Expands patent protection

To methods of doing

Business

The case involveda patent issued to

Signature FinancialGroup which was

called a 'Data-Processing System for

Hub and Spoke Financial Services

Configuration'. The data-processingsystem

allowedfor complexcalculationsto

be provided very quickly relationto

mutual funds (Spokes) pooled in an

investment portfolio(Hub) which was

organised as a partnership.The patent

was challenged by State Street Bank

and Trust

The lower court held that the invention

fell withintwo exceptionsto patentable

subject matter: 1) the mathe-matical

algorithmexception,and 2) the business

rtlethod exception. The court reasoned

tQat .the data-processing system merely

performed a series of mathematical

functions and that the patent was further

inv(jHdunder'the.long-esta"blished printQat

bLJsiness "plans" and "sysare

notpateDtable',

However,.on appeal, the Federal Circuit

CoUrtreasoned that the cases relied

upoD,bythelower court were inappropriately

applied to the case. it stated

that the focus of what constitutes

pateDtable subject matter should be

the esseDtialcharacteristicsof it and, in

particUlar,its practicalutility.And, with

regard to the Hub and Spoke software

in question, it produced a 'useful, concrete

and tangible result'. The court

ended by dismissingthe 'ill-conceived'

business method exception to

patentabilityin total.

Naturally,this new approach to business

method patents has been welcomed

by inventorsin the fieldof business.

This is witnessed by recently

issued patents in such areas as architecture,

investmentand marketing.The

decision has truly increased the possibility

of patent protection for everexpandingmethods

of doing business.

8 Read the whole text and answer these questions.

1 On what grounds did the lower court hold that the software patent was

invalid?

2 What was the reasoning of the Federal Circuit Court in affirming the

patentability of the invention?

3 Why is the State Street case considered a landmark case?

9 Add the correct forms of the word patent to these phrases.

1 The Court affirmed the . of business method-related software.

2 This decision has caused an increase in . application filings.

3 The lower court held that the software patent was invalid on the grounds

that it was directed to an 'mathematical algorithm'.

4 The at issue in the State Street case pertained to a dataprocessing

system for managing mutual funds.

5 Things which are generally considered are processes, machines,

a composition of matter and so on.

6 Traditionally,business methods could not be .

Unit 11 Intellectual property

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ing= r b

10As part of the preparation of a case which your firm will soon argue in court,

l~~~~: you have been asked to submit a memorandum on cases and rulings related to

})p.297 the patentability of business software, including the State Street case.

Using the information from the text on page 151, write notes for your

memorandum. Refer to Unit 9 to review typical expressions used in case

briefs. Order your notes under these headings:

0 Facts of the case

0 Legal issue in question

0 Holdings and reasoning of the courts

0 General legal significance of the case

3=

.In

Thelegal opinionon page153waswritten by a seniorlawyerin the law firm in which the

seminaron businessmethodpatentswasheld.

11Readthe text and answer these questions. Ignore the missing sentences (1-5)

for now.

1 Which paragraph of the text refers to the fact that business method patent

law has undergone much change in recent years?

2 In which paragraph does the writer suggest an alternative to registering the

business method as a patent?

12Read the text again and complete the spaces (1-5) using these sentences

(a-e).

a Unless the Supreme Court opts to review future business method patent

controversies, I believe it is unlikely that lower courts will break from this

line of cases.

b Traditionally, inventors of business methods have relied upon trade-secret

protection because such inventions were regarded as unpatentable.

c Ultimately, the validity of any patent claim depends upon satisfying the other

requirements for patentability, including those of novelty and nonobviousness.

d Libris has developed a system called "Express Lane" through which a

consumer may complete an online purchase on the Libris website using a

single action - one click of a mouse button.

e Consequently, the success of any patent application for "Express Lane" will

primarily depend on whether "Express Lane" comprises a patentable invention.

13Match these words or phrases (1-4) with their definitions (a-d).

1 to state unequivocally a to be freely available to all and to not be protected by

intellectual property rights

b taking something from someone else and using it for

your own benefit

c to say clearly, without any doubt

d to re-examine a court ruling

2 to be within the public domain

3 to review a decision

4 misappropriation

~

Unit 11 Intellectual property

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n

0 ne

The text on page 153 makes use of discourse markers to indicate h.owideas

interrelate. When placed at the beginning of a sentence, these openers point

to a relationship between ideas or highlightindividual.ideas.

