Patenting of Computer Implemented Inventions

US West Coast, Oct 2010

Introduction
Who am I? What is the purpose of this presentation? Legal disclaimer

Topics
Computer Implemented Inventions Legal Basis Case Law Evolution Examination Practice Impact on applicants Q&A

Computer-implemented Inventions

method for determining the maximum of a number series

coding

computer program
FindArrayMax (t[ ]) { max = t[1] for (I = 2; I<=t.length; I++) if (max < t[ I ]) max = t [ I ]; return (max); }

Computer-Implemented Inventions

Method

Program for a standard computer

Program for a standard computer with specific circuits

Implementation
Dedicated Computer

Computer-Implemented Inventions

"Computer-implemented invention":
- 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

Legal Basis

What is an Invention?
Art. 52(1)

European patents shall be granted for

- any inventions, in all fields of technology, provided that they - are new - involve an inventive step and - are susceptible of industrial application
A.54 A.56 A.57

Patentable Inventions Patentable Inventions

Legal Basis

Exclusions
A.52(2)
The following, in particular, shall not be regarded as inventions:
a) b) c) 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;

d)

A.52(3)

...excluded only to the extent to which a European patent application relates to such subject matter or activities as such.

Case Law
Vicom T208/84 running a program introduces technical effect Philips T1194/97 structural digital data may be patentable

Koch & Sterzel T26/86 technical effect required IBM T1173/97 programs claims may be patentable if there is a further technical effect Hitachi T258/03 any technical means in claim avoids exclusion of patentability Comvik T641/04 Duns T154/04

non-technical features cannot confer novelty

all claim features contributing to technical character are taken into account

Case Law G3/08 Enlarged Board of Appeal

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program ? 2. Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable storage medium ? 3. 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 a claim ? 4. Does the activity of programming a computer necessarily involve technical considerations ?

Examination Practice - What is technical?

Processing physical data parameters or control values of
an industrial process, e.g. location, time

Processing which affects the way a computer operates

9saving memory, increasing speed

The physical features of an entity

9memory, port etc.

Control of the working of physical machinery

Examination Practice
9 Subject-matter is notof excluded from patentability Exclusion 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.

Example from the Field of 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

Example I: Exclusion
Non-tecchnical process/ aspects CLAIM: 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.

Clearly Technical Aspects

None

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 Art. 52(1) EPC because the claim constitutes subject-matter in the sense of Art. 52(2) & (3) EPC

Example II: Computer-Implemented Business Method

CLAIM: 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.

Example II: Computer-Implemented Business Method

Clearly Technical Aspects 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;
No technical interaction No contribution to technical character

Non-Technical Aspects/ Process

Same business process as in Example I

The subject matter of the claim defines technical and non-technical aspects and thus has technical character. Assessment of Novelty and Inventive Step

2. Assessment of Novelty (Art. 54 EPC)

9 Subject-matter is novel Subject-matter is not novel

Closest Prior Art Closest Prior Art

Technical character No technical character

Claim

All features of the claim known from a single prior art document.

Non-Technical Aspects
Non-technical aspects are aspects that do not interact with the clearly technical aspects of the claim in a way such as to provide a resulting combination that has a different technical character to that defined by the clearly technical aspects alone.

Where any (alleged) non-technical aspect contributes to technical character, it is included in the assessment of inventive step

Inventive?
A non-obvious technical contribution over the prior art in the technical field is necessary
Obvious?

Claim
Technical character No technical character

Closest Prior Art

Those parts of the features making no technical contribution cannot indicate the presence of an inventive step

Examples - US2010/0185486
A method for forecasting demand for transportation services, comprising: running a count-to-demand translation module with a processor on a computer system; at the computer system, receiving a set of count data for at least one vehicle operating to transport passengers along a route with multiple stops, wherein the count data comprises a count of passengers getting on each vehicle at each of the stops and a count of passengers getting off each vehicle at each of the stops; and operating the translation module to determine a demand for pairs of the stops on the route based on the on and the off counts for the at least one vehicle.

