Transcript Slide 1

Patentability of Computer
Implemented Inventions
at the European Patent Office
LYON
28 April, 2009
Daniel Closa
Patent Examiner, 2.2.21, Cluster Computers
European Patent Office
Disclaimer:
The presentation and in particular the treatment of the
examples reflects the personal opinion of the author and
does in no means prejudice any Examination Division or
Opposition Division working on related applications.
2
Agenda
1.
2.
3.
4.
5.
6.
Computer-Implemented Inventions
Legal Background
Examination Practice and Case Law
Case Law for Computer Programs
PPN 03/06 - Types of Claims
PPN 08/08 - Referral G3/09
Annex I: Case Law
Annex II: Classification - Business Methods
Examples
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1. Computer Implemented
Inventions
4
Computer-implemented Inventions
computer program
get inputs; compute
maximum; return the result;
•
•
•
•
•
FindArrayMax (t[ ], minI, maxI)
for (max = t[minl], l = minl + 1;
l<=maxl; l++)
if (max < t[ I ]) max = t [ I ];
return (max);
}
underlying
concept
A
l
g
o
r
i
t
h
m
software: diskette, CD, DVD,
manuals
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Computer-implemented Inventions
Algorithm
implementation
Program for
a standard computer
Program for
a standard computer
with specific circuits
Specific circuits
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"Computer-implemented invention" - CII
- an invention whose implementation involves the use of a
computer, computer network or other programmable
apparatus
- with features realised wholly or partly by means of a
computer program
Guidelines C-IV, 2.3.6 – PPN 11/06
Examples:
a program-controlled ...
- washing machine cycle;
- car braking system.
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2. Legal Background
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European Patent Convention
What is an Invention?
European patents shall be granted for
- any inventions, in all fields of technology,
provided that they
→ A.52(2)(3)
- are new
→ A.54
- involve an inventive step and
→ A.56
- are susceptible of industrial application
→ A.57
Art. 52(1)
Patentable Inventions
Patentable Inventions
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European Patent Convention
What is NOT an Invention?
a)
b)
c)
d)
A.52(2)
The following, in particular,
shall not be regarded as inventions:
discoveries, scientific theories, mathematical methods;
aesthetic creations;
schemes, rules and methods for performing mental acts,
playing games or doing business, and programs for
computers;
presentations of information;
A.52(3)
...only to the extent to which a European patent
application relates to such subject matter or activities
as such.
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What is an Invention?
There is no positive definition of the
term "invention" in the EPC.
EPC
European Patent
Convention
Interpretation
Guidelines
Case Law
for Examination in
the EPO
of the
Boards of Appeal
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What is an Invention?
Non-Inventions
-
Narrow Interpretation
-
Activities falling within the notion of a non-invention
would typically represent purely abstract concepts
devoid of any technical implication.
-
A non-invention has no technical character
T 258/03 (HITACHI)
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Technical Character
Further requirement for patentability
implicitly contained in the EPC:
the invention must be of "technical character"
to the extent that it
- must relate to a technical field → R.42(1)(a) EPC
- must concern a technical problem → R.42(1)(c) EPC
- must have technical features in terms of which the matter for which
protection is sought can be defined in the claim → R.43(1) EPC
Guidelines, C-IV 1.2
-
no general definition of „technical“
-
interpret grey areas
-
series of individual Board's of Appeal decisions
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Technical is...
 processing physical data parameters or control values of
an industrial process
 processing which affects the way a computer operates
saving memory, increasing speed
security of a process, rate of data transfer etc.
 the physical features of an entity
memory, port etc.
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Exclusion
 Subject-matter is not excluded from patentability
× Subject-matter is excluded from patentability
Subject-matter
Technical character
No technical character
At least one feature has technical character =>
subject-matter has technical character.