Look at the following sentence from Reading 3, in which the discourse marker

as a result signals a cause and effect relationship:

As a result, business methods areeligi/Jle for U.S. patent protection, subject

to the other requirements of the Patent Act.

In the next example, the word notably, which here means 'it sh.ould be noted

that', serves to emphasise the idea expressed in the sentence:

Notably, the Supreme Court has declined to review these bUsiness method

patent decisions.

There are a number of discourse markers expressing a variety of meaqings.

One meaning already covered in previous units is that of contrast, which can

be expressed using words like whereas or in contrast.

14The table below lists eight functions. Decide which one each of the words or

expressions in the box fulfils and add it to the table. You may need to consult

a dictionary.

AS:3 CORSe€ftI8fH3e-, As a next step, Besides, Finally, First of all,

For example, For instance, Formerly, In addition, In contrast,

In fact, In particular, In short, On the other hand, Previously,

Secondly, Specifically, Summing up, Therefore, Thus,

To begin with, To conclude,

15Go back to Reading 1 and Reading 3. Look for any discourse markers used at

the beginning of a sentence and add these to the table above.

,

Reading ..

Lawyersassist their clientswith all matters relatingto trade marks,includingadvisingon

the availability of trade marks and trade names, registering trade marks and renewing

trade-mark registrations, preparing licence agreements, identifying trade-mark

infringement, and representing plaintiffs and defendants in litigation, to name a few.

The following text is Article 47 of the Council Regulation [EC]No. 40/94 on the

CommunityTrade Mark.ACTMis a trade mark registered in the European Union. The

Article deals with the process of renewing a CommunityTrade Mark,and would have to

be consulted by an attorney assisting a client with the renewal of a registration.

16Read the article. Who informs the owner of the trade mark when that trade

mark is about to expire?

trade mark shall be renewed at the request of the proprietor of the

<pressly authorised by him, provided that the fees have been paid.

!IIinform the proprietor of the Community trade mark, and any person

respect of the Community trade mark, of the expiry of the registration

expiry. Failureto give such informationshall not involve the

3 l"hetequestforrenewa.lsha.11 be submitted within a period of six months ending on the last day

ofthemonthinWhichprotection ends. The fees shall also be paid withinthis period. Failingthis,

the requestmaYb8submittedand the fees paid within a further period of six months following

the day referred to in the first sentence, provided that an additional fee is paid within this further

period.

4 Where the request ISsubmitted or the fees paid in respect of only some of the goods or services

for which the Community trade mark is registered, registration shall be renewed for those goods

or services only.

17Match these words or expressions (1-7), italicised in the article, with their definitions (a-g).

1 expresslyauthorised a will not be the fault of

2 provided that b the date something stops being valid or ends

3 shall inform c if this has not been done

4 proprietor d if

5 expiry e given the legal power to do something

6 shall not involve the responsibility of f will tell

7 failing this g owner

18Complete this simplified account of the procedure described in Article 47 using

the nouns in the box.

expiry fees renewal request trade mark

1 Office informs proprietor of .........................

2 Proprietor submits for ...........................

3 Proprietor pays ........................

4 Office renews.

Unit 11 Intellectual property

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Writing andSpeaking:Paraphrasingin pLain

Language

Lawyers often need to explain the contents of a legal text to a client in plain

language the client can understand.

Generally, when paraphrasing complex sentences written in formal language,

it is helpful to do the following:

v Break long sentences down into shorter sentences.

Iv Make passive sentences into active ones:

The request may be submitted ~ You can submit the request

U Replace shall constructions w.ith otber verbs, depending on the meaniqg:

- future forms: Registration shall be renewed for those goods or services

only ~ Registration will only be renewed... or Youwill only be able to

renew registration...

- verbs of necessity: The fees shall also be paid ~ You have to / must /

are required to pay the costs.

U Replaceformal vocabulary with more common, everydaywords.

19Read this paraphrase of paragraph 1 of Reading 4. What kinds of changes

have been made?

The owner of the Community trade mark can renew the registration of the trade

mark himself. Another person can also renew the registration if the owner has

given him the authority to do so. The owner can only renew the registration if

he has paid the costs of registration.

Paraphrase paragraphs 2-4 in plain language. Write down your paraphrase first

and then read it aloud. Does it sound natural?

20Read this email from a client of yours. What information is she requesting?

