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Patentability of Computer Implemented Inventions at the European Patent Office

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:.

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Patentability of Computer Implemented Inventions at the European Patent Office

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  1. Patentability of Computer Implemented Inventionsat the European Patent Office LYON 28 April, 2009 Daniel Closa Patent Examiner, 2.2.21, Cluster Computers European Patent Office

  2. 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.

  3. Agenda • 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

  4. 1. Computer Implemented Inventions

  5. 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

  6. Computer-implemented Inventions Algorithm implementation implementation implementation Specific circuits Program for a standard computer Program for a standard computer with specific circuits

  7. - 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 "Computer-implemented invention" - CII Guidelines C-IV, 2.3.6 – PPN 11/06 • Examples: • a program-controlled ... • - washing machine cycle; • - car braking system.

  8. 2. Legal Background

  9. Art. 52(1) European Patent Convention What is an Invention? PatentableInventions PatentableInventions European patents shall be granted for - any inventions, in all fields of technology, → A.52(2)(3) provided that they - are new → A.54 - involve an inventive step and → A.56 - are susceptible of industrial application → A.57

  10. A.52(2) A.52(3) European Patent Convention What is NOT an Invention? The following, in particular, shall not be regarded as inventions: a) discoveries, scientific theories, mathematical methods; b) aesthetic creations; c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; d) presentations of information; ...only to the extent to which a European patent application relates to such subject matter or activities as such.

  11. What is an Invention? EPCEuropean Patent Convention There is no positive definition of the term "invention" in the EPC. Interpretation Guidelinesfor Examination in the EPO Case Law of the Boards of Appeal

  12. What is an Invention? Non-Inventions • Narrow Interpretation • Activities falling within the notion of a non-inventionwould typically represent purely abstract concepts devoid of any technical implication. • A non-invention has no technical character T 258/03 (HITACHI)

  13. Technical Character Further requirement for patentabilityimplicitly 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

  14. Technical is... • processing physical dataparameters 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.

  15. Exclusion • Subject-matter isnot 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.

  16. 3. Examination Practice and Case Law

  17. content provider user § § • Regulation: access to content is free • if user is from a country with GDP < limit value AND • if the requested content is scientific content Example from Business Methods "A method of controlling payment and delivery of content"

  18. Example I: Exclusion 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 Clearly Technical Aspects none

  19. 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

  20. = + business process 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. Does this merit a patent?

  21. no technical interaction does not contribute to technical character Example II: Computer-Implemented Business Method The subject matter of the claim defines technical and non-technical aspects and thus has technical character. Clearly Technical Aspects Non-Technical Aspects/ Process A computer implemented method comprising: - a server receiving data from a terminal over a communication network; - the server accessing data in a database; - the server processing the accessed and received data; - the server transmitting the processing result to the terminal; Same business process as in Example I assessment of inventive step

  22. 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

  23. Inventive Step Clearly Technical Aspects Non-Technical Aspects/ Process 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 '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

  24. Example II: Inventive Step Technical character: Non-technical aspects: Requirements specification: Closest prior art: Differences: Skilled person: Objective technical problem: Solution: yes yes = business method:"ordering content and calculating its price" computer system comprising a server, database, and a terminal which are connected via a communication network said business method data processing expert automate said business method on said computer system implementation/ automation is considered obvious

  25. Case Law 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. RICOH: T0172/03 (27.11.2003)

  26. whereinthe geographic location of the user is determined by the IP address of the user terminal using method steps x, y, z. 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.

  27. Example III: Inventive Step Technical character:Non-technical aspects: Requirementsspecification: Closest prior art: Non-technical differences:Technical differences: Skilled person: Objective technical problem: Solution: yesyes = business method:ordering content and calculating its price computer system comprising a server, database, and a terminal which are connected via a communications network capable of determining the location of user. said business methodmethod steps x, y, z data processing expert 1. automate said business method2. find alternative method for determining geographic location of use 1. automation is obvious2. obvious?

  28. Example: Computer-Implemented Control Process Clearly Technical Aspect (alleged) Non-Technical Aspects A method of analysing a functional relationship between two parameters comprising: A computer implemented method of controlling a physical process 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 • 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.

  29. 4. Computer Programs

  30. 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

  31. 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).

  32. 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).

  33. Computer Programs IBM: T1173/97 (01.07.1998) & T935/97 (04.02.1999) – cont. • 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).

  34. Computer Programs

  35. 5. Types of Claims

  36. 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.

  37. 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) A data processing apparatus/ system comprising means for carrying out steps A, means for carrying out step B ... . 3. a) A computer program [product] adapted to perform the method of claim 1. b) A computer program comprising software code adapted to perform steps A, B... 4. a) A computer readable storage medium comprising the program of claim 3. b) A computer readable storage medium comprising instructions to cause a data processing apparatus to carry out steps A, B .... 5. Data structures, signals, etc (see e.g. T 1194/97)

  38. Types of Claims - PPN 03/06 • 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). • Claims types 2, 3 and 4 can be allowed as additional independent claims if the method claim (type 1) is allowable (T1173/97). • Apparatus/ system claims (type 2) are not excluded under Art. 52(2) and (3) (T931/95). • Method claims involving technical means are not excluded under Art. 52(2) and (3) (T258/03). • Non-technical activities (performing mental act or doing business) do not avoid exclusion merely through their routine implementation as a computer program (T1173/97). • Claims of type 5 can be allowed in specific cases (T1194/97). 39

  39. Druckexemplar: IBM 1173/97 40

  40. Druckexemplar: IBM 1173/97 41

  41. 6. PPN 08/08 - Referral G3/08 42

  42. 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 43

  43. 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

  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? 45

  45. 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

  46. Thank you for your attention!

  47. Annex I: Case Law

  48. 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)

  49. 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 atechnical 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 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. RICOH: T0172/03 (27.11.2003)

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