The state of the art comprises everything made
    available to the public by means of a written or oral
    description, by use, or in any other way, before the date
    of filing of the European patent application.
  • It is vital that you keep your invention confidential until
    you have filed your application.
8
Q

what is the Criteria for Patentability?

A

Novel – not disclosed in a single prior art reference.
* Useful – in a commercial sense.
* Non-obvious - not obvious to a person of ordinary skill
in the art.
* Prior art is used to determine novelty and obviousness
of an invention.

9
Q

What conditions must be met to obtain patent protection?

A

There are numerous conditions that must be met to obtain a patent and it is not possible tocompile an exhaustive, universally applicable list. However, some of the key conditions include
the following:
* The invention must show an element of novelty; that is, some new characteristic which
is not known in the body of existing knowledge in its technical field. This body of
existing knowledge is called “prior art”.
* The invention must involve an “inventive step” or “non-obvious”, which means that it
could not be obviously deduced by a person having ordinary skill in the relevant
technical field.
* The invention must be capable of industrial application, meaning that it must be
capable of being used for an industrial or business purpose beyond a mere theoretical
phenomenon, or be useful.
* Its subject matter must be accepted as “patentable” under law. In many countries,
scientific theories, aesthetic creations, mathematical methods, plant or animal
varieties, discoveries of natural substances, commercial methods, methods for medical
treatment (as opposed to medical products) or computer programs are generally not
patentable.
* The invention must be disclosed in an application in a manner sufficiently clear and
complete to enable it to be replicated by a person with an ordinary level of skill in the
relevant technical field.

  • Novel – not disclosed in a single prior art reference.
  • Useful – in a commercial sense.
  • Non-obvious - not obvious to a person of ordinary skill
    in the art.
  • Prior art is used to determine novelty and obviousness
    of an invention.
10
Q

Explain The Patents Act 1977 Section 1 (2) and (3) exclusions from patentability

A

A discovery, scientific method, or a
mathematical formula

Aesthetic creations (music, art etc.)

Presentation of information

Exclusions on grounds of public policy or
morality

A scheme, a rule, a game, or a program for
a computer

11
Q

Explain the patent system

A
  • The patent system encourages technological innovation by
    rewarding intellectual creativity. In providing patent owners
    with protection for their inventions, patents offer them
    recognition for their creativity and the possibility of obtaining
    financial reward if they commercialise or exploit their
    inventions.
  • The patent system can also promote competition and
    investment in developing new or improved products or
    processes by encouraging research and development.
    Investors are more likely to provide financial backing if there
    is the potential for a return on their investment from
    inventions that can be patented.
  • Because the information disclosed in patents is
    published, the patent system encourages the
    dissemination of information that may be of benefit
    to society.
  • It can promote technology transfer by way of the
    publicly available information in patent databases.
    Thanks to these databases, anyone can find
    patented technologies that they may want to
    access and use themselves.
12
Q

Is a patent a negative or positive right?

A
  • Patent is a negative right, not a positive one!
  • For example, let us imagine that you have invented the first-
    ever electric kettle to have a ceramic heating element as its
    base-plate. This kettle has advantages over kettles which
    have a metal heating element upon which lime scale forms.
    Such a kettle might be novel and inventive, and could get
    you a patent, which we will call patent B.
  • However, your patent does not grant you the right to use
    your invention, because it falls within the scope of an earlier
    patent for all electric kettles, which we will call patent A. For
    you to make, use and sell your invention you need a
    licence from the owner of the earlier, broader patent, patent
    A.

However…

  • But they in turn would need a licence from you to
    make kettles with ceramic heating elements.
  • This is where you could enter into a cross-licence
    agreement. Indeed, this is where the vast majority of
    industrial collaborations start.
  • Patents owned by others may overlap or encompass
    your own patent. In this case, you need to obtain
    the right to use other people’s inventions – for
    example by way of a licence – before you can start
    commercialising your own patented invention, and
    vice versa.
13
Q

What is the procedure for getting a patent?

A

1
FILE APPLICATION
2
PRELIMINARY EXAMINATION
3
REPORT ISSUED BY PATENT EXAMINER
4
EARLY PUBLICATION
5
SUBSTANTIVE EXAMINATION
6
GRANT AND PUBLICATION

14
Q

What does a patent application form include?