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3. Examination Practice
and Case Law
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Example from Business Methods
"A method of controlling payment and delivery of content"
user
content provider
Regulation: access to content is free
- if user is from a country with GDP < limit value AND
- if the requested content is scientific content
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A method of controlling payment and delivery of content,
the method comprising:
– a provider receiving a request for content from a user;
– the provider accessing content information describing the
requested content;
– the provider accessing regulation information describing at
least one regulation that is related to the payment and the
content information of the requested content and to
geographical information of the user;
– determining the geographic location of the user;
– the provider determining whether the requested content
satisfies the at least one regulation;
• if so, delivering the requested content to the user for free;
• if not, transmitting a payment request to the user.
Non-tecchnical process/ aspects
Example I: Exclusion
Clearly Technical Aspects
none
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Example I: Exclusion
The subject matter of the claim defines purely a business
or administrative method and does not have a technical
character.
objection under Article 52(1)
because the claim constitutes subject-matter in the
sense of Article 52(2) & (3)
Search report:
Declaration under Rule 63
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Example II: Computer-Implemented Business Method
A computer-implemented method of controlling payment and delivery of
content within a computer system comprising a user terminal, a provider
server and a database which are connected via a communication network,
the method comprising:
– the provider server receiving a request for content from the user
terminal;
– the provider server accessing in the database content information
describing the requested content;
– the provider server accessing regulation information in the database
describing at least one regulation that is related to the payment and
the content information of the requested content and to geographical
information of the user;
– determining the geographic location of the user;
– the provider server determining whether the requested content
satisfies the at least one regulation;
• if so, delivering the requested content to the user terminal
• if not, transmitting a payment request to the user terminal.
=
business process
+
Does this merit
a patent?
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Example II: Computer-Implemented Business Method
Clearly Technical Aspects
Non-Technical Aspects/ Process
A computer implemented method comprising:
- a server receiving data from a terminal over a
communication network;
Same business process
as in Example I
- the server accessing data in a database;
- the server processing the accessed and received
data;
- the server transmitting the processing result to
the terminal;
no technical interaction
does not contribute to technical character
The subject matter of the claim defines technical and non-technical aspects and
thus has technical character.
assessment of inventive step
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Inventive Step
Problem Solution Approach
•
•
•
•
Establish closest prior art
Determine differentiating features and their technical
effects
Formulate an objective technical problem
Decide whether the proposed solution is obvious for the
skilled person
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Inventive Step
Clearly Technical Aspects
State of the art:
- state of technology
Closest prior art:
- always chosen from a field of
technology
Skilled person:
- skilled in the field of information
technology; has general
programming skills
- aware of common general
knowledge in information
technology
- no knowledge of non-technical fields
T614/00 COMVIK
Non-Technical Aspects/ Process
'requirements specification'
= instructions given to a programmer
summarising the requirements of the
customer
i.e. business or administrative
process to be automated
≠ state of the art
T172/03 RICOH
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Example II: Inventive Step
Technical character:
yes
Non-technical aspects:
yes
Requirements
specification:
= business method:
"ordering content and calculating its price"
Closest prior art:
computer system comprising a server,
database, and a terminal which are
connected via a communication network
Differences:
said business method
Skilled person:
data processing expert
Objective technical
problem:
automate said business method on said
computer system
Solution:
implementation/ automation is considered
obvious
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Case Law
RICOH: T0172/03 (27.11.2003)
Where the claim differs from the closest prior art only in
a mere automation of constraints imposed by the purely nontechnical aspects,
such automation using conventional hardware and
programming methods is considered to be obvious to a skilled
person.
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Example III: Computer-Implemented Business Method
•
A computer-implemented method of controlling payment and delivery of
content within a computer system comprising a user terminal, a provider
server and a database which are connected via a communication
network, the method comprising:
– the provider server receiving a request for content from the user
terminal;
– the provider server accessing in the database content information
describing the requested content;
– the provider server accessing regulation information in the database
describing at least one regulation that is related to the payment and the
content information of the requested content and to geographical
information of the user;
– determining the geographic location of the user;
– the provider server determining whether the requested content
satisfies the at least one regulation;
• if so, delivering the requested content to the user terminal
• if not, transmitting a payment request to the user terminal.
 wherein the geographic location of the user is determined by the IP
address of the user terminal using method steps x, y, z.
