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Demonstrating Technical Demonstrating Technical Effect in Software CasesEffect in Software Cases

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Keith BeresfordKeith Beresford

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Today’s DiscussionToday’s Discussion

Why technical effect?Why technical effect? Software inventions cases in Software inventions cases in

generalgeneral Software implemented business Software implemented business

methodsmethods The Draft EC DirectiveThe Draft EC Directive

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PurposePurpose

““All I want to know is what All I want to know is what was in God’s mind when he was in God’s mind when he created the world. The rest created the world. The rest is detail.” (Einstein)is detail.” (Einstein)

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Purpose of Patent Purpose of Patent SystemSystem

To encourage new technologiesTo encourage new technologies To encourage improvements in To encourage improvements in

technologytechnology To encourage dissemination of To encourage dissemination of

knowledgeknowledge

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Achieving the PurposeAchieving the Purpose

A bargain between inventor and A bargain between inventor and publicpublic

For the inventor:For the inventor:• A monopoly for limited timeA monopoly for limited time• Covering all ways of implementing Covering all ways of implementing

the inventionthe invention For the public:For the public:

• Invention enters public domainInvention enters public domain

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Creating the BargainCreating the Bargain

““Letters Patent” = Open LetterLetters Patent” = Open Letter Statute of Monopolies 1623Statute of Monopolies 1623

• outlawed most monopoliesoutlawed most monopolies• permitted monopolies for new permitted monopolies for new

technologytechnology Present LawPresent Law

• European Patent ConventionEuropean Patent Convention• Patents Act 1977Patents Act 1977

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The Essentials of a The Essentials of a Modern Patent LawModern Patent Law

Defines what may be patentedDefines what may be patented Sets out how to obtain a patentSets out how to obtain a patent Requires a (published) specification Requires a (published) specification

• describing invention and implementationdescribing invention and implementation• defining the apparatus or process defining the apparatus or process

monopolised (the claims)monopolised (the claims) Defines the rights of the patent ownerDefines the rights of the patent owner

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The Nature of the The Nature of the MonopolyMonopoly

The right to prevent others from The right to prevent others from defined activitiesdefined activities• Making, selling or using the product Making, selling or using the product

or machineor machine• Importing the product or machineImporting the product or machine• Performing the processPerforming the process• Supplying items for use in Supplying items for use in

infringementinfringement

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Patentable Inventions Patentable Inventions Are TechnicalAre Technical

This applies to all fieldsThis applies to all fields It equally applies to softwareIt equally applies to software A software patent specification A software patent specification

must therefore explain the must therefore explain the technical character of the invention technical character of the invention

Technical problem and solution Technical problem and solution analysisanalysis

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The Patentable DaisyThe Patentable Daisy

Diesel engines are patentableDiesel engines are patentable• Novelty: a daisy embossed on the engine Novelty: a daisy embossed on the engine

casingcasing Aesthetic effect onlyAesthetic effect only

• unpatentableunpatentable Technical effect (e.g. improved cooling)Technical effect (e.g. improved cooling)

• patentablepatentable Technical effect must be disclosedTechnical effect must be disclosed

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SummarySummary

Specification describes invention and Specification describes invention and implementationimplementation

Claims define the apparatus or process Claims define the apparatus or process monopolisedmonopolised• in Europe a combination of in Europe a combination of “technical “technical

features”features” The law defines activities prohibitedThe law defines activities prohibited Technology described enters public Technology described enters public

domain when monopoly endsdomain when monopoly ends

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Computers and Computers and SoftwareSoftware

Three Entities:Three Entities:• HardwareHardware• DataData• SoftwareSoftware

– control signals determining processes control signals determining processes performed on dataperformed on data

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The Essential Components The Essential Components of a Computerof a Computer

Central processing unit (CPU)Central processing unit (CPU)• processes electrical signals representing dataprocesses electrical signals representing data

Mass storage (e.g. hard disk)Mass storage (e.g. hard disk)• stores data and software (programs)stores data and software (programs)

Random access memory (RAM)Random access memory (RAM)• stores data signals for processing by CPUstores data signals for processing by CPU• stores control signals (program) for stores control signals (program) for

controlling CPUcontrolling CPU Input and output unitsInput and output units

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Technical Features in Technical Features in GeneralGeneralStructures and FunctionsStructures and Functions

In the mechanical or electrical fieldsIn the mechanical or electrical fields• the components of the apparatusthe components of the apparatus• the functional interaction between themthe functional interaction between them

In the computer fieldIn the computer field• the components of the apparatusthe components of the apparatus• the components of the programthe components of the program• the functional interaction between themthe functional interaction between them• processes within the computerprocesses within the computer

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Technical Technical StructuresStructures in in Software CasesSoftware Cases

The hardware? The network?The hardware? The network? Functional program modules and Functional program modules and

their location on the networktheir location on the network Tables, pre-stored data, their Tables, pre-stored data, their

structure and location on networkstructure and location on network Structure of user interfaceStructure of user interface Data structures received, stored, Data structures received, stored,

processed and outputprocessed and output

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Technical Technical FunctionsFunctions in in Software CasesSoftware Cases

The receipt of dataThe receipt of data Processes within the computerProcesses within the computer

• the generation and flow of commands the generation and flow of commands (control signals)(control signals)

• the flow and transformation of datathe flow and transformation of data• the functional modules called into the functional modules called into

play and their responses to events play and their responses to events The output of data The output of data