A

Application number
Date of filling
Date of publication
Technical class
Description
Applicant
Abstract
Inventor
Claims

15
Q

What conditions must be met to obtain patent protection?

A

There are numerous conditions that must be met to obtain a patent and it is not possible to compile an exhaustive, universally applicable list. However, some of the key conditions include
the following:
* The invention must show an element of novelty; that is, some new characteristic which
is not known in the body of existing knowledge in its technical field. This body of
existing knowledge is called “prior art”.
* The invention must involve an “inventive step” or “non-obvious”, which means that it
could not be obviously deduced by a person having ordinary skill in the relevant
technical field.
* The invention must be capable of industrial application, meaning that it must be
capable of being used for an industrial or business purpose beyond a mere theoretical
phenomenon, or be useful.
* Its subject matter must be accepted as “patentable” under law. In many countries,
scientific theories, aesthetic creations, mathematical methods, plant or animal
varieties, discoveries of natural substances, commercial methods, methods for medical
treatment (as opposed to medical products) or computer programs are generally not
patentable.
* The invention must be disclosed in an application in a manner sufficiently clear and
complete to enable it to be replicated by a person with an ordinary level of skill in the
relevant technical field.

  • Novel – not disclosed in a single prior art reference.
  • Useful – in a commercial sense.
  • Non-obvious - not obvious to a person of ordinary skill
    in the art.
  • Prior art is used to determine novelty and obviousness
    of an invention.
16
Q

Who grants patents?

A

A patent is granted by a national patent office or by a regional office that carries out the task for
several countries. Currently, the following regional patent offices are in operation:
* African Intellectual Property Organization (OAPI)
* African Regional Intellectual Property Organization (ARIPO)
* Eurasian Patent Organization (EAPO)
* European Patent Office (EPO)
* Patent Office of the Cooperation Council for the Arab States of the Gulf (GCC Patent
Office)
* Intellectual Property Office (IPO)
Under such regional systems, an applicant requests protection for an invention in one or more
member states of the regional organization in question. The regional office accepts these patent
applications, which have the same effect as national applications, or grants patents, if all the
criteria for the grant of such a regional patent are met.
There is currently, no universal, international system for the grant of patents.

17
Q

Do I need a patent attorney/agent to prepare and file a patent application?

A

In general, applicants can prepare their patent applications and file them without assistance from
a patent attorney. However, given the complexity of patent documents and the legal skills
required, such as claim drafting, it is highly advisable to seek legal assistance from a patent
attorney/agent when drafting a patent application.
Furthermore, the legislation of many countries requires that an applicant, whose ordinary
residence or principal place of business is outside the country, be represented by an attorney or
agent qualified in the country (which usually means an agent or attorney who resides and
practices in that country). Information on the qualified attorneys and agents can be obtained
directly from national and regional IP offices.

18
Q

How much does it cost to patent an invention?

A

The costs vary considerably from country to country (and even within a country). As the official fees vary widely from country to country, please contact the relevant national or regional patent office which will be able to give you details on the fee structure. Consult our list of national and regional intellectual property offices. The cost of patenting an invention depends on factors such as the nature of the invention, its complexity, patent attorney’s fees, the length of the application, and possible objections raised during the examination by the patent office. Some countries offer discounts to small- and medium-sized enterprises and applicants filing the application online. In addition, some countries
allow expedited examination upon payment of additional fees. In addition to the national official filing fees, once a patent is granted by the patent office, you must pay maintenance or renewal fees, generally on an annual basis, to maintain the validity of
the patent. In case you decide to patent your invention abroad, you should also consider the relevant official filing fees for each country in question, the translation costs, and the costs of using local patent agents, which is a requirement in many countries for foreign applicants.

It will cost a minimum of £310 in the UK
A PCT application can range from $3,000 to $4,500

19
Q

How can patents be obtained worldwide?

