Protecting cloud based inventions

21 March 2016

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. However, obtaining a patent within the software arena - and therefore the cloud computing environment - comes with a number of 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 can’t actually be patented in Europe. To overcome this exclusion, you 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.

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Another 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? 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.

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.

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.

Frances Wilding

Frances Wilding

Partner

Our Expert
Frances Wilding
Frances Wilding
Location: London (UK)

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