Tag: Patent

The Rio de Janeiro State Court of Justice reinstated an injunction against Netflix, requiring the company to stop using video compression technology

The Rio de Janeiro State Court of Justice (TJ-RJ) re-established the injunction that determines that Netflix discontinue the use of the compression technology patented by the North American DivX. The deadline for the measure to be respected was until June 24, 2022. If the streaming platform does not respect it, a daily fine of R$ 50.000,00 will be charged.

The technology patented by DivX allows the compression of videos in high definition, and is used to reproduce them with greater speed, without compromising the image quality. This technology allows the availability of videos in Ultra HD and 4K format, with higher definition images.

Last year, the court authorized an interim decision for Netflix to stop using the disputed resource; however, the company appealed, and offered a guarantee of R$ 10.000.000,00 while the process was still running. At the time, the offer was accepted and the injunction temporarily overturned. Returning to the present, the restoration was decided by the judges of the 24th Civil Chamber of the Rio de Janeiro State Court Of Jusitce, with 2 (two) votes in favor and 1 (one) against.

According to DivX, NETFLIX violates a patent duly protected by the Brazilian PTO since 2018, which was also recognized in the United States and China, for the simple fact of making content available using a third-party resource without a license required.

In its defense, Netflix claimed that it does not use the technology of the North American company. However, at the same time, he claims that abandoning the use of DivX’s compression method “would bring enormous losses”. The communication failure was pointed out by the judges. Subsequently, they confirmed that the arguments of the platform representatives are “described in a grammatical style that is sometimes ambiguous”.

In addition to the conflicting defense arguments, five technical opinions carried out by professors from research centers of excellence in Brazil, PUC-Rio, UFRJ, UERJ, UFF and USP, demonstrated the use of the patented compression technology.

Since the patent in reference is not only protected in Brazil, the dispute in question is taking place simultaneously in the United States and China.

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Author: Bruno Arminio, Associate Lawyer at Peduti Advogados.

Source: Netflix is forced to stop using video compression technology

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Main differences between an invention patent and an utility model by Brazilian law

In Brazilian Law of Intellectual Property (Law nº 9.269/1996), there are two types of invention: the Invention Patent and the utility model. In this article, we will cover the main aspects of each protection right, as well as the requirements needed to file and achieve these registers.

The article 8 of the Intellectual Property Brazilian law handles the requisites of the Invention Patent, while its article X handles the demands needed in the Utility Model process:

Article 8 – To be patentable an invention must meet the requirements of novelty, inventive activity and industrial application

Article 9 – An object of practical use, or part thereof, is patentable as a utility model, when it is susceptible of industrial application, presents a new shape or arrangement and involves an inventive act that results in a functional improvement in its use or manufacture

That way, for an invention to fulfill the “novelty” requirement, it can’t be envolved by the state of art, which, in turn, correspond to all that was accessible to the public before the date of filing of a patent application.

The “industrial application” demand means that the functionality object of the application needs to be susceptible to production and use by any kind of industry.

The last requisite is what tells both protection rights apart. The Invention Patent requires Inventive Activity, while the Utility Model requires only an Inventive Act.

By Inventive Activity we understand that the functionality, beyond being new, needs to not derive in an evident or obvious manner from the state of the art, by the eye of a person skilled in the art. If not, any professional could have come up with said funcitonality, which consequently would not consist in an actual invention.

The Inventive Act, on the other hand, is a concept analogous to Inventive Activity.

Said object of practical use envolves Invetive Act when, for a person skilled in the art, it does not derive in a common or usual manner from the state of the art.

Evidently, the difference between both concepts is subtle. We can consider that the Utility Model is an improvement inside the scope of a previous Invention Patent, in a way that it is restricted to the form or disposition of an object, while a new Invention Patent would consist in a more wide-ranging functionality.

To help us have a better understanding of this concept, the Law 9.269/1996 (IP Law), in its article 10, lists examples of what cannot be considered as Utility Models:

Article 10 – The following are not considered to be inventions or utility models:

I – discoveries, scientific theories and mathematical methods;

II – purely abstract concepts;

III – schemes, plans, principles or methods of a commercial, accounting, financial, educational, publishing, lottery or fiscal nature;

IV – literary, architectural, artistic and scientific works or any aesthetic creation;

V – computer programmes per se;

VI – the presentation of information;

VII – rules of games;

VIII – operating or surgical techniques and therapeutic or diagnostic methods, for use on the human or animal body; and

IX – natural living beings, in whole or in part, and biological material, including the genome or germ plasm of any natural living being, when found in nature or isolated therefrom, and natural biological processes.

