Asia Unaffected by Smartphone Patent

A Singapore lawyer says the recent move by the U.S. trademark office won't hamper the sales of such devices in other countries

Reports were circulating earlier in the week on the U.S. Patent and Trademark Office issuing a patent on "a mobile entertainment and communication device"--a description broadly matching the generic smartphone.

The patent, which was awarded to Los Angeles-based Minerva Industries, describes a "cellular or satellite telephone" which has memory card sockets and can play music. The patent also includes that the device has a camera and microphone for "recording images and sound".

'Upon receiving the rights to the patent, Minerva subsequently filed lawsuits against a host of smartphone vendors, including Apple, Research In Motion (RIM), Nokia, Motorola, HTC, Sony Ericsson and Samsung, to name a few. According to a report from heise online, the number is now up to 33.

'Mark Lim, director and head of intellectual property of Singapore law firm, Tan Peng Chin LLC's media and entertainment department, told ZDNet Asia in an interview that because patents are territorial, Minerva's will only affect the manufacture, design and sale of such devices in the United States.

'"As long as firms manufacture and sell [the smartphones] outside of the United States, they shouldn't be liable. If you want protection, you will need to patent [your device] in all the countries in which you need protection," said Lim.

'A similar patent issue is also "unlikely to happen in Asia", added Lim, because of the size of the U.S. market. "The U.S. patent is very valuable, because you're taking a huge chunk of the market away from competitors [by owning the patent]," he said.

'Patent litigation in the country also poses "potentially amazingly high damages" and the "great expense" of such cases "may induce at least some of the defendants to settle commercially", noted Lim.

'The U.S. Supreme Court previously ruled that concepts already in use cannot be patented. But Lim pointed out that in Minerva's case, it could have possibly been awarded based on the concept of combining current technologies.

'"Novelty and inventiveness are assessed at the time when the patent is filed. In addition, the patent examiner in assessing that will rely mainly on prior patent documents. So in theory, a patent for the smartphone could certainly have been issued," said Lim.

'However the patent, though issued, may still be open to challenge. It is up to the parties sued to introduce documents prior to the date of filing the patent which may then be considered by the U.S. Patent Office, added Lim.

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