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Patentability of computer implemented inventions

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Presentation on theme: "Patentability of computer implemented inventions"— Presentation transcript:

1 Patentability of computer implemented inventions
Rodolphe Bauer, Frédéric Dedek, Gareth Jenkins, Cristina Margarido Patent Examiners, EPO October 2013

2 Example: business methods
Agenda Definition: CII Example: business methods 2

3 CII and Business Methods
A Computer Implemented Invention is an invention containing features realised wholly or partially by means of a computer program. A business method has no clear definition, denotes commercial activities, marketing, financial strategies etc. A business method can be a CII or not. Method for selling toys in which toys are placed in low shelves easily accessible by young children.

4 "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 G-II, 3.6 Examples: a program-controlled ... - washing machine cycle; - car braking system. In other words, an invention whose implementation involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realized wholly or partly by means of a computer program is termed a computer-implemented invention. Definition is used by the proposed EU Directive: Directive of the European Parliament and the Council on the patentability of computer-implemented inventions, 24 May 2004, 9713/04 PI 46 CODEC 56 Here are some examples of computer-implemented inventions: a program-controlled ... fault tolerance scheme; washing machine cycle; car braking system. 4 4

5 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 Let‘s start with the meaning of the terms computer program, software and algorithm used with respect to patentability of subject-matter in the field of information technology. A computer program is a sequence of computational steps which may be effectively performed by a digital computer. The steps of a computer program are written in a systematic notation known as a programming language. A computer program is often termed as "the code". The term software is also often used as synonym for computer program. However, for some computer professionals the term software encompasses the media (e.g. diskette, CD or DVD) on which software is stored as well as all kinds of documentation such as books and manuals etc. that are delivered with the computer program. The term 'algorithm' can be defined as a systematic procedure for accomplishing a task in a finite number of steps. In the context of computers, the term algorithm is often used with respect to a set of ordered steps for solving a problem or providing an output from a specific set of inputs. In this context, an algorithm describes the concept underlying a computer program. software: diskette, CD, DVD, manuals 5

6 Computer-implemented Inventions
Algorithm implementation implementation implementation Program for a standard computer Program for a standard computer with specific circuits Specific circuits There are typically many different possible computer implementations of an algorithm. Since it is an algorithm which defines the concept underlying a computer-implemented invention, the scope of protection sought ideally encompasses all computer implementations of an algorithm. In practice, the physical implementation of an algorithm can be performed either through a computer program running on a standard computer, potentially in combination with specific circuits, or through specific circuits alone. As we will see, when an algorithm, wholly or partly implemented in a computer program, defines the underlying concept of an invention, that invention is termed a 'computer-implemented invention'. 6

7 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 Self evident really - if the only thing the program does is one of the other exclusions (e.g. a business method), there is no further technical effect and the program is a program 'as such' and then excluded. In other words, it is decisive what the program does: a game = no a pretty picture = no an image rendering with sharp edge enhancer = yes control of a car diesel injection system = yes A computer program has technical character if the method/ process it carries out has technical character. It also applies to formulations such as a computer running the program or digital medium storing the program. 7 7

8 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. Based on Boards of Appeal decisions, here are some examples of what is considered to be technical: processing physical data in a system which affects the control of an industrial process. processing which affects the way in which a computer operates such as a file compression algorithm Also any physical apparatus such as a computer or any of its components are considered to be technical. 8

9 further technical effect no further technical effect
Computer Programs 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

10 Exclusion Subject-matter is not excluded from patentability
Subject-matter is excluded from patentability Subject-matter Technical character No technical character The exclusion check can be illustrated as follows: As soon as there is at least one technical feature, the whole claim has technical character, and is therefore not excluded from patentability according to Article 52(2) and (3) EPC. If there is no technical character then the claimed subject-matter is excluded from patentability. If a claim has technical character, then, for the assessment of inventive step, there is a need to assess what aspects of the subject-matter claimed contribute to its technical character. Now we will see the relevance of the technical content of a claim with respect to the application of the problem-solution approach during the examination of inventive step at the EPO. At least one feature has technical character => subject-matter has technical character. 10

11 Having technical character, is:
a general and absolute requirement a requirement strictly separated from the other 3 ... but a trivial requirement! T 154/04 (DUNS) T0258/03 Hitachi There is a priori no separation between technical and non-technical part of the claim. Note that T258/03 has made application of Art.52(2)&(3) virtually impossible since even "a pen and paper" is of technical character.