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Example III: Inventive Step
Technical character:
Non-technical aspects:
yes
yes
Requirements
specification:
= business method:
ordering content and calculating its price
Closest prior art:
computer system comprising a server,
database, and a terminal which are connected
via a communications network capable of
determining the location of user.
Non-technical differences:
Technical differences:
said business method
method steps x, y, z
Skilled person:
data processing expert
Objective technical
problem:
1. automate said business method
2. find alternative method for determining
geographic location of use
Solution:
1. automation is obvious
2. obvious?
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Example: Computer-Implemented Control Process
•
A computer-implemented method of controlling a physical process by
analysing a functional relationship between two parameters, the method
comprising
•
[... a series of mathematical steps follow]
•
•
wherein
the range of one of said parameters is extended in accordance with data
generated for use in the control of said physical process.
Clearly Technical Aspect
A computer implemented method of
controlling a physical process
(alleged) Non-Technical Aspects
A method of analysing a functional
relationship between two parameters
comprising:
a series of mathematical steps...
wherein the range of one of said parameters is
extended in accordance with data generated
for use in
Contributes to technical character
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4. Computer Programs
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Guidelines
C-II, 4.15 Computer programs
•
program listings in programming languages cannot be relied on as the sole
disclosure of the invention
•
description:
to be written substantially in normal language, possibly by flow diagrams
-
•
to be understood by a skilled person having general programming skills
short excerpts from programs written in commonly used programming
languages can be accepted if they serve to illustrate an embodiment of the
invention
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Guidelines
C-IV, 2.3.6 Programs for Computers – PPN 11/06
Basic patentability considerations in respect of claims for computer
programs are in principle the same as for other subject-matter.
If the claimed subject-matter has a technical character it is not excluded
from patentability by provision of Art. 52(2).
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Computer Programs
IBM: T1173/97 (01.07.1998) & T935/97 (04.02.1999)
-
With regard to Art. 52(2) & (3), it does not make a difference whether
a computer program is claimed by itself or as a record carrier.
-
The combination of Art. 52(2) & (3) demonstrates that the legislators
did not want to exclude from patentability all programs for computers.
-
Interpretation of “as such”: programs for computer must be
considered as patentable inventions when they have a technical
character.
-
Physical modifications of the hardware, causing e.g. the flow of
electrical currents, cannot per se constitute the technical character.
-
If computer program produces a “further technical effect” or solves
a technical problem, it is considered as an invention in the sense of
Art. 52(1).
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Computer Programs
IBM: T1173/97 (01.07.1998) & T935/97 (04.02.1999) – cont.
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The hardware on which the program is intended to run is outside the
invention, i.e. the hardware is not part of the invention.
-
The effect only shows in physical reality when the program is being
run. Thus, it only possesses the “potential” to produce said effect.
-
A computer program product may therefore possess a technical
character because it has the potential to cause a further effect.
-
Computer program products are not excluded from patentability under all
circumstances.
-
A computer program product which (implicitly) comprises all the
features of a patentable method is therefore in principle considered
as not being excluded from patentability under Art. 52(2) and (3).
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Computer Programs
further technical effect
no further technical effect
control of a brake in a car
aesthetical effects of
music or a video
faster communication
between mobile phones
new rules for
an auction scheme
secure data transmission
(encryption of data)
selling and booking sailing
cruise packages
resource allocation in an
operating system
calculation of a pension
contributions
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5. Types of Claims
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Guidelines
C-III, 3.1 - Claim Categories
There are only two basic kinds of claim:
1. claims to a physical entity (product, apparatus) -> "product claim"
2. claims to an activity (process, use) -> "process claim”
For many inventions, claims in more than one category are needed for full
protection.
