Patentability of computer
implemented inventions
Rodolphe Bauer, Frédéric Dedek,
Gareth Jenkins, Cristina Margarido
Patent Examiners, EPO
October 2013
Agenda
1. Definition: CII
2. Example: business methods
2
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.
"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.
4
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
software: diskette, CD, DVD,
manuals
5
Computer-implemented Inventions
Algorithm
implementation
Program for
a standard computer
Program for
a standard computer
with specific circuits
Specific circuits
6
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
7
Computer Programs
further technical effect
no further technical effect
control of a brake in a car
aesthetical effects of
music or a video
faster communication
between mobile phones
new rules for
an auction scheme
secure data transmission
(encryption of data)
selling and booking sailing
cruise packages
resource allocation in an
operating system
calculation of a pension
contributions
9
Exclusion
 Subject-matter is not 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.
10
Having technical character, is:
• a general and absolute requirement
• a requirement strictly separated from
T 154/04 (DUNS)
the other 3
• ... but a trivial requirement!
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
Example from 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
13
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
Example I: Exclusion
Clearly Technical Aspects
none
14
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
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:
Search opinion:
invitation under Rule 63(1)
declaration under Rule 63(2)
objection under Article 52(1)
because the claim constitutes
subject-matter in the sense of
Article 52(2) & (3)
16
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
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;
Same business process
as in Example I
- 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
=> does not contribute to technical character
The subject matter of the claim defines technical and non-technical aspects and
thus has technical character.
assessment of novelty and inventive step
18
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
Decide whether there is an
inventive step
Guidelines in the EPO G-VII, 5
19
Inventive Step
clearly technical aspects
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
non-technical aspects/ process
'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
20
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 nontechnical 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
21
Example II: Inventive Step
Technical character:
yes
Non-technical aspects:
yes
Requirements
specification:
= business method:
"ordering content and calculating its price"
Closest prior art:
computer system comprising a server,
database, and a terminal which are
connected via a communication network
Differences:
said business method
Skilled person:
data processing expert
Objective technical
problem:
automate said business method on said
computer system
Solution:
implementation/ automation is considered
obvious
22
Case Law
RICOH: T172/03 (27.11.2003)
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.
23
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
24
Case Law
HITACHI: T258/03 (21.04.2004)
•
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.
25
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).
Guidelines G-II; Official Journal 11/2007, p.594
26
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
technical character:
no
Art. 52(2)(3)
NO!
Guidelines G-VII, 5.4
Official Journal 11/2007, p.594
27
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
Example III: Inventive Step
Technical character:
Non-technical aspects:
yes
yes
Requirements
specification:
= business method:
ordering content and calculating its price
Closest prior art:
computer system comprising a server,
database, and a terminal which are connected
via a communications network capable of
determining the location of the terminal.
Non-technical differences:
Technical differences:
said business method
method steps x, y, z
Skilled person:
data processing expert
Objective technical
problem:
1. automate said business method
2. find alternative method for determining
geographic location of user
Solution:
1. automation is obvious
2. obvious?
29
Examples – Computer Implemented Inventions
1. A method of modelling a system using
lots of very novel mathematics.
2. A program to do the method of claim 1.
3. A computer running the program of claim 2.
4. A method of designing a power system using
modelling and the mathematics of claim 1.
5. A power system designed using the method of claim 4.
30
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.
clearly technical aspect
A computer implemented method of
controlling a physical process
(alleged) non-technical aspects
A method of analysing a functional
relationship between two parameters
comprising:
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
Test your hypothesis!!!
31
Summary
inv. step
technical character
Art. 52
(2)(3)
Art. 56
novelty
further EPC
requirements
Art. 54
Basic components
for the grant of an invention
32
Any Questions?
Thank you
for your attention!
33
Further Information
Brochure
by the EPO:
Patents for
software?
European Law
and Practice
WIPO:
Experts' Study on Exclusions from Patentable Subject Matter and
Exceptions and Limitations to the Rights - 2010
http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=141352
34
Teach yourself!
EPO: e-learning centre
Modules I & II:
Patentability of computerimplemented inventions
at the EPO
free of charge
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.