12 Trivial requirement "A method of encouraging customers to be loyal buyers by giving a discount on future purchases." non-technical "A computer implemented method with a database of customers who have previously purchased goods for applying a discount to any subsequent purchase." technical

13 Example from Business Methods
"A method of controlling payment and delivery of content" content provider user Gross domestic product (GDP) refers to the market value of all final goods and services produced in a country in a given period. Regulation: access to content is free if user is from a country with GDP < limit value AND if the requested content is scientific content 13 13

14 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 14

15 Rule 63 EPC: Declaration of No Search
"The EPO also wishes to remind applicants that methods of doing business, as such, are excluded from patentability pursuant to Article 52(2)(c) and (3) EPC. Claims of European patent applications which relate to no more than such methods will not be searched." Official Journal of the EPO 11/2007 p. 592 15 15

16 No technical character
The subject-matter of the example claim defines purely a business or administrative method and does not have a technical character. Search report: invitation under Rule 63(1) declaration under Rule 63(2) Search opinion: objection under Article 52(1) because the claim constitutes subject-matter in the sense of Article 52(2) & (3) Rule 62: Extended European search report Rule 63: incomplete search considered as a search report 16 16

17 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? 17

18 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; - 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 no technical interaction => does not contribute to technical character In this example, a method of ordering is implemented on a computer where the method comprises the following steps: … The claim therefore comprises a clearly technical aspect as well as apparently non-technical aspects. The clearly technical aspect of the claim lies in the following: firstly, the method is implemented in a computer, the adaptation of a computer system for carrying out a method is a technical function; secondly the basic functions of the computer including inputting, storing, and transmitting data have technical character. The method steps however, when considered in isolation from their implementation in a computer system define a business method. Such subject-matter is excluded from patentability under Article52(2)(c). The parts of the claimed features which describe these steps therefore make up these apparently non-technical aspects. On further analysis it is determined that the apparently non-technical aspects do not contribute to the technical character of the invention, since the data processed does not constitute the operating parameters of a computer nor does the data affect the physical/ technical functioning of a computer and the claimed process does not cause a further technical effect and are therefore purely non-technical aspects. The subject matter of the claim defines technical and non-technical aspects and thus has technical character. assessment of novelty and inventive step 18

19 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 G-VII,5: Problem-and-solution approach  In order to assess inventive step in an objective and predictable manner, the so-called "problem-and-solution approach" should be applied. Thus deviation from this approach should be exceptional.   In the problem-and-solution approach, there are three main stages:   (i) determining the "closest prior art",  (ii) establishing the "objective technical problem" to be solved, and  (iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person. Decide whether there is an inventive step Guidelines in the EPO G-VII, 5 19 19

20 'requirements specification'
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 - aware of common general knowledge in information technology - no knowledge of non-technical fields T614/00 COMVIK '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 Once we have established what part of the claimed subject-matter contributes to its technical character and hence describes its technical content, the relevant prior art is established based on this technical content. The Boards of Appeal have interpreted the term ”state of the art” (Article 54) in English text of the EPC to be understood as “state of technology” where it consists of prior art information relevant to some field of technology. The Boards of Appeal therefore concluded that the closest prior art will be chosen from a field of technology and not from a field which belongs to the list of exclusions, like commerce and business methods. A skilled person within the meaning of Article 56 EPC is skilled in a technical field. With respect to computer-implemented inventions typically he is an ordinary practitioner skilled in the field of information technology. He is aware of common general knowledge in the field of information technology at the filing date of the application but has no knowledge whatsoever regarding non-technical fields. Ricoh Headnotes 1 and 2 The term "state of the art" in Article 54 EPC should, in compliance with the French and German text, be understood as "state of technology", which in the context of the EPC does not include the state of the art in commerce and business methods. The term "everything" in Article 54(2) EPC is to be understood as concerning such kind of information which is relevant to some field of technology. From these considerations it follows that anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56, even if it had been made available to the general public before the relevant priority date (see points 8 to 10 of the reasons). 20

