1. Examination of CII and Business Methods Applications
European Patent Office
Examination of CII and Business Methods Applications
Die Dienststelle Wien
WWW2006
Edinburgh
Dr. Clara Neppel
Examiner
EPO, München

2. Das Europäische Patentamt
European Patent
Office
Das Europäische Patentamt
The European
Patent Office
Service For Industry
and
Public

3. Locations Munich The Hague PschorrHöfe Headquarters Munich
European Patent
Office
CII
Requirements
Examination Practice
Headquarters Munich
Isar building
Brussels
Bureau
Vienna
Berlin

4. Member states European Patent Office CII Requirements
Examination Practice

5. Staff 2004 Munich 3 180 The Hague 2 349 Berlin 275 Vienna 114
European Patent
Office
CII
Requirements
Examination Practice
Munich 3 180
The Hague 2 349
Berlin
Vienna
Total 5 918

6. Procedures before the EPO
EXAMINATION
European Patent Office
European Patent
Office
CII
Requirements
Examination Practice
grant of a European patent
refusal
OPPOSITION
APPEAL
maintenance
revocation
centralised procedure:
examination
opposition
appeal
after validation (translation)
national patents;
national law applies in infringement and nullity proceedings;
important: national courts interpret national law on software protection;
however,
since the establishment of the EPC in 1973:
national jurisdictions have mostly harmonised their patent legislation with EPC;
1. INSTANCE
2. INSTANCE
national bodies
validation in EPO member states
national courts
nullity infringement proceedings
national patents
national law

7. EPO procedure
European Patent
Office
CII
Requirements
Examination Practice
The examining division is responsible for the examination of European patent applications.
=> proceedings ex parte

8. EPO procedure
European Patent
Office
CII
Requirements
Examination Practice
An Opposition Division shall be responsible for the examination of oppositions against any European patent.
=> proceedings inter partes

9. Intellectual Property Rights
The same bottle could be protected
by industrial design for its novel and aesthetic features
by trademark for its distinguishing features
As much as this bottle can be protected by different Intellectual Property Rights, Programs for Computers can also be protected by Copyright, Trademarks and Patents.
I will restrict myself to Copyright and Patents. Trademarks can give additional protection that goes beyond copyright and patents, however, will be limited to identification over products from other enterprises on the market.
Take for example “Windows” with its name and logo and other conspicuous features.
The other possibilities of IP rights do not seem to applicable for programs for computers.
by patent for its technical features such as pressure resistance

10. Copyright & Patent Protection for Software
European Patent
Office
CII
Requirements
Examination Practice
right
copyright
patent
subject-matter
original works
inventions with technical character
software result
program code
documentation
(graphical user interface)
concept / method application of algorithms
protection
reproduction
distribution
communication
modification
(no private use)
production
use
(private use exception)
background info:
As a summary
Copyright protects original work, in software terms program code and documentation against copying, distribution and modification.
Private use is not allowed, the EU copyright directive makes it clear however that reverse engineering (i.e. de-compilation) for interoperability purposes is possible. EU COUNCIL DIRECTIVE of 14 May 1991 on the legal protection of computer programs (91/250/EEC)
'Whereas, nevertheless, circumstances may exist when such a reproduction of the code and translation of its form within the meaning of Article 4 (a) and (b) are indispensable to obtain the necessary information to achieve the interoperability of an independently created program with other programs;
'Whereas the provisions of this Directive are without prejudice to the application of the competition rules under Articles 85 and 86 of the Treaty if a dominant supplier refuses to make information available which is necessary for interoperability as defined in this Directive;
Article 6 De-compilation
1. The authorization of the right-holder shall not be required where reproduction of the code and translation of its form within the meaning of Article 4 (a) and (b) are indispensable to obtain the information necessary to achieve the interoperability of an independently created computer program with other programs, provided that the following conditions are met:
(a) these acts are performed by the licensee or by another person having a right to use a copy of a program, or on their behalf by a person authorized to do so;
(b) the information necessary to achieve interoperability has not previously been readily available to the persons referred to in subparagraph (a); and (c) these acts are confined to the parts of the original program which are necessary to achieve interoperability.

11. IP for Software? Software patent Computer-implemented invention
European Patent
Office
CII
Requirements
Examination Practice
Software patent
is a colloquial expression
might mislead to the assumption that source/object code is patentable
Computer-implemented invention
- Claims which involve computers, computer networks or other conventional programmable apparatus whereby features of the claimed invention are realised by means of a program or programs
Examples: mobile phone, ABS system

12. Claim Example Example:
European Patent
Office
CII
Requirements
Examination Practice
Example:
Method for purchasing and payment of goods and services, preferably audio and/or video data provided on a provider's platform in a computer network, like the Internet, comprising the steps:
- taking a customer's order for goods and services, preferably an order for audio and/or video data files;
- providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and
- debiting a mobile telephone account of the customer.