Its also important to consider that, in consequence of the said discrepancy between the institute’s demands, they have a different terms. A Patent of invention will have a term of 20 (twenty) years and a utility model patent a term of 15 (fifteen) years, counted from the filing date.

That way, having a better view of these two concepts, the inventor will be ale to register its invention in Brazil, without having any delays or complicstions.

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Author: Enzo Toyoda Coppola, Junior Associate at Peduti Advogados.

Source: Lei de Propriedade Industrial (Lei nº 9.279/96)

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Brazilian Law of Intellectual Property Invention Patent Requisites Utility Model

It is possible to claim incidental patent nullity as a matter of defense

According to Article 56 of Law No. 9.279/96 (Industrial Property Law), “a nullity action can be filed at any time during the term of a patent by BPTO or by any legitimately interested party. § 1 – Nullity of a patent may be argued, at any time, as matter for defence”.

Despite the clarity of the law, the country’s jurisprudence oscillates in recognizing the possibility of the defendant to argue the nullity of a patent as a matter of defense, within the scope of the State Court, when suffering an infringement action.

This is because, as provided for in Article 57 of the Industrial Property Law, “nullity actions will be adjudged in the forum of the Federal Courts, and INPI, when not plaintiff, will participate in the action”.

And, therefore, the discussion could not take place at the state level. In this sense, we highlight REsp No. 1,281,448/SP, reported by Justice Nancy Andrighi, of the Third Panel of the Superior Tribunal of Justice (STJ), judged on 09/08/2014.

However, on 10/29/2020, the STJ, in the records of REsp nº 1.843.507/SP, reported by Minister Paulo de Tarso Sanseverino, recognized “the possibility of claiming the nullity of patents and industrial designs as a matter defense in infringement actions, within the competence of the State Court, exempting, in these cases, the participation of the INPI”, whose decision will have effects only between the parties.

In a judgment of 06.30.2017, in the records of REsp 1,522,339/PR, Minister Luis Felipe Salomão had already pointed out the effects granted regarding the nullity action that is being processed before the Federal Court, which are erga omnes; and the effects granted regarding the incidental declaration of nullity before the State Court, as a matter of defense, these being inter partes.

Following this jurisprudential understanding, on 03.03.2021, the 17th Civil Chamber of the Court of Justice of Rio de Janeiro (TJ-RJ), in the judgment of Interlocutory Appeal No. 0068520-12.2020.8.19.0000, reported by Des. Wagner Cinelli, recognized the possibility of the defendant raising the nullity of the patent as a matter of defense in an infringement action.

These judgments reflect an advance of the judiciary in interpreting issues inherent to Industrial Property.

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Author: Thaís de Kássia Rodrigues Almeida Penteado, Senior Associate & Head of Litigation at Peduti Advogados.

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#biotechnologypatent Patent

Apple is involved in a patent infringement lawsuit by a canadian company

As linked on tecnology news portal, on the beggining of this month (December, 4), the company ImmerVision, a Canadian technology company specializing in images processing, filed a patent infringement lawsuit against the american company Apple claiming that the company had incorporated its invention to the devices Iphone 11, Iphone 12 mini, Iphone 13 pro max and even the Ipad.

The patent object of the lawsuit was filed in May, 2002 on the USPTO and concerns a method for capturing and displaying a digital panoramic image of variable resolution.

Thus, the ultra-angular sensor used in the Apple’s cameras would be considered an infringement of the Canadian company’s patent.

On the lawsuit, ImmerVision requires a compensation and an order to block the use of its patent in the future.

The lawsuit was filed in federal court in Wilmington, State of Delaware/USA and the Defendant Apple has not ruled on the matter yet.

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Author: Beatriz Cambeses Alves, Junior Associate at Peduti Advogados.

Source: Apple é processada por empresa do Canadá por violar patente com câmeras do iPhone

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#intelectualproperty #lawsuit Apple Patent

The intellectual property protection in games

In 2019, the digital games industry alone – without considering physical copies – generated $ 104,4 billion in revenue, revealed Statista, a company specialized in market data. After pandemic arrived, revenues increased by 23 percent year-on-year to $ 128,3 billion in 2020. By 2025 a value of $ 268,8 billion is expected to the game market.