21 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 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." T614/00 COMVIK Once the closest prior art has been established and all the technical differences between the subject matter of the claim and the closest prior art are identified, the objective technical problem is formulated from these differences. The problem must be a technical problem, it must actually be solved by the claimed subject-matter, and the problem must be one that the skilled person in the particular technical field might be asked to solve at the date the application was filed. The objective technical problem must not contain pointers to the technical solution or partially anticipate it. However, where a non-technical aim is described in a claim, this aim does not contribute to the technical character, therefore it may appear in the formulation of the technical problem to be solved, in particular as a constraint that has to be met. 21

22 Example II: Inventive Step
Technical character: Non-technical aspects: Requirements specification: Closest prior art: Differences: Skilled person: Objective technical problem: Solution: 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 22

23 Case Law RICOH: T172/03 ( ) 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 provides an objective approach for the assessment of inventive step for computer-implemented inventions taking into account the principles developed in recent case law. It teaches to identify first the aspects of the claimed features which define the non-technological part of the invention, in this case an order management process. Then to identify the clearly technical aspects of the claimed features, in this case a normal distributed office information system. It considered that the claimed invention is distinguished from a normal distributed information system only in terms of functional features and data structures for implementing the essentially business-related aspects and features of the order management method. The claimed technical solution not going beyond the concept of a mere automation of constraints imposed by the business related aspects. Such automation using conventional hardware and programming methods being considered obvious to a skilled person. So we can say, 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 Headnotes 1 and 2 The term "state of the art" in Article 54 EPC should, in compliance with the French and German text, be understood as "state of technology", which in the context of the EPC does not include the state of the art in commerce and business methods. The term "everything" in Article 54(2) EPC is to be understood as concerning such kind of information which is relevant to some field of technology. From these considerations it follows that anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56, even if it had been made available to the general public before the relevant priority date (see points 8 to 10 of the reasons). 23

24 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

25 Case Law HITACHI: T258/03 ( ) 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. In the case of Hitachi the board concluded that method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed. The problem of delays in propagation of information between bidders and a server is a technical problem. However, solving this problem by adapting an auction method such that any data transmission delays become irrelevant is not a technical solution since it only concerns modification to the rules of the auction and not, for example, the delays in propagation of information. 25

26 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). As noted before, frequently features which are clearly technical interact with features which are either in the grey area or are in themselves purely non-technical in a way which renders the interaction itself of technical importance. This should not be ignored but any such interaction should be seriously considered as to whether it results in a technical character aspect. Guidelines G-II; Official Journal 11/2007, p.594 26 26

27 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 Purely non technical features can be discounted as such (but never ignored) and concentration given to what those features which combine in technical character actually do. Sometimes an application will attempt to circumvent a technical problem by defining a different non-technical route. So for instance: If it is very slow to get all 20 layers of administration in a company office to reply sequentially to a heavily encrypted requesting authorisation for paying the electricity bill (noticeable because it keeps going dark), then a non-technical change - say that only two persons must agree to the paying of the bill - does not solve the technical problem. It has been solved by an administrative change which has a knock-on to the technical reality. If however the problem is solved by improving the speed of decryption/encryption and handling at each server, then we may have a patentable invention and must continue on to decide if it is novel/inventive, regardless of the administrative aspect. NO! technical character: no Art. 52(2)(3) Guidelines G-VII, 5.4 Official Journal 11/2007, p.594 27 27

28 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. 28

29 Example III: Inventive Step
Technical character: Non-technical aspects: Requirements specification: Closest prior art: Non-technical differences: Technical 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 communications network capable of determining the location of the terminal. said business method method steps x, y, z data processing expert 1. automate said business method 2. find alternative method for determining geographic location of user 1. automation is obvious 2. obvious? 29