13. European Patent Convention
Office
CII
Requirements
Examination Practice
What is an Invention?
Art. 52(1)
Patentable Inventions
European patents shall be granted for
- any inventions which
→ A.52(2)(3)
- are susceptible of industrial application
→ A.57, A.52(4)
We have three additional conditions to be satisfied before we grant a patent
industrial applicability
novelty
inventiveness
The Article uses the term “invention” and these conditions are only to be applied to inventions. The EPC does not define “invention” but it tells us something about non-inventions:
background info: US
This is formulated in Article 52, EPC. The corresponding part is found in the US Patent Act which is incorporated in title 35 of the US Code, and there in section 101 which reads:
“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.”
- are new
→ A.54
- and which involve an inventive step.
→ A.56

14. European Patent Convention
Office
CII
Requirements
Examination Practice
What is NOT an Invention?
A.52(2)
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;
In Article 52 paragraphs 2 and 3 it is made clear what is not regarded as being an invention.
The question, of course, that still needs to be answered is:
What is an invention?
a lot of controversy about interpretation of "as such":
could be interpreted as: "any computer programs with implement abstract ideas are excluded from patent protection; computer programs which solve technical problems may be protected by patents, if they fulfil the other criteria of the EPC.
background info:
In the US patent act these issues are explained as statutory subject matter, where 35 U.S.C. 101 defines statutory subject matter as “any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereto.”
A.52(3)
...only to the extent to which a European patent application relates to such subject matter or activities as such.

15. European Patent Law Legal Principle:
Office
CII
Requirements
Examination Practice
Legal Principle:
the patent monopoly must be justified by the technical contribution to the art.

16. European Patent Law - What is an Invention?
Office
CII
Requirements
Examination Practice
Guidelines of the EPO
An invention must be of "technical character" to the extent that it
- must relate to a technical field
- must concern a technical problem
- must have technical features in terms of which the matter for which protection is sought can be defined in the claim
Guidelines: focus on the term "technical"
background:
C-IV, 2.1
items listed as non-inventions are either abstract (e.g. discoveries, scientific theories, etc.) and/ or non-technical (e.g. aesthetic creations or presentations of information)

17. European Patent Law - What is an Invention?
Office
CII
Requirements
Examination Practice
Case Law
Technical character or technical effect are assessed without the knowledge of prior art, i.e. it is not a contribution approach (Computer Program Product T 1173/97; Pension benefit scheme T 931/95)
these decisions from the basis for the approach as we use it for the examination of CII;
which will be explained later;
Decisive is the technical effect of the invention as defined in the claim when considered as a whole (Koch & Sterzel T26/86).

18. European Patent Law – Case Law
Office
CII
Requirements
Examination Practice
What is technical?
Rather than attempting a general definition of the term “technical“, the Board‘s present approach is to stake out, through a series of individual decisions, the grey area requiring interpretation.
no fixed definition;
technology advances over time -> therefore difficult to find an absolute definition which will be valid for a long time;
individual decisions by BoA;
only binding for specific case (relevant first or second instance proceedings);
not binding for other cases: first instance is free to apply/ interpret EPC for themselves;
however, guiding character;

19. Technical is... Technicality processing physical data
European Patent
Office
CII
Requirements
Examination Practice
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.
technical character may be implied by the physical features of an entity
memory, port etc.

20. Technicality
European Patent
Office
CII
Requirements
Examination Practice
Features relating to non-inventions within the meaning of Art. 52 (2) EPC are non technical features.
abstract ideas
selling, trading, insurance
choosing amongst candidates for a job
order placement and management

21. European Patent Law – Case Law
Office
CII
Requirements
Examination Practice
Computer Programs
The computer program, when carried out has to provide a "further technical effect“.
The normal technical effects like flow of electrical current is not sufficient.
use electronic auction example again;
explain further technical effect;
not achieved by el. auction, since merely business rules;
innovation lies only in the field of business;
patent not available for this;
T 1173/97; T 0935/97

22. European Patent Law – EPO Practice
Office
CII
Requirements
Examination Practice
further technical effect
control of a brake in a car
faster communication between mobile phones
secure data transmission (encryption of data)
resource allocation in an operating system
no further technical effect
aesthetical effects of music or a video
new rules for an auction scheme
selling and booking sailing cruise packages
calculation of a pension contributions
examples

23. EPO Practice Example: non technical
European Patent
Office
CII
Requirements
Examination Practice
Example: non technical
A method for evaluating leadership effectiveness, comprising the steps of:
gathering target information quantifying at least one domain selected from the group consisting of having personal convictions, being visionary, building emotional bonds, being inspirational, being team oriented, being a risk taker and having a drive to excel;
comparing the target information with a standard, the standard including standard values of the domain; and
identifying non-standard responses of the target.

24. EPO Practice
European Patent
Office
CII
Requirements
Examination Practice
1. If the subject matter of the claims does not comprise a technical character
object under Article 52(2) and (3)
No prior art search necessary!

25. EPO Practice Example: mix of technical and non-technical
European Patent
Office
CII
Requirements
Examination Practice
Example: mix of technical and non-technical
A method for on-line evaluating leadership effectiveness, comprising the steps of:
- providing an interface for gathering target information quantifying at least one domain selected from the group consisting of ....;
sending this target information to a central server
comparing the target information with a standard stored in the central server, the standard including standard values of the domain; and
the central server identifying non-standard responses of the target.