These numbers reflect the strength of an industry recognized for being very innovative and that grows exponentially each year. In such environment, it is normal for gaming companies to worry about protecting their ideas, inventions, and other creations through intellectual property mechanisms, including patents.

In Brazil, patents cannot be used to protect the games themselves, their rules, conception, their visual presentation, etc.. In many cases, these aspects are protected through copyright or through the creation of a trademark related to the game.

Furthermore, the source code through which the game exists, runs, and is implemented (software), is not patentable. A software registration, which is equivalent to a copyright registration, may be used to protect source code.

Because of its ease of use and versatility, copyright (as defined in Brazilian Law n. 9,610/1998) is a significant protection for most game firms, as it is an adequate tool for protecting game ownership.

Copyright encompasses tales, characters, scenarios, music, graphics, and even the source code in the game world. Nevertheless, copyright protects the expression of ideas rather than the ideas themselves.

This has two ramifications: no game ideas are copyrighted until they are implemented in some form (like source code, or in a word file, i.e.). Second, similar concepts used in various games do not always infringe on third-party copyrights. If an FPS shooting game is registered, for example, there will be no infringement of the rights of the person who registered if another person registers a game with the same genre but different aspects.

Copyright also gives the owner the ability to prevent others from exploiting his work. Moreover, they are simple to enforce and independent of registration, as they exist from the minute the game is created, while patents and trademarks have complicated registration systems, and trade secrets necessitate specific actions to be taken within the organization, as well as continual monitoring to maintain the right.

Even if registration is not required to invoke copyright, it is highly advised because it is a quick and easy approach to establish authorship and priority in the event of a dispute.

It is important to remark that although software (source code) cannot be patented in Brazil, it is possible to patent software by describing and defining it as methods, processes, and systems that solve a technical problem through a technical solution.

When these concepts are applied to the game industry, one can patent inventions such as digital signal processing (which includes image, graphics, lighting, textures, objects, rendering, and sounds), procedural data generation, handling a dropout situation in a network game, memory management, processing commands issued by a player, and so on.

Before filing a patent, it is necessary to check in Brazilian Patent and Trademark Office (BPTO) and other patent databases to see if a similar or identical invention has previously been registered.

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Author: Carlos Eduardo Nelli Principe, Associate Lawyer at Peduti Advogados.

Source: Video game industry – Statistics & Facts
Digital Video Games To Hit $146B In Revenue In 2021, A 40% Increase In Two Years

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games intellectual property Patent Software

Ownership of patents arising from employee’s inventions

Disputes between employees and employers over the rights arising from the invention developed by the employee while his/her employment contract is in force are not unusual before Brazilian Courts.

Until the advent of the most recent Brazilian Industrial Property Law (Law 9,279/96), disputes involving the ownership of the patent protecting the employee’s invention were dealt with by the application of Brazilian Labor Law (Decree-Law No. 5.452/43).

In that scenario, patents belonged to employee and employer in equal parts, except if the core of the employment contract was scientific research, that is, if the employee had been hired precisely to invent.

It was understood that the employee’s efforts to develop the creation would already be remunerated by his salary. Therefore, the patent belonged exclusively to the employer, provided that he made the deposit in his name within one year of its creation, under penalty of losing ownership of the invention to the employee.

However, Brazilian Industrial Property Law supplants the Labor Law in that sense, dedicating a specific chapter to deal with the subject. In fact, Chapter XIV, of Title I (Patents), lists in articles 88 to 93 the way in which ownership of the patent object of the employee’s invention must be decided.

The article 88 of Brazilian Intellectual Property Law remarks that the invention or utility model will only belong exclusively to the employer when the employee, who developed the invention, has been expressly hired for that purpose.

This is because, if the employee was hired precisely to invent, develop, create or improve a certain system or product, his or her inventive activity is the very core of the employment contract, and every invention is remunerated by the salary stipulated in the contract.

When the employee was not hired for the purpose of developing inventions, article 90 of Brazilian Industrial Property Law provides that “industrial creations” generated in this context (called “free inventions”), will belong exclusively to the employee.

It is important to highlight the law establishes that the employee’s ownership of the patent results from the fulfillment of two requirements: having the creation been developed in complete disconnection from the employee’s obligations contained in their employment contract and the non-use of any resources of the employer.

Failure to meet the first requirement, that is, if the employment contract provides for the creation or improvement of systems and products among the employee’s obligations, as a rule flows into the employer’s ownership of the creation.