A

At present, you cannot obtain a universal “world patent” or “international patent”. Patents are
territorial rights. In general, an application for a patent must be filed, and the patent granted and
enforced, in each country in which you seek patent protection for your invention, in accordance
with the law of that country. Therefore, one way of obtaining patents in a number of countries is
to file a national patent application with each relevant national patent office.
In some regions, a regional patent office, for example, the European Patent Office (EPO) and
the African Regional Intellectual Property Organization (ARIPO), accepts regional patent
applications, or grants patents. These have the same effect as applications filed, or patents
granted, in the member states of that region. This means that, in certain regions, you can obtain
a regional patent from a regional patent office, which is valid in some or all of its member states.
If you are seeking patent protection in a number of countries worldwide, a good option is to file
an international application under the Patent Cooperation Treaty (PCT), administered by WIPO.
Any resident or national of a state party to the PCT (contracting state) can file a single
international application which has the effect of a national patent application (and certain
regional patent applications) in some or all PCT contracting states. In some cases, this can be a
more straightforward choice than choosing to try to submit individual applications in each and
every country in which you require protection. Find out more about the PCT System.

20
Q

What practical steps do I have to take to obtain patent protection?

A

The first step in securing a patent is the filing of a patent application. Many patent offices provide a specific form to fill in. In some patent offices, you can file a patent application on line. In the patent application, in general, you must describe the title of the invention, as well as provide an indication of its technical field. You must also include the background to and a description of the invention, in clear language and enough detail that a person with an average understanding of the field could use or reproduce the invention. Such descriptions are usually accompanied by visual materials such as drawings, plans, or diagrams to better describe the invention and an abstract, which contains a brief summary of the invention. You must also clearly and concisely define the matter for which patent protection is sought in the “claims” part of the patent application. In addition, depending on the applicable patent law, you may need to submit various kinds of statements, declarations or supporting documents to a patent office. In view of the complexity it is recommended that you consult a patent attorney or a patent agent to prepare a patent application.

21
Q

What happens after I’ve submitted my application?

A

The procedures vary significantly from one country to another, so it is impossible to provide an exhaustive step-by-step overview. If you wish to research a country’s legislation in the field of patents independently, you can browse the WIPO Lex database of intellectual property (IP) legislation from around the world. However, it is recommended that you consult either a practicing lawyer specializing in IP or the relevant IP office. Consult our directory of national and regional IP offices.

22
Q

Can the decision to grant a patent be challenged?

A

The grant of a patent can be challenged either via a patent office or in a court of law. A court may invalidate or revoke a patent upon a successful challenge by a third party. In addition, many patent office’s provide administrative procedures that allow third parties to oppose to the grant of a patent (including so-called “opposition systems”), for example, on the basis that the claimed invention is not new or does not involve an inventive step.

23
Q

is it possible to extend the term of patent protection?

A

In some countries, patent protection may be extended beyond 20 years or a Supplementary Protection Certificate (SPC) may be issued in very specific cases. The extension aims to compensate for the time expended on the administrative approval procedure before products can be put on the market. The time taken for this procedure means that the patent owner may sometimes not be able to benefit from his right for a considerable period of time after the grant of the patent.

24
Q

How are patent rights enforced?

A

Patent rights are usually enforced in a court on the initiative of the right owner. In most systems a court of law has the authority to stop patent infringement. However, the main responsibility for monitoring, identifying, and taking action against infringers of a patent lies with the patent owner.

25
Q

What does it mean to “license a patent” and why is it done?

A

Licensing a patent simply means that the patent owner grants permission to another individual/organization to make, use, sell etc. his/her patented invention. This takes place according to agreed terms and conditions (for example, defining the amount and type of payment to be made by the licensee to the licensor), for a defined purpose, in a defined territory, and for an agreed period of time.

A patent owner may grant a license to a third party for many reasons. The patent owner may not have the necessary manufacturing facilities, for example, and therefore opts to allow others to make and sell his/her patented invention in return for “royalty” payments. Alternatively, a patent owner may have manufacturing facilities, but they may not be large enough to cover market demand. In this case, he/she may be interested in licensing the patent to another manufacturer in order to benefit from another income stream. Another possible situation is one in which the patent owner wishes to concentrate on one geographic market; therefore, the patent owner may choose to grant a license to another individual/organization, with interests in other geographical markets. Entering into a licensing agreement can help to build a mutually beneficial business relationship.

Unlike selling or transferring a patent to another party, the licensor continues to have property rights over the patented invention.

