Transcript Slide 1

Novelty and Inventive Step
in the Field of CII
Torino, 13-14 October 2011
Edoardo Pastore
European Patent Office
Disclaimer:
The presentation and in particular the treatment of the
examples reflects the personal opinion of the authors and
does in no means prejudice any Examination Division or
Opposition Division working on related applications.
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Computer Patents in Europe
total
using IT
Keywords to detect use of
computers:
„D.Closa et.al. Patent Law for Computer Scientists
© Springer-Verlag Berlin Heidelberg 2010“
CPU, processor unit, data carrier,
data structure, software, computer,
mirco-processing, Internet, e-mail
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Computer Patents in the USA
total
using IT
„D.Closa et.al. Patent Law for Computer Scientists
© Springer-Verlag Berlin Heidelberg 2010“
4
Development of business methods in Europe
State Street Bank
Decision, USA
applications
negative
grants
Classification tree G06Q:
„D.Closa et.al. Patent Law for Computer Scientists
© Springer-Verlag Berlin Heidelberg 2010“
G06
G06Q
Computing, calculating, counting
Data processing systems or methods, specially adapted for
administrative, commercial, financial, managerial, supervisory or forecasting purposes
G06Q10
G06Q20
G06Q30
G06Q40
Administration
Payment schemes
Commerce
Finance
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Problem solution approach
Three main criteria for patentability:
novelty
inventive step
industrial application
• An invention shall be considered as involving an inventive step
if, having regard to the state of the art, it is not obvious to a
person skilled in the art.
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Inventive Step
•
"Problem and solution approach" (Guidelines C-IV 9.4):
–
–
What is the technical contribution?
•
Determine the closest prior art
•
What is the difference in claimed features between
the invention and the closest prior art?
•
Identify the technical effects of said difference.
•
Which objective technical problem is solved by
these effects?
Is the technical contribution obvious?
•
Would the solution of the technical problem be
obvious to the skilled person given the state of the
art?
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Example - 1
An application is filed:
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Example - 2
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Example – 3
Problem solution approch
• The problem solution approach is the way to assess
the inventive step:
Identify the closest prior art and the
differences with the application
how to browse the information when the
Formulate the objective technical telephone is closed, in a way that a user
can only with an hand, both carry the
problem
telephone and browse the information
Example of a Procedure – 4
Problem solution approch
The person skilled would combine:
+
=
Agenda
1. Definition: CII
2. Example: business methods
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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
Examples:
a program-controlled ...
- washing machine cycle;
- car braking system.
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Computer-implemented Inventions
computer program
get inputs; compute
maximum; return the result;
•
•
•
•
•
FindArrayMax (t[ ], minI, maxI)
{ for (I = minI; I<=maxI; I++)
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 Program - Technical Character?
A further technical effect is the result produced,
when the computer program is run on a computer,
which goes beyond the normal physical
interactions between the program and the
computer.
T1173/97 IBM
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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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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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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:
Invitation under Rule 63(1)
Declaration under Rule 63(2)
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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 novelty and inventive step
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Inventive step: problem-and-solution approach
Identify
the closest prior art (CPA)
Determine the differentiating features
and their technical effects
Formulate an objective technical problem
in view of the CPA
Decide whether there is an
inventive step
Guidelines in the EPO C-IV, 11.5
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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
- 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 data
processing expert summarising the
requirements of the customer
i.e. business or administrative
process to be automated
IS NOT state of the art
T172/03 RICOH
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Inventive Step
Objective technical problem:
•
derived by the technical differences between the closest prior art
and the claimed subject-matter,
•
it must be a technical problem,
•
no pointers to the technical solution
•
a (non-technical) aim may appear as a constraint that has to be
met:
"Where a claim refers to an aim to be achieved in a nontechnical 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."
T614/00 COMVIK
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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: T172/03 (27.11.2003)
Where the claim differs from the closest prior art only in
a mere automation of constraints imposed
by the purely non-technical aspects,
such automation using conventional
hardware and programming methods
is considered to be obvious
to a skilled person.
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Inventive Step
TEST YOUR HYPOTHESIS!
Does any non-technical aspect combine with the clearly technical
aspects to cause a technical effect?
Example Questions:
Cognitive content directed to an observer or to a technical function?
Description of model entities only at the logical level or at a specific
technical implementation?
Circumvention of a technical hurdle or assistance in overcoming it?
Where any (alleged) non-technical aspect contributes
to technical character
 include it in the assessment of inventive step
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Case Law
HITACHI: T258/03 (21.04.2004)
•
Circumventing a technical problem rather than
solving it by technical means cannot contribute to
the technical character of the subject-matter 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
=>
this is not a technical solution since it only concerns
modification to the rules of the auction.
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Summary: How to decide on Technical Character
Example:
A method of encouraging customers to be loyal buyers
by giving a discount on future purchases.
=> business method
=> excluded
Consider
whether each feature or their combination
lends any technical character to the claim.
If the claim has
no technical character at all
then it is excluded from
patentability
under Art. 52(2)&(3).
Guidelines C-IV, 2; Official Journal 11/2007, p.594
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Summary: technical: yes – but: inventive?
Example:
A computer with
- a database of customers
who have previously purchased and
- means for applying a discount
to any subsequent purchase.
=
business method
Does this merit
a patent?
+
technical difference:
inventive?
Art. 56
technical character:
yes
technical character:
no
Art. 52(2)(3)
NO!
Guidelines C-IV, 11.5.2
Official Journal 11/2007, p.594
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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 the terminal.
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 user
Solution:
1. automation is obvious
2. obvious?
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Summary
inv. step
technical character
Art. 52
(2)(3)
Art. 56
novelty
further EPC
requirements
Art. 54
Basic components
for the grant of an invention
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Any Questions?
Thank you
for your attention!
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Further Information
Brochure
by the EPO:
Patents for
software?
European Law
and Practice
WIPO:
Experts' Study on Exclusions from Patentable Subject Matter and
Exceptions and Limitations to the Rights - 2010
http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=141352
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