The failure to comply with the second requirement, which implies the prohibition of the use of the employer’s resources, will imply the hypothesis provided for in article 91 of Brazilian Industrial Property Law.

Indeed, such article states that the ownership of the invention will be common, in equal parts, when it results from the employee’s personal contribution and from the employer’s resources (and others), being guaranteed to the employee fair remuneration for the exploitation of the invention.

In other words, the right of industrial exploitation of the invention, through a patent, will belong to the employer, and the employee is responsible for receiving fair remuneration for their creative efforts.

However, Brazilian Industrial Property Law does not define the concept of fair remuneration. So, it is up to the parties, or to the magistrate in court to deal, to define a remuneration amount that is fair to the parties, considering the economic benefits that will be earned by the industrial application of the invention over time.

Notwithstanding the regulation given by Brazilian Law, which provides apparently simple, direct and objective provisions to decide the ownership of a patent resulting from the creation of the employee, the disputes over the patentable invention are not so simple due to the various particularities that involve the development of creation.

People are often hired informally or with employment contracts without sufficiently detailed specifications about their obligations, or that bring doubt about whether the inventive step would be included in the contractual obligations.

In this context, it will be up to the Judiciary to analyze the employment contract in light of the activities carried out by the employee and in the fair expectation of the employer to decide on the scope of the employment relationship.

On the other hand, there are situations in which it is not simple to find out whether or not the employee used employer’s resources to develop the invention, and it is necessary to find out in court what extension of the invention could be developed by the employee without the support provided by the employer.

Although Brazilian Industrial Property Law brings objective provisions to determine ownership of a patent covering an invention developed by the employee, it is certain that the factual issues involved in the creation of an invention may bring the need for intervention by the Judiciary to find out the way in which the creation took place and then apply the rules brought in law.

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Author: Carlos Eduardo Nelli Principe, Associate Lawyer at Peduti Advogados.

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#employee Patent technology

Disney bets on blockchain to prevent piracy

Disney has a vested interest in keeping pirates at bay as a major content generator. The entertainment company is participating in a number of enforcement measures since the launch of its new streaming platform (Disney+) and acquired a new anti-piracy patent on April 27, 2021.

The patent US 10,992,454 B2 intends to make it more difficult for pirates to intercept films being distributed to theaters by using a blockchain-based distribution system.

In essence, blockchain is a method of storing information in such a way that it is difficult or impossible to change, hack, or cheat the system. It is a digital log of transactions that is duplicated and distributed across the blockchain’s complete network of computer systems.

Considering that pirates with the correct connections can make copies during or after movies make it to theaters, the blockchain mechanism proposed by Disney may prevent unwanted prior access of unauthorized people to its intellectual property.

Several security safeguards are currently in place to prevent leaks from occurring. For example, theaters must follow specific guidelines, and all films must be watermarked. However, Disney fears that this will not be enough to deter pirates, specially because those measures are often reactive than preventative.

The company claims that the distribution process may be more closely monitored by establishing a secure blockchain-based solution. Among other things, It will make it impossible to watch a movie before it gets at its designated location, , and also keeping track of how many times a movie is shown in order to prevent bad distributors from exhibiting it more than they should.

It is important to remark Disney is not the first company to consider using blockchain to prevent piracy. On January 05, 2021, the USPTO granted to Dish Network L.L.C the patent US 10,885,159 B2, which proposes a unified anti-piracy platform to tackle copyright violations on Youtube, Facebook, Telegram, and many others.

Dish’s newly patented system addresses several shortcomings in current anti-piracy measures. It does not, for example, require copyright holders to actively search for pirated content.

There is no doubt that piracy has always been a big problem for content creators. With the advancement of streaming platforms in recent years, such companies have been investing more and more in mechanisms to protect their intellectual property, with the blockchain mechanism emerging as one of the possibilities to give control over access to content available on the internet.

Blockchain systems do have a lot of different applications and combating piracy could be one of them.

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Author: Carlos Eduardo Nelli Principe, Associate Lawyer at Peduti Advogados.

Source: Disney registra patente de blockchain para combater piratas de filmes; Disney Patents Blockchain-Based Movie Distribution System to Stop Pirates; Disney Wants to Reinforce Its ‘Piracy Intelligence’ Team

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#blockchain #diney+ #disney #mark #piracy Patent technology

China changes regulation in order to extend patents’ expiration date

copyright or patent concept, intellectual property

It is known that the extension given to patents is a huge deal, especially to the creator, considering the time taken by the State to recognize the title and give the proper protection to the invention.