26
Q

Can I obtain a patent for a software-related invention?

A

Possibly, but laws and practices in this regard can differ from one country or region to another. For example, in some countries, “inventions” within the meaning of patent law must have a “technical character”. In other countries, such requirements do not exist, meaning that in these countries’ software is generally patentable subject matter.

However, this does not mean that all software will be able to be patent protected. In order to obtain a patent, a software invention must not fall under other non-patentable subject matter (for example, abstract ideas or mathematical theories) and has to fulfil the other substantive patentability criteria (for example, novelty, inventive step [non-obviousness] and industrial applicability [usefulness]).

It is therefore recommended that you consult a practising lawyer specializing in intellectual property or the intellectual property offices of those countries in which you are interested in obtaining protection. Consult our directory of national and regional intellectual property offices to get in contact with a local IP professional or browse the WIPO Lex database of intellectual property legislation from around the world. However, according to a well-established principle, copyright protection extends only to expressions, not to ideas, procedures, methods of operation, or mathematical concepts as such. Thus, many companies protect the object code of computer programs by copyright, while the source code is kept as a trade secret.

27
Q

Can I patent my app?

A

Whether you can obtain patent protection for an app depends on which element of your app you wish to protect. If you want to protect a technical idea or feature relating to the app, patent protection is a potential option. Depending on the applicable national law, the software that runs your app may be able to be protected by patents if it has certain technical features. You must be mindful however that your technical idea must meet all of the patentability requirements to obtain patent protection, and it may take years to get a patent. In addition, it is important to ask yourself which element(s) of your app should be protected from free use by competitors. The software that runs your app can be protected by copyright (potentially also by patents, as described above). If you are interested in protecting logos or signs contained within your app, however, you should consider protecting them using trademarks. Literary and artistic works included within your app, such as original databases, musical works, audio-visual works, works of fine art and photographs, are protected by copyright. Graphical objects and layouts can be protected using industrial designs

28
Q

How can I search for inventions that have already been patented?

A

Utilize online patent databases

The UKIPO provides an online patent database where you can search for granted UK patents. The database allows you to search by keywords, patent numbers, applicants, inventors, and other criteria

European Patent Office (EPO): The EPO’s database, “Espacenet,”

World Intellectual Property Organization (WIPO): WIPO’s website provides access to the International Patent System (Patentscope) database

Commercial Patent Databases: Various commercial patent databases provide comprehensive coverage of patents from different countries, including the UK. Examples include Derwent Innovation, PatBase, and Questel Orbit. These databases often offer advanced search features and additional tools to aid in patent research

29
Q

How can I find the patent laws of various countries?

A

WIPO Lex provides easy access to intellectual property legislation from a wide range of countries and regions as well as to treaties on intellectual property. Many national or regional patent offices also provide information concerning national or regional legislation on their websites. Consult our list of national and regional intellectual property offices.

30
Q

when is an invention new?

A
  • The invention must be new at the date of filing of the
    patent application.
  • “New” means that the invention does not form part of
    the state of the art.
  • The state of the art comprises everything made
    available to the public by means of a written or oral
    description, by use, or in any other way, before the date
    of filing of the European patent application.
  • It is vital that you keep your invention confidential until you have filed your application.
31
Q

What is a Database?

A

+ Under the Copyright and Rights in Databases Regulations 1997 which implemented into UK law the provision of the EU Database Directive 96/9, a database is defined as:
a collection of independent works, data or other materials which:
+ are arranged in a systematic or methodical way;
+ and are individually accessible by electronic or other means.

Facts on patent databases

Across the globe, there are over 180 patent offices in different regions operating in different languages.

Patent Information is commonly not available in developing countries due to the legal requirements for patent

They help with significant obstacles to identifying the patent status of any particular product even in more countries.

They can identify many patent fields on various products. Patent applications may be easily searchable.

32
Q

what are Sui generis database rights?

A

+ There are two types of intellectual property protection for databases: sui generis database rights (or just ‘database rights’) and copyright.

+ Both are automatic, unregistered rights that allow the owner to control certain uses of their databases.