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Types of Claims - PPN 03/06
1.
A method of operating a data processing system comprising steps A, B ... .
2. a)
A data processing apparatus/ system comprising
means for carrying out the method of claim 1.
b)
3. a)
b)
4. a)
b)
5.
A data processing apparatus/ system comprising
means for carrying out steps A, means for carrying out step B ... .
A computer program [product] adapted to perform the method of claim 1.
A computer program comprising software code adapted to perform steps A, B...
A computer readable storage medium comprising the program of claim 3.
A computer readable storage medium comprising instructions to cause a data
processing apparatus to carry out steps A, B ....
Data structures, signals, etc (see e.g. T 1194/97)
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Types of Claims - PPN 03/06
1. Claim types 3 (program) and 4 (storage medium) are of the same nature, and
both are a consequence of T1173/97. Independent claims of these two types
may nevertheless exist together without infringing Rule 43(2).
2. Claims types 2, 3 and 4 can be allowed as additional independent claims if
the method claim (type 1) is allowable (T1173/97).
3. Apparatus/ system claims (type 2) are not excluded under Art. 52(2) and (3)
(T931/95).
4. Method claims involving technical means are not excluded under Art. 52(2)
and (3) (T258/03).
5. Non-technical activities (performing mental act or doing business) do not
avoid exclusion merely through their routine implementation as a computer
program (T1173/97).
6. Claims of type 5 can be allowed in specific cases (T1194/97).
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Druckexemplar: IBM 1173/97
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Druckexemplar: IBM 1173/97
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6. PPN 08/08 Referral G3/08
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PPN 08/08 - Referral G3/08 Patentability of programs for computers
Requirements for staying the proceedings:
Proceedings shall be stayed
until the EBoA has issued its opinion only if:
• at least one of the parties to the proceedings explicitly
requests staying of the proceedings, and
• the division is of the opinion that the outcome of the
proceedings depends entirely on the opinion of the EBoA.
•
•
•
request of the party should be sufficiently substantiated
rejection of such a request should be substantiated
as should be the granting if it has been objected by another party
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PPN 08/08 - Referral G3/08 Patentability of programs for computers
The following questions have been referred to the EBoA:
Question 1:
Can a computer program only be excluded as a computer program as
such if it is explicitly claimed as a computer program?
-> Art. 52(2)(3) EPC?
Question 2a:
Can a claim ... avoid exclusion under Art. 52(2)(c) and (3) merely be
explicitly mentioning the use of a computer or computer-readable
storage medium?
-> Art. 52(2)(3) EPC or Art. 52(1)?
44
PPN 08/08 - Referral G3/08 Patentability of programs for computers
Question 3a:
Must a claimed feature cause a technical effect on a physical entity in
the real world in order to contribute to the technical character of the
claim?
-> technical effect only possible on "hardware" or also "within software"?
Question 4:
Does the activity of programming a computer necessarily involve
technical considerations?
-> Art. 52(2)(3) or Art. 52(1) EPC?
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PPN 08/08 - Referral G3/08 Patentability of programs for computers
Which cases are affected?
• European patents and applications
• PCT and national applications are not concerned
at search stage:
• requests made during the search stage should not be granted
• search report and ESOP should be drawn up
• request should not be addressed in ESOP
procedure to follow (for details see PPN 08/08):
• granting the request: Form 2081A
• denying the request: reasoning to be included in the next
communication
46
Thank you
for your attention!
