A ruling in the House of Lords on patents will create
more confusion about when companies can enforce patents on
technology they have developed, according to law firm Thring
Townsend.
In a ruling last month (Kirin-Amgen v Hoechst, based on a patent
dispute over DNA technology between two biotechnology firms), the
House of Lords said there could be no simple test to decide whether
an organisation's patent had been infringed.
The Lords ruling has disappointed critics of the UK patent law, who
have claimed it is confusing and hard to apply.
A patent gives an organisation or individual a 20-year monopoly to
exploit their invention in return for publishing it.
Although computer programs cannot be patented, software or hardware
that produces a "technical effect" (ie does something new and
clever) can be patented.
Of the 30,000 applications received by the UK Patent Office each
year, 15% relate to computer-implemented inventions.
Graeme Fearon, intellectual property specialist at Thring Townsend,
said, "The ruling did not define a checklist for saying whether
something infringes a patent. Every patent dispute has to be
treated on its own merits. There is no short cut."
IT and biotechnology firms are likely to be most affected by the
ruling, he added.
How to protect your IT inventions
- Keep detailed, daily, dated and signed records, such as a lab
notebook, of the research and development process, so that it can
show at each point how the invention was arrived at
- Involve patent experts from an early stage. They will be able
to help identify the crux of the invention and describe it
appropriately in the draft patent
- Software is usually protected by copyright, but this only
protects the specific coding of a program against copying and does
not prevent someone else from obtaining the same result in a
different way or independently developing a competing product
- "Clean room" techniques - where developers start from scratch
without reference to existing software - are not strictly necessary
from a patenting point of view, but are useful to avoid allegations
of copyright infringement
- The fact that an invention consists of inventive software or
hardware is not fatal to an application for a patent, but needs
careful handling to emphasise the technical effect of the
invention.
Source:Thring Townsend