+ Database rights were first introduced by the EU Database Directive. Eligible databases received protection in all European Economic Area (EEA) member states and including the UK when it was a member of the EU. The UK implemented the directive through the Copyright and Rights in Databases Regulations 1997.

33
Q

what are extraction and re-utilisation? How do you protect a database from them?

A

Extraction means ‘the permanent or temporary transfer of all or a substantial part of the contents of a database to another medium by any means or in any form’, and can be broadly equated with the restriction on copying in copyright law.

Re-utilisation means ‘making the contents available to the public by any means. This would include distributing copies, renting and online or other forms of transmission. If a person re-utilises all or a substantial part of the contents of a database without the owner’s permission a breach of the database right occurs.

34
Q

Can you use a patent for a database?

A

While it is possible to argue that an algorithm is new and unique, a database is a collection of data generally stored and accessed electronically from a computer system.

As such if it is implemented using an existing database application (like Oracle or Microsoft SQL Server) there is nothing new or unique about the database.

It is also not possible to patent a collection of data and as such the contents stored in a database are not patentable.

However, if unique code in the database has been created, it is possible that the code may be patentable but not the database as a whole.

Using copyright to protect the database is more likely to be a better option although there will be many ways to create a similar product which is sufficiently ‘different’ and as such will not violate any copyright.

35
Q

what do critics and supporters say about software patents?

A

Critics of software patents argue that they can stifle innovation and competition in the software industry, as patents can be used to block others from using similar technologies or ideas.

Others argue that software patents are necessary to encourage innovation and investment in the industry by providing a means to protect and monetize new software inventions.

36
Q

Formative 6

‘Critics of software patents argue that they can stifle innovation and
competition in the software industry, as patents can be used to block
others from using similar technologies or ideas.’

Critically discuss the implications of the above statement for organisations
providing managed information technology services to clients.

A

Looking for:

Implications for Innovation: a) Stifling Innovation: Critics argue that software patents may hinder innovation by restricting the use of certain technologies or ideas. Patents can create barriers to entry for smaller companies or startups, as they may face legal challenges or licensing fees to use patented technologies. This can limit competition and innovation in the industry.
Patent Thickets: The accumulation of numerous software patents, often held by different entities, can lead to what is known as patent thickets. Patent thickets refer to a situation where multiple overlapping patents cover a specific technology or concept. Dealing with patent thickets can be burdensome for organisations providing managed IT services, as it may require extensive legal analysis, licensing negotiations, or avoidance of certain technologies altogether.
Implications for Competition: a) Anti-competitive Behavior: Some argue that software patents can be used strategically to block competitors from using similar technologies or ideas. Large companies with substantial patent portfolios may engage in patent wars or use patents defensively to maintain market dominance and exclude smaller players. This behaviour can limit competition and impede the growth of innovative companies in the managed IT services sector.
Patent Trolls: Patent trolls, or non-practicing entities, are entities that acquire patents solely for the purpose of initiating patent infringement lawsuits. They often target technology companies, including those providing managed IT services, seeking licensing fees or settlements. The threat of patent litigation from trolls can divert resources and attention from innovation and disrupt the operations of organizations.
___________________________________________

Linking to Legislation:

Regarding UK and US legislation, the patent laws in these jurisdictions provide protection for software inventions. In the UK, software can be patented if it meets certain criteria, such as being new, involving an inventive step, and having a technical effect. The Patents Act 1977 governs patent law in the UK.

In the US, software can also be patented if it meets the requirements of patent eligibility, novelty, non-obviousness, and utility. The primary legislation governing patent law in the US is the Patent Act, specifically Title 35 of the United States Code.

An example of the implications of software patents for organizations providing managed IT services is the case of Oracle America, Inc. v. Google, Inc. In this high-profile lawsuit, Oracle claimed that Google’s use of certain Java APIs in its Android operating system constituted patent infringement. The case raised questions about the scope and enforcement of software patents and their potential impact on the software industry.

37
Q

Formative

Background
Date: April 2021
The difficulty for software-related inventions arises from Section 1(2) of the UK Patents Act 1977, which indicates that computer programs “as such” are excluded from patentability. The implication of this wording is that an invention that goes beyond being merely a computer program “as such” can be the subject of a patent, however the Act does not define what a computer program “as such” actually is. As a result, a large body of case law has developed over the years around the question of where the boundary between computer programs “as such” and patentable inventions lies.