From:

Subject:

Dear Ms Walters

I am writing to you with a few questions regarding the European Community

registration for our company's trade mark which I hope you will be able to answer: . How can I find out when the registration of a trade mark will expire? Is it the

responsibility of the trade-mark holder to find out this information? . Who can renew the registration? . When can it be done? Are there any deadlines?

Of course, we are very fond of our traditional trade-mark fox logo and would not

under any circumstances want to jeopardise our rights to use it.

As always, I very much appreciate your help in this matter.

Yours sincerely

Charlotte Fox

,

SAMPLE

ANSWER

»P.298

Write a response to Ms Fox's email using the information in Reading 4.

Express the information in your own words. You should:

0 refer to the email you received from the client;

0 state the reason for writing;

0 provide the information she has asked for (use discourse markers for

putting points in order and adding ideas);

0 offer your assistance with the renewal of registration.

ning 2: ing 9

r

The rapidly changing technologies regulated by intellectual property law - among them

computer and Internet technologies - are the source of debates on various legal issues, in

particular issues related to copyright. In the following listening exercise, you will hear a

discussion on the topic of the use of copyrighted material for educational purposes. An

American junior lawyer named Thomas has been assigned to shadow two senior lawyers

working on a case involving the 'fair use' doctrine in connection with distance learning

courses. Thomas meets Patrick, the senior lawyer, and his associate, Rebecca,in Patrick's

office to begin shadowing them as they work on the case.

21III~ Listen to the discussion and answer these questions.

1 How do Thomas and Rebecca describe the concept of fair use in American

law?

2 According to Patrick, what is the objective of copyright law?

3 Who does Rebecca think is in the stronger position now, copyright holders or

educators?

4 According to Patrick, how many factors need to be taken into account when

assessing fair use?

22Decide whether these statements are true or false.

1 The 'fair use' doctrine only applies to the use of copyrighted materials in

traditional face-to-face classroom situations.

2 Thomas has a basic understanding of what distance learning is, and is

aware of one of the intellectual property issues that it raises.

3 Rebecca argues that in the future it is likely that a teacher's right to use

copyrighted material without permission will become increasingly restricted.

4 The four-factor analysis helps determine whether the use of copyrighted

material falls under the 'fair use' doctrine.

S Rebecca points out that the four-factor analysis is subjective and therefore

not reliable.

ng: r 0

When taking part in discussions, it is necessary to know how to express your own ideas

and opinions in English [see Unit 3 for phrases for expressing your opinion]. It is equally

necessary to know how to react to the statements of others [see Unit 8 for phrases for

agreeing and disagreeing]. The table on page 158provides further useful phrases for

presenting and responding to ideas.

Unit 11 Intellectual property

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23Complete the table below using these phrases, taken from Listening 2.

In what way?

So, in other words, ...

Yes, you have a point there.

Yes, but you can look at it another way, too.

That may well be true, but you have to see the bigger picture.

Well, from a legal point of view, the debate is about...

Sorry, can I just finish my point?

As I was saying, ...

And what's more, ...

Yes, but that's only one side of the problem.

I think the important issue here is ...

Let me give you an example.

It seems to me that the real issue is ...

,

24Complete these responses to a statement made by another speaker in a

discussion using the words point or view. In one case, both words can be

used.

1 I take your ....

2 I'm afraid I don't share your on this.

3 That's really not the . at all.

4 In my , that's precisely the issue.

S I don't quite get your here.

6 It seems to me you're missing the. ....

7 That's my exactly.

8 I think that's beside the , really.

25Discuss these questions.

1 What do you think about the fair use of copyrighted material for distance

learning? Do you think the law should continue to allow educators to use

such material without permission, or do you think the rights of the copyright

holders need greater protection?

2 Copyright protection on the Internet is also a major concern of the

entertainment industry. Some of the issues involved concern peer-to-peer file

swapping of music and film piracy. What recent court decisions in this area

are you familiar with? Do you think the rights of the music and film

producing corporations should be better protected?

~ Unit:J.1

To improve your web-based research skills, visit www.cambridge.orgjeltjlegalenglish.click on

Research Tasks and choose Task 11.

Unit 11 Intellectual property

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Vocabulary: distinguishing meaningWhich word in each

out? You may need to consult a dictionary to distinguish

meaning.

1 infringe

2 in addition

3 confirm review uphold

4 holder proprietor issuer

5 prerequisite suggestion

6 thus therefore moreover

Vocabulary: phrases with copyright infringement

Date: 2015-12-11; view: 2060