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Non-technical FeaturesNon-technical Features

Human beingsHuman beings Human activitiesHuman activities

• mental activitymental activity• manual activity (as distinct from technical manual activity (as distinct from technical

processes taking place as a result of processes taking place as a result of manual activity)manual activity)

Human institutions e.g.Human institutions e.g.• a banka bank• pension fundpension fund

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Contents of the Software Contents of the Software PatentPatent

The hardwareThe hardware The pre-stored data, tables etc.The pre-stored data, tables etc. The functional modules of the programThe functional modules of the program The data input for processingThe data input for processing The steps performed by the functional The steps performed by the functional

modulesmodules The processed data outputThe processed data output The benefits achievedThe benefits achieved

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Claims in a Software Claims in a Software PatentPatent

An “apparatus” or “system” claimAn “apparatus” or “system” claim• computer containing the novel softwarecomputer containing the novel software

A “process” claimA “process” claim• the process which the program performsthe process which the program performs

A “program” claimA “program” claim• storage medium or signal carrying storage medium or signal carrying

programprogram

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Examples Of Patented Examples Of Patented SoftwareSoftware

Image Processing - improved imageImage Processing - improved image Computer Graphics - easier image Computer Graphics - easier image

manipulationmanipulation Natural Language Processing - Natural Language Processing -

generating internal data structures or generating internal data structures or commands in response to natural commands in response to natural language inputlanguage input

Business Management System - Business Management System - improved screen interfaceimproved screen interface

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More examplesMore examples

Speech recognition softwareSpeech recognition software Trading network Trading network

• file distribution to minimise network file distribution to minimise network traffictraffic

Expert systems for process controlExpert systems for process control Neural networksNeural networks Word processorsWord processors Data base managementData base management

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A Few General A Few General Examples of Technical Examples of Technical EffectEffect Higher speedHigher speed More economical use of memoryMore economical use of memory More efficient database search More efficient database search

strategystrategy More effective data compression More effective data compression

algorithmalgorithm Improved user interfaceImproved user interface

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An Example of a Good An Example of a Good DisclosureDisclosure

EP 068,093 B (IBM)EP 068,093 B (IBM)

Word Processor NetworkWord Processor Network

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Another Good ExampleAnother Good ExampleBusiness Management System - Improved Business Management System - Improved User Interface Giving User Convenience User Interface Giving User Convenience When Entering Data into Different Kinds When Entering Data into Different Kinds of Fileof File

EP 209,907B (Sohei)EP 209,907B (Sohei)

Decision T 92/0769Decision T 92/0769

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The Sohei Claim The Sohei Claim (abbreviated)(abbreviated)

A computer system for plural types of A computer system for plural types of independent management …… independent management …… comprising…… a digital processing unit comprising…… a digital processing unit …… and memory unit………… and memory unit……• the memory unit includes five different the memory unit includes five different

kinds of file……kinds of file……• means for performing five different specified means for performing five different specified

functions on the files……functions on the files……• means for causing display of user means for causing display of user

interface…interface…

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Sohei ReasoningSohei Reasoning

The technical contributionThe technical contribution• ““to provide, in the memory, the to provide, in the memory, the

aforementioned five files and to cause aforementioned five files and to cause the processing unit to perform the the processing unit to perform the aforementioned five functions would aforementioned five functions would clearly require technical considerations”clearly require technical considerations”

The description necessaryThe description necessary• Structure of the programStructure of the program• Functions within the computerFunctions within the computer

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A Non-technical ExampleA Non-technical ExamplePension Scheme Pension Scheme per seper se

EP 332,770 (Halley)EP 332,770 (Halley)

Decision T 95/0931Decision T 95/0931

(Application Refused)(Application Refused)

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The Pension Scheme The Pension Scheme SpecificationSpecification

No disclosure of computer system or No disclosure of computer system or structure and functionality of software structure and functionality of software for managing the schemefor managing the scheme

One reference to computer for making One reference to computer for making certain calculations.certain calculations.

No technical features disclosed, no No technical features disclosed, no basis for claims reciting technical basis for claims reciting technical featuresfeatures

No technical effect disclosedNo technical effect disclosed

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The Draft EC DirectiveThe Draft EC Directive

Probably no significant change in Probably no significant change in what can be patentedwhat can be patented

Will only permit claims to the Will only permit claims to the programmed computer or the processprogrammed computer or the process

No claims to program on a carrier No claims to program on a carrier (e.g. disc)(e.g. disc)

Proposal not properly thought outProposal not properly thought out• practical effects irrationalpractical effects irrational

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Dealings with the Dealings with the Programmed Computer Programmed Computer under Draft Directiveunder Draft Directive

Infringement in Infringement in • manufacture and sale of computer manufacture and sale of computer

containing programcontaining program• import and export of computer import and export of computer

containing programcontaining program• performance of the program (use of performance of the program (use of

the program)the program)

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Dealings with the Program Dealings with the Program on a Carrier under Draft on a Carrier under Draft DirectiveDirective

““Indirect” infringement by selling disc Indirect” infringement by selling disc for use in the country in which there is for use in the country in which there is a patenta patent

Export of disc not “direct” or “indirect” Export of disc not “direct” or “indirect” infringementinfringement• no royalty collectable on exported discsno royalty collectable on exported discs• royalty collectable on discs for use in royalty collectable on discs for use in

country with patentcountry with patent Irrational situationIrrational situation

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THAT’S ITTHAT’S IT