In Brazil, the term of the Brazilian patents in general is being discussed on the Supreme Court on the Direct Unconstitutionality Action filed by the Attorney General’s Office, arguing that the disposition of the only section of the article 40 of the Law n. 9.279/1996 (Industrial Property Law) would be unconstitutional and would establish an undetermined extension to all patents.

Although the action is yet to be ruled on the Supreme Court, it is known that the article of law only exists to compensate the delay of the analysis of the patent requirement by the Brazilian Patent and Trademark Office (BPTO), which is not rare.

Meanwhile in China, the direction is the opposite from Brazil. The country is changing its regulation to add an article that will stablish the possibility of the prolongation of the patents of chemical and biological products and traditional medicinal products if the China Intellectual Property Administration (CNIPA) takes more than three to four years to analyze the requirement.

China’s behavior is an indicator that the extension of the patents must be guaranteed by the regulatory entities and the regulation of the country in general in order to ensure the protection and incentive of the invention and the creator.

We now expect that the decision of the Brazilian Supreme Court recognizes the necessity to maintain the disposition of the article 40 of the Industrial Property Law.

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Author: Maria Luiza Barros da Silveira, Junior Associate at Peduti Advogados.

Source: Enquanto Brasil questiona, China estende prazo de vigência das patentes

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#extension #industrialproperty Brazil China Patent

The Microsoft’s patent that enables to digitally reincarnate a person as a chatbot

On December 01, 2020, the United States Patent and Trademark Office (USPTO) published the patent US 10,853,717 B2, filed by Microsoft, which presents the possibility of digitally reincarnating a person as a chatbot.

To do that, Microsoft intends to use social data, such as images, voice data, social media posts, electronic messages and written letters, to train an artificial intelligence that, throughout machine learning, will be able to mimic a person.

According to patent’s abstract ‘The social data may be used to create or modify a special index in the theme of the specific person’s personality. The special index may be used to train a chat bot to converse in the personality of the specific person. During such conversations, one or more conversational data stores and/or APIs may be used to reply to user dialogue and/or questions for which the social data does not provide data.’.

The idea of using social data to create a simulacrum of a person has already been presented in fiction, notably in Black Mirror tv series. The first episode of the second season (‘Be Right Back’) tells the story of a young woman whose boyfriend is killed in a car crash. While mourning him, she discovers that technology allows her to communicate with an artificial intelligence that imitates her boyfriend.

In real life, on February 06, 2020, a Korean TV show used virtual reality to reunite a mother with her seven-year-old daughter who died in 2016. For eight months, the production team has used VR technology to implement the late child’s face, body, and voice into an interactable virtual character.

Despite the ethical issues of ‘bringing someone back from the dead’, it is important to note Microsoft’s patent does not indicate the specific purpose of creating a chatbot of a deceased person.

As a matter of fact, for Microsoft the use of social data to create a person’s chatbot is much more useful to help the company to improve its own customer service chatbots, as well as a enabling the creation of an efficient AI assistance.

On the other hand, though, the malicious use of such technology may increase the cases of identity theft. If it is common to see the hacking of social media accounts to perpetrate the sending of spam or malicious links, the use of a chatbot interpreting a person hacked may raise the numbers of such crimes due to the difficulty to identify the real source, if it was truly sent by the person or by a chatbot emulating him.

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Lawyer Author of the Comment: Carlos Eduardo Nelli Principe

Source | Source | Source | Source | Source

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chatbot Patent technology

Regulations of software patents in Brazil

In August 2020, The Brazilian Trademark and Patent office (INPI) created a guideline stating rules for the examination of patent implemented through software. The guideline was published for a public consultation and suggestions by interested parties.

After reviewing the suggestions, INPI issued a final guideline that will be used for examination of software related patents in Brazil.

It is important to mention that as the software-related patents are based on a process, so it only can be registered as an invention patent and have to comply with the requirements established on the Brazilian law.

Moreover, the Brazilian law does not allow a patent of a software itself.

It is mandatory the relation with a device, so the product can be patented or the device functionality.

Peduti Advogados has patent attorney specialized on patent matters, if you have any question regarding a software-related patent and the requirements feel free to contact us.

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Lawyer Author of the Comment: Laila dos Reis Araujo

Source

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#PatentinBrazil #softwarepatent Patent