Demonstrating Technical Effect
in Software Cases
By
Keith Beresford
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Today’s Discussion
 Why technical effect?
 Software inventions cases in general
 Software implemented business methods
 The Draft EC Directive
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Purpose
“All I want to know is what was in
God’s mind when he created the
world. The rest is detail.” (Einstein)
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Purpose of Patent System
 To encourage new
technologies
 To encourage improvements in technology
 To encourage dissemination of knowledge
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Achieving the Purpose
 A bargain between inventor and public
 For the inventor:
• A monopoly for limited time
• Covering all ways of implementing the
invention
 For the public:
• Invention enters public domain
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Creating the Bargain
 “Letters Patent” = Open Letter
 Statute of Monopolies 1623
• outlawed most monopolies
• permitted monopolies for new technology
 Present Law
• European Patent Convention
• Patents Act 1977
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The Essentials of a Modern
Patent Law
 Defines what may be patented
 Sets out how to obtain a patent
 Requires a (published) specification
• describing invention and implementation
• defining the apparatus or process
monopolised (the claims)
 Defines the rights of the patent owner
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The Nature of the Monopoly
 The right to prevent others from defined
activities
• Making, selling or using the product or
machine
• Importing the product or machine
• Performing the process
• Supplying items for use in infringement
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Patentable Inventions Are
Technical
 This applies to all fields
 It equally applies to software
 A software patent specification must
therefore explain the technical character
of the invention
 Technical problem and solution analysis
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The Patentable Daisy
 Diesel engines are patentable
• Novelty: a daisy embossed on the engine
casing
 Aesthetic effect only
• unpatentable
 Technical effect (e.g. improved cooling)
• patentable
 Technical effect must be disclosed
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Summary
 Specification describes invention and
implementation
 Claims define the apparatus or process
monopolised
• in Europe a combination of “technical
features”
 The law defines activities prohibited
 Technology described enters public
domain when monopoly ends
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Computers and Software
 Three Entities:
• Hardware
• Data
• Software
– control signals determining processes performed
on data
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The Essential Components of a
Computer
 Central processing unit (CPU)
• processes electrical signals representing data
 Mass storage (e.g. hard disk)
• stores data and software (programs)
 Random access memory (RAM)
• stores data signals for processing by CPU
• stores control signals (program) for
controlling CPU
 Input and output units
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Technical Features in General
Structures and Functions
 In the mechanical or electrical fields
• the components of the apparatus
• the functional interaction between them
 In the computer field
•
•
•
•
the components of the apparatus
the components of the program
the functional interaction between them
processes within the computer
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Technical Structures in Software
Cases
 The hardware?
The network?
 Functional program modules and their
location on the network
 Tables, pre-stored data, their structure and
location on network
 Structure of user interface
 Data structures received, stored,
processed and output
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Technical Functions in Software
Cases
 The receipt of data
 Processes within the computer
• the generation and flow of commands (control
signals)
• the flow and transformation of data
• the functional modules called into play and
their responses to events
 The output of data
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Non-technical Features
 Human beings
 Human activities
• mental activity
• manual activity (as distinct from technical
processes taking place as a result of manual
activity)
 Human institutions e.g.
• a bank
• pension fund
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Contents of the Software Patent
 The hardware
 The pre-stored data, tables etc.
 The functional modules of the program
 The data input for processing
 The steps performed by the functional
modules
 The processed data output
 The benefits achieved
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Claims in a Software Patent
 An “apparatus” or “system” claim
• computer containing the novel software
 A “process” claim
• the process which the program performs
 A “program” claim
• storage medium or signal carrying program
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Examples Of Patented Software
 Image Processing - improved image
 Computer Graphics - easier image
manipulation
 Natural Language Processing - generating
internal data structures or commands in
response to natural language input
 Business Management System - improved
screen interface
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More examples
 Speech recognition software
 Trading network
• file distribution to minimise network traffic
 Expert systems for process control
 Neural networks
 Word processors
 Data base management
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A Few General Examples of
Technical Effect
 Higher speed
 More economical use of memory
 More efficient database search strategy
 More effective data compression algorithm
 Improved user interface
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An Example of a Good Disclosure
EP 068,093 B (IBM)
Word Processor Network
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Another Good Example
Business Management System - Improved User
Interface Giving User Convenience When Entering
Data into Different Kinds of File
EP 209,907B (Sohei)
Decision T 92/0769
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The Sohei Claim (abbreviated)

A computer system for plural types of
independent management …… comprising…… a
digital processing unit …… and memory unit……
• the memory unit includes five different kinds of file……
• means for performing five different specified
functions on the files……
• means for causing display of user interface…
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Sohei Reasoning
 The technical contribution
• “to provide, in the memory, the aforementioned
five files and to cause the processing unit to
perform the aforementioned five functions
would clearly require technical
considerations”
 The description necessary
• Structure of the program
• Functions within the computer
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A Non-technical Example
Pension Scheme per se
EP 332,770 (Halley)
Decision T 95/0931
(Application Refused)
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The Pension Scheme
Specification
No disclosure of computer system or structure
and functionality of software for managing the
scheme
 One reference to computer for making certain
calculations.
 No technical features disclosed, no basis for
claims reciting technical features
 No technical effect disclosed

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The Draft EC Directive
 Probably no significant change in what can
be patented
 Will only permit claims to the programmed
computer or the process
 No claims to program on a carrier (e.g. disc)
 Proposal not properly thought out
• practical effects irrational
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Dealings with the Programmed
Computer under Draft Directive
 Infringement in
• manufacture and sale of computer containing
program
• import and export of computer containing
program
• performance of the program (use of the
program)
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Dealings with the Program on a Carrier
under Draft Directive
 “Indirect” infringement by selling disc for
use in the country in which there is a patent
 Export of disc not “direct” or “indirect”
infringement
• no royalty collectable on exported discs
• royalty collectable on discs for use in country
with patent
 Irrational situation
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THAT’S IT
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