26. prior art in a field of technology
EPO Practice
European Patent
Office
CII
Requirements
Examination Practice
2. If there is a mix of non-technical and technical features:
prior art in a field of technology
"requirement
specification"
= instructions given to the programmer summarising the requirements of the customer
e.g. a business or administrative process to be automated
skilled person is aware of it
normally found in description & (in summarised form) in claims

27. identify closest prior art in the field of technology
EPO Practice
based on the technical implementation set out in the claims and description:
European Patent
Office
CII
Requirements
Examination Practice
identify closest prior art in the field of technology
IF: so widely known as to be considered as common-place e.g. computer network or general purpose computer
OTHERWISE: search for the closest document describing the technical features.
THEN: no written evidence is necessary to prove its existence
[possible no-search]

28. EPO Practice
European Patent
Office
CII
Requirements
Examination Practice
4. Identify all the differences between the subject matter of the claim and the closest prior art b) a)
if the differences are not technical
if there are none
no objective technical problem
Not novel!
Not inventive!

29. EPO Practice
4. Identify all the differences between the subject matter of the claim and the closest prior art
European Patent
Office
CII
Requirements
Examination Practice
c) if differences contain also technical features
i) formulate the objective technical problem taking into account the requirements specification e.g. "how to adapt system of CPA in order to implement the business concept"
Solution of the objective technical problem must require the technical features of the above identified differences.
ii) if the solution of the technical problem is obvious
Not inventive!

30. EPO Practice Only if also other requirements of the EPC fulfilled
European Patent
Office
CII
Requirements
Examination Practice
Only if also other requirements of the EPC fulfilled
-> GRANT

31. EPO Practice
European Patent
Office
CII
Requirements
Examination Practice
Example:
Method for purchasing and payment of goods and services, preferably audio and/or video data provided on a provider's platform in a computer network, like the Internet, comprising the steps:
- taking a customer's order for goods and services, preferably an order for audio and/or video data files;
- providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and
- debiting a mobile telephone account of the customer.

32. EPO Practice Technical Mixed type claim Requirement specs
European Patent
Office
CII
Requirements
Examination Practice
Technical
Mixed type claim
Requirement specs
Closest prior art ¦
Differences
Technical problem
Yes
Ordering and paying for goods
Platform for downloading audio files from the Internet
Debiting mobile phone account
None
no inventive step involved

33. Requirement Specifications
...return
EPO Practice
European Patent
Office
CII
Requirements
Examination Practice
Requirement Specifications
Method for selling/purchasing audio and/or video data provided on the Internet, where
- a customer's order is taken,
- ordered audio and/or video data files are delivered; and
- a mobile telephone account of the customer is debited.
Method for purchasing and payment of goods and services, preferably audio and/or video data provided on a provider's platform in a computer network, like the Internet, comprising the steps:
- taking a customer's order for goods and services, preferably an order for audio and/or video data files;
- providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and
- debiting a mobile telephone account of the customer.

34. EPO Practice Differences ...return
European Patent
Office
CII
Requirements
Examination Practice
Differences
Method for purchasing and payment of goods and services, preferably audio and/or video data provided on a provider's platform in a computer network, like the Internet, comprising the steps:
- taking a customer's order for goods and services, preferably an order for audio and/or video data files;
- providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and
- debiting a mobile telephone account of the customer.

35. Objective technical problem
...return
EPO Practice
European Patent
Office
CII
Requirements
Examination Practice
Objective technical problem
no objective technical problem can be identified
There is no inventive step involved.

36. EPO Practice
European Patent
Office
CII
Requirements
Examination Practice
Example:
Method for purchasing and payment of goods and services, preferably audio and/or video data provided on a provider's platform in a computer network, like the Internet, comprising the steps:
- taking a customer's order for goods and services, preferably an order for audio and/or video data files;
- providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and
- debiting a mobile telephone account of the customer, whereby the purchase data are at least partially encrypted by a password.

37. EPO Practice Technical Mixed type claim Requirement specs
European Patent
Office
CII
Requirements
Examination Practice
Technical
Mixed type claim
Requirement specs
Closest prior art ¦
Differences |
Technical problem
Solution obvious
Yes
Ordering and paying for goods
Platform for downloading audio files from the Internet
Debiting mobile phone account and encrypting purchase data
Enhance data security
Was encryption known?

38. The outcome - Applications ending with a refusal or a withdrawal:
European Patent
Office
CII
Requirements
Examination Practice
- Applications ending with a refusal or a withdrawal:
in the cluster "computers": over 50%
in the field "electronic commerce": over 70%

39. conclusion
Basic components for the grant of a computer implemented invention
European Patent
Office
CII
Requirements
Examination Practice
Technical character
Technical
contribution
New
further EPC
requirements
Art. 52
(2)(3)
Art. 56
Art. 54

40. European Patent Office http://www.european-patent-office.org/
Guide for applicants
Dr. Clara Neppel
Examiner,
Dir ,