Examples - US2010/0185486
computer system #Loci,on translation module #Loci,off CPU

DEMAND

Examples - US2010/0185486
A method for allocating required vehicle transportation capacity along a transportation trajectory, comprising: running a count-to-transportation capacity translation module with a processor on a computer system; at the computer system, receiving a set of count data indicating the number of transportation units loaded and the number of transportation units off-loaded from at least one vehicle at respective stops along said transportation trajectory; and operating the translation module to predict the required vehicle transportation capacity between stops along the trajectory based on said count data; allocating vehicles in accordance with said predicted vehicle transportation capacity.

Example US2006/0274076
A method for a computer system comprises: opening a model of an object, wherein the model comprises a plurality of geometric elements; determining a subset of geometric elements from the plurality of geometric elements of the model; modifying properties of one or more of the geometric elements in the subset of geometric elements to form a modified subset of geometric elements; and using the modified subset of geometric elements to represent the model of the object in the computer system.

model geometric elements properties

presentation of information

object ?

Example US2006/0274076
A method for a computer system comprises: opening a model of an object to be visually rendered on a display, wherein the model comprises a plurality of geometric elements describing the object in multiple dimensions; determining a subset of geometric elements from the plurality of geometric elements of the model; modifying properties of one or more of the geometric elements in the subset of geometric elements to form a modified subset of geometric elements; and using the modified subset of geometric elements to represent the model of the object in the computer system.

Impact on Applicants
Enlarge technical contribution by referring to physical properties (capacity, distance, delay, latency) Solution of a non-technical problem often involves a technical abstraction which may be exploitable Above considerations are only useful when drafting (cannot be added later, added subject-matter)

Thank you for your attention

Acknowledgements: Dai Rees, Jens Ernst, Fritz Seytter

Computer Implemented Inventions

Q&A

T 208/84, VICOM
Description related to a method of improving image quality (e.g. sharpness of edges) by applying a matrix multiplication to digital image data. Claims rejected by examining division merely specified applying the mathematical method to unspecified data in a computer. The board agreed. But, once the claims specified that it was image data, the board allowed the claims. The apparatus claim was also novel (and inventive). A computer loaded with a new program is a new device.

T 26/86, Koch & Sterzel

A computer-controlled X-ray machine - only difference to the prior art was a change in the control program which prolonged the life of the Xray tubes. Whole claim taken into account, no weighting of features, no "Kerntheorie". The invention must have a "technical effect". In contrast to VICOM there was no discussion of the prior art in coming to the conclusion that the invention was not excluded under Article 52(2) and (3) EPC.

Modern case law

T 1173/97, Computer program product / IBM program claims are potentially patentable ... ... if there is a "further technical effect" (an effect going beyond that which any program causes, when run), the contribution approach is abandoned, i.e. the further technical effect is not required to be relative to the state of the art, the technical contribution is to be considered in the assessment of inventive step. T 1194/97, Philips structural digital data is potentially patentable.

Modern case law (cont.)

T 931/95, Pension Benefit Systems T 258/03, Hitachi, and T 424/03, Microsoft step by step to the conclusion that any technical means in a claim is sufficient to avoid exclusion under Article 52(2), (3) EPC, including the carrier in a "program on a carrier" claim. T 641/00, COMVIK T 258/03, Hitachi, and T 154/04, Duns modification of the "problem-and-solution approach" to determine whether there is an "inventive contribution in a field not excluded from patentability".

T 641/00, COMVIK
Allowing a SIM-card (in GSM mobile telephony) to contain two "identities" so that e.g. business and private calls can be billed separately. "An invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character [and not the rest]." "Where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation ... of the technical problem that is to be solved."

T 258/03, Hitachi
"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." Businessman: "I want to do Dutch Auctions on the Web." Techie: "Sorry guv, can't do it. It's the sync'ing, you see." Businessman (after long pause and scratching of head): "Well, could you do me an auction if I change the rules like this ?" (explains new rules). Techie: "No problem."

T 154/04, Duns
A legal-theoretical justification of the COMVIK/Hitachi approach, in response to sniping from across the Channel, in particular Aerotel/Macrossan. The board turned down a request to submit questions (including questions proposed by the judge in Aerotel/Macrossan) to the Enlarged Board of Appeal. As part of its theoretical analysis (i.e. only obiter), comes to the conclusion that "non-technical" features (features not contributing the technical character of the claimed subject-matter) cannot confer novelty.