The main test from the case law that is now used by the UKIPO when examining patent
applications for software-related inventions is the Aerotel/Macrossan test, which effectively asks whether the contribution made by the invention is “technical” in nature. The UKIPO also refers to the so-called AT&T signposts, which provide indicators for what might make a software-related invention “technical”. Typically, a software-related invention may be found to be “technical” if it provides some effect in the real (i.e. physical) world. For example, this may be the case if the software is used to control a physical machine, or if the software leads to improved performance of a physical computing system, e.g. increased processing speed or improved energy efficiency of the computing system. On the other hand, if the software simply manipulates data stored in the computer, it may be difficult to tie it to a technical effect in the real world, such that the UKIPO will be likely to reject the invention as being excluded from patentability. Further details on how software-related inventions are assessed at the UKIPO and the EPO are provided in our information sheet here.

The invention

The invention disclosed in patent application GB1802728.4, from applicant Sourcecode
Technology Holdings, Inc., provides an online platform for enabling collaboration on a
software project between multiple developers working from different locations. Thus, the invention is highly relevant in the context of the ongoing pandemic, where new solutions are needed to enable teams to effectively collaborate on projects remotely.
Conventionally, when multiple developers are working on a software project, a local version of the software is stored on each developer’s computer. Then, changes made by one of the developers to their local version are propagated to the other developers’ local versions, to ensure that distributed local versions are all up-to-date. This involves re-compiling all of the local versions each time one of the developers makes a change to the project. This can result in frequent lag and freeze issues if several developers are working on the project simultaneously, as well as using a large amount of processing power to perform the re-compiling at each developer’s computer.
The invention addresses these issues by centrally storing and compiling a single executable version of the software project and distributing a “typescript” version of the project to the developers. The typescript version of the project is a visual representation of code from the software project, however, it is not itself a piece of software that can be executed. Thus, developers can edit the typescript version of the project, and changes to the typescript version can be easily shared amongst multiple developers without having to repeatedly re-compile local versions of the software. This avoids the freeze and lag issues experienced with the prior art techniques and effectively enables multiple developers to simultaneously work and share changes on a software project in real time.

The objection

In the examination report, the UKIPO Examiner objected that the invention was excluded from patentability, arguing that it related to a computer program as such. The Examiner considered that the invention did not provide any technical effect, and was of the view that none of the AT&T signposts were fulfilled. In particular, the Examiner considered the invention did not have any effect outside of the computer system, with the computer system itself operating “entirely conventionally”. Further, the Examiner considered that the invention does not actually overcome the lag/freeze problem from the prior art, but merely circumvents this problem by means of the typescript version of the project.

In view of this serious objection, the Examiner was minded to refuse the application.

You are tasked with countering the examiner’s Objection.

A

The invention disclosed in patent application GB1802728.4 should not be considered as a computer program “as such” and is eligible for patentability. The invention provides a technical effect by addressing the lag and freeze issues that occur during collaboration on a software project among multiple developers, which is a real-world problem that affects the performance of computing systems.

Contrary to the Examiner’s view, the invention goes beyond simply circumventing the prior art lag/freeze problem by using a typescript version of the project. The invention centrally stores and compiles a single executable version of the software project, which is distributed as a visual representation in the form of the typescript version. This allows developers to edit and share changes in real time without having to repeatedly re-compile local versions of the software, leading to improved collaboration efficiency and performance.

Furthermore, the invention fulfils the AT&T signposts as it has an effect outside of the computer system. It enables collaboration on a software project between multiple developers working from different locations, which has real-world implications, especially in the context of the ongoing pandemic where remote collaboration is crucial. The invention also involves technical aspects such as storing, compiling, and distributing the software project, which is not purely abstract or conventional computer programming steps.

Therefore, the Examiner’s objection should be overcome as the invention provides a technical effect, addresses a real-world problem, and goes beyond a mere computer program “as such”. The application should be allowed for patentability.

Links should also be made to relevant legislation.

The Patents Act 1977 sets out the requirements for patent applications, how the patent-granting process should operate, and the law relating to disputes concerning patents.