30 Examples – Computer Implemented Inventions
A method of modelling a system using lots of very novel mathematics. A program to do the method of claim 1. A computer running the program of claim 2. A method of designing a power system using modelling and the mathematics of claim 1. A power system designed using the method of claim 4. A52(2)&(3) A54/56 A52(2)&(3) Based on T49/99. 1. A mathematical method as such and/ or presentation of information. It is a normal initial step in the development of any system and has no technical character. As no feature other than the target of the modelling (which is itself not included as a feature) or the manner of implementation of the modelling in a technical system may have technical character, this matter is excluded. 2. A computer program which merely carries out processing of data referring to a non-invention can only be not 'as such' if something other than the normal technical effect is occurring (i.e. the 'further technical effect'. This is not the case in claim 2 so it is excluded. This is a program leading to no technical effect. 3. There is a computer. Computers are known - there is no problem with a technical solution here, so it is not inventive. The computer is leading to no technical effect. 4. A method of modelling or designing a technical thing is excluded (there is the guidelines section with the example of electrical filters on this). As it stands, the only characterising feature is excluded from patentability, thus excluded from patentability as claim 1. 5. The thing designed however, characterised by the system that produced it however does enjoy protection and in this situation the invention can lie in the modelling and design mathematics. Novelty/inventive step consideration will be necessary and this may be of some complexity. A54/56 30 30

31 A computer implemented method of controlling a physical process
Example IV: Computer-implemented method of controlling a physical 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. A computer implemented method of controlling a physical process clearly technical aspect (alleged) non-technical aspects A method of analysing a functional relationship between two parameters comprising: In this example, a computer-implemented method is used to control a physical process by analysing a functional relationship between two parameters. The method comprises a series of mathematical steps which are used to generate data to extend the range of one of said parameters. This range is then used in the control of the physical process. Therefore, the claim appears to be made up of a clearly technical aspect as well as apparently non-technical aspects. The clearly technical aspect of the claim lies in the following two parts: firstly the method is implemented in a computer, the adaptation of a computer for carrying out a method being a clearly technical function; secondly, the method is used in the control of a physical process, the application of a method to control a physical entity having technical character. The mathematical steps in the middle of the claim, when considered in isolation, are non-technical, since they belong to the field of mathematical methods, excluded under Article 52(2)(a), hence these steps form the apparently non-technical aspect of the claimed subject-matter. However, on further analysis it is determined that these steps contribute to the technical character of the invention, since without them, the controlling of the physical process would be impossible. Therefore, these mathematical steps are not purely non-technical and thus are to be considered in the assessment of inventive step. a series of mathematical steps... contributes to technical character wherein the range of one of said parameters is extended in accordance with data generated for use in Test your hypothesis!!! 31 31 31

32 Summary Basic components for the grant of an invention inv. step
technical character inv. step novelty further EPC requirements Art. 52 (2)(3) Art. 54 Art. 56 Basic components for the grant of an invention 32 32

33 Any Questions? Thank you for your attention! 33 33

34 Further Information Brochure by the EPO: Patents for software?
European Law and Practice EPO: WIPO: Experts' Study on Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights WIPO: Experts' Study on Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights 34 34

35 Teach yourself! EPO: e-learning centre
Modules I & II: Patentability of computer-implemented inventions at the EPO free of charge EPO: e-learning centre https://e-courses.epo.org/course/view.php?id=30 This module examines the patentability requirements, legal basis and other criteria in the field of information technology. The first module deals with patentability and exclusions from patentability in Europe and includes examples of patentable and non-patentable subject-matter. The second module discusses the examination of computer-implemented inventions with respect to the requirements of Art. 52 EPC (exclusion, industrial application, novelty and inventive step). Examples of case law and potential wording for claims are also provided. https://e-courses.epo.org/ https://e-courses.epo.org/course/category.php?id=9 35


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