Patentability of computer implemented inventions

October 2013Rodolphe Bauer, Frédéric Dedek, Gareth Jenkins, Cristina MargaridoPatent Examiners, EPO

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Agenda

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1. Definition: CII

2. Example: business methods

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.

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"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

Examples:

a program-controlled ...

- washing machine cycle;

- car braking system.

Guidelines G-II, 3.6

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• FindArrayMax (t[ ], minI, maxI)• { for (I = minI; I<=maxI; I++)• if (max < t[ I ]) max = t [ I ];• return (max);• }

underlyingconcept

software: diskette, CD, DVD,manuals

computer program

get inputs; compute maximum; return the result;

Algorithm

Computer-implemented Inventions

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Computer-implemented Inventions

Algorithm

implem

entation

implem

entationimpl

emen

tatio

n

Program for a standard computer with specific circuits

Program for a standard computer

Specific circuits

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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

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Computer Program - Technical Character?

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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

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Subject-matter is not excluded from patentability

× Subject-matter is excluded from patentability

Exclusion

At least one feature has technical character => subject-matter has technical character.

Technical character

No technical character

Subject-matter

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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

Trivial requirement

"A method of encouraging customers to be loyal buyers by giving a discount on future purchases."

"A computer implemented method with a database of customers who have previously purchased goods for applying a discount to any subsequent purchase."

non-technical

technical

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Example from Business Methods

"A method of controlling payment and delivery of content"

Regulation: access to content is free- if user is from a country with GDP < limit value AND- if the requested content is scientific content

content provideruser

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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.

No

n-t

ecch

nic

al p

roce

ss/ a

spec

ts

Clearly Technical Aspects

none

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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

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No technical character

The subject-matter of the example claim defines purely a business or administrative method and does not have a technical character.

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Search opinion: objection under Article 52(1) because the claim constitutes subject-matter in the sense of Article 52(2) & (3)

Search report: invitation under Rule 63(1)declaration under Rule 63(2)

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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?

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Example II: Computer-Implemented Business Method

Non-Technical Aspects/ ProcessClearly 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;

Same business process as in Example I

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

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Inventive step: problem-and-solution approach

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Identify the closest prior art (CPA)

Formulate an objective technical problem in view of the CPA

Decide whether there is an inventive