47
Annex I: Case Law
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Annex I: Case Law: Computer-Implemented Inventions
•
•
•
•
•
•
•
•
•
•
T 769/92 General purpose management/ SOHEI (31.05.1994)
T 1173/97 Computer program product/ IBM (01.07.1998)
T 935/97 Computer program product/ IBM (04.02.1999)
T 931/95 Pension benefit system/ PBS (08.09.2000)
T 641/00 Two identities/ COMVIK (26.09.2002)
T 172/03 Order management/ RICOH (27.11.2003)
T 258/03 Auction method/ HITACHI (21.04.2004)
T 1242/04 Rule 45 EPC1973/ MAN (20.10.2006)
T 154/04 Gathering of data / DUNS LICENSING (15.11.2006)
T 717/04 non-technical features & novelty (28.02.2007)
• G2/88
non-technical features & novelty (11.12.1989)
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Annex I: Case Law
COMVIK: T0641/00 (26.09.2002)
-
Features making no contribution to technical character cannot
support the presence of inventive step (e.g. cost distribution).
-
Claimed subject-matter:
identify the technical content
-
Closest prior art:
related to a technical field
-
Person skilled in the art:
expert in a technical field
-
Objective problem:
realistic technical problem
Where a claim refers to an aim to be achieved in a non-technical
field, this aim may legitimately appear in the formulation of the
problem as part of the framework of the technical problem that is to
be solved, in particular as a constraint that has to be met.
50
Annex I: Case Law
RICOH: T0172/03 (27.11.2003)
Where the claim differs from the closest prior art only in
a mere automation of constraints imposed by the purely nontechnical aspects,
such automation using conventional hardware and
programming methods is considered to be obvious to a skilled
person.
51
Annex I: Case Law
HITACHI: T0258/03 (21.04.2004)
•
Circumventing a technical problem rather than solving it by technical
means cannot contribute to the technical character of the subjectmatter claimed.
•
Technical Problem
 delays in propagation of information between bidders and a server
•
Solution
 adapt auction method such that any data transmission delays
become irrelevant
•
Not a technical solution since it only concerns modification to the
rules of the auction.
52
Annex I: Case Law
T 914/02 core loading arrangement/ GENERAL ELECTRIC (12.07.2005)
Having technical character is an implicit requirement of the EPC to be met by an
invention within the meaning of Article 52(1) EPC.
The involvement of technical considerations, however, is not sufficient for a
method which may exclusively be carried out mentally to have technical
character.
Technical character may be provided through the technical implementation of the
method, resulting in the method providing a tangible, technical effect, such as the
provision of a physical entity as the resulting product or a non-abstract activity,
such as through the use of technical means.
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Annex I: Case Law
T0208/84 VICOM
Image processing
a claim directed to a technical process in which a mathematical method is used is not a
mathematical method as such because the algorithm is not merely carried out on
numbers but on physical entities.
Mathematical
Method
T0026/86
KOCH&STERZEL
X-ray apparatus
X-ray apparatus incorporating a data processing unit; controls the X-ray tubes so that
by establishing a certain parameter priority, optimum exposure is combined with
adequate protection against overloading of the X-ray tubes. A mixture of technical and
non-technical features is not excluded from patentability if the invention as a whole has
a technical effect.
Apparatus
involving
Software
T0769/92 SOHEI
Computer aided
management system
computer system for plural types of independent management including at least
financial and inventory management comprising ... a single transfer slip (entry form)
having a format commonly used for at least financial and inventory management ...
various files ... and various processing means. The single transfer slip is regarded as
user interface, i.e. technical considerations have been made. Software is not merely a
computer program as such, if technical considerations are to be made for implementing
the solution.
Computer
System
T1173/97 IBM
Asynchronous
resource recovery in
a computer system
A computer program only causing inherent technical effects, i.e. those caused by any
computer program, is considered a computer program as such.
A computer program product having the potential to cause a further technical effect is
not excluded from patentability.
T0935/97 IBM
Windowing System
A computer program product which (implicitly) comprises all the features of a patentable
method (for operating a computer for instance) is therefore not excluded from
patentability and it does not make any difference whether a computer program is
claimed by itself or as a record on a carrier.
Computer
program
product
54