When considering cloud computing and intellectual property, it’s not enough just to look at copyright, the most powerful means of protecting an invention is a patent. Copyright can only catch another company who copies your code, but a patent can stop anyone who infringes your patent claims. However, obtaining a patent within the software arena – and therefore the cloud computing environment – comes with a number of challenges.
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Key challenges
Cloud computing is a grey area when it comes to what can and can’t be patented. The primary challenge, and one for the whole of the software industry, is that software per se can’t actually be patented in Europe. To overcome this exclusion, we need to prove that a cloud invention has a technical effect beyond the simple use of software and make a case for its technical features; purely business or administrative methods are not seen as technical.
Patents are territorial rights and not many companies can afford to patent all over the world
The second challenge is choosing the jurisdiction in which the patent is being applied for and granted. Patents are territorial rights and not many companies can afford to patent all over the world. For example, if we were looking to obtain a patent for a system with a user in the UK and a server, we might want a patent in the UK. However, it’s very likely the server element will be located in the cloud, and the invention could be in the server, yet the server could be located anywhere in the world.
This offshore facet means it can often be difficult to enforce a patent against infringers. Generally, this cloud computing patent infringement problem relates to network access to a shared pool of configurable computing resources, such as networks, servers, storage, applications and services. Typically it arises when some aspect or part of the computing resources which are accessed and used to infringe the patent are outside the territorial scope of the patent (offshore).
So where do we apply for the patent and how can we enforce it?
So where do we apply for the patent and how can we enforce it? Whilst this might seem an insurmountable problem there are beacons of hope that can help our patent strategy and it is an area where judges really work hard to protect the patentee.
As an example: US company Align Technology Inc created the Invisalign system, including an incremental adjustment invention for a dental brace appliance and patented it in Europe. The invention was based on providing a digital data set showing the patient’s teeth as they are (a) and a digital data set of the teeth as they should be (b), with devices designed to move the teeth from position a) to b) over time. The critical element of the invention was that the dental devices were made from a series of calculations that provided successive digital data sets between position a) and position b).
When Align Technology wanted to use their patent in Germany to stop Ortho Caps GmbH using this technology, a challenge in enforcing the patent arose because the process carried out by Ortho Caps was outsourced offshore. Normally, to enforce a patent, everything defined in the main patent claim needs to be carried out by the infringer in the jurisdiction. In this case, the digital data was produced in Pakistan and the dental braces were made in Germany. However, the German infringement court found that the alleged infringer had put the patent to use in Germany, even though the digital data sets were not produced in Germany.
In the leading UK case, which relates to interactive casino games played on the web with an offshore host computer, the UK courts came to a similar conclusion – it would be wrong to apply the old ideas of location to inventions of the type under consideration. So in both countries the courts helped the patentees to enforce their rights.
It would be wrong to apply the old ideas of location to inventions of the type under consideration [cloud located]
Patent law complexities
The complexity of patent laws in different jurisdictions and the cost involved in applying for patents present a further challenge. Consequently, an invention tends to be patented in the more important jurisdictions, and in areas where it is expected competitors may well operate, with patents usually enforced in the location of the user.
A new idea?
The number of patents in the software area and similarities in software approaches for different purposes present a further challenge for cloud based inventions, as previous work means similar ideas may well exist and have been patented, making it hard to have or to prove a new idea.
Given the challenges, it’s no wonder companies are concerned about the ability to patent their cloud based inventions and to assert that patent if some parts of the invention would usually take place outside of the jurisdiction.
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Top tips: applying for a patent to protect an invention
Prior to being a Patent Attorney at Haseltine Lake I was a European Patent Office Examiner, so I understand both sides when it comes to applying for and granting a patent. These are my tips for applying for a patent:
- You can achieve a software patent if you can prove it is technical, so have a good idea where the border is between technical and non-technical.
- Know what kind of invention you have, for example a new banking method could be all about improved security, so it’s the improved security which is the technical feature.
- The way you write the invention is crucial:
- Use the correct technical vocabulary. For example, consider the impression the write up of the data structure would give to a European Patent Office Examiner.
- A simple word change could be significant, for example “accessing” a digital data set instead of “providing” can make the method relevant in the country where the user is located, irrespective of where the system is in the cloud.
- The written patent application needs to be granted and enforceable, and to give the best possible chance, use the many different categories of patent claim available, such as the method, the computer program carrying out the method, the IT system, the server and the user terminal. Of course the challenge is to write a patent application that works well in many different jurisdictions, each with its own laws!
- Currently companies need to assert a patent in a national court, so decide which countries to patent in based on your competitors’ activities.
- Whilst the patent system is slow to progress, inventions in the cloud move at speed, so protect your invention (your company and any future investment) by patenting it from the start – once it’s disclosed, it’s too late for a patent!
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Frances Wilding, Partner, UK and European Patent Attorney, Haseltine Lake LLP
Frances started her career as a Patent Examiner at the European Patent Office in Munich, where she spent eight years working on examination and opposition of European cases and PCT examination. The technical fields covered included manufacturing and conveyor systems, circuit protection, packaging machinery and valve and dispensing technology. Frances transferred to private practice in the UK, working in the fields of medical implants, fixed telecommunications, geosynthetics, earth compaction and surfacing, and a variety of electro-mechanical devices.
At Haseltine Lake, Frances continues to work in a broad variety of fields, including mobile telecommunications, healthcare, medical and display technology, data centres and business and internet-based inventions. Her wide client base includes small UK businesses, large direct Japanese, US and German clients, and agent work for French, German, US and Japanese applicants. She undertakes infringement opinion work and other litigation preparation for clients including German, Japanese, UK and US firms and is a regular visitor to Japan, Germany and the US. Frances has an excellent working knowledge of French and Italian and is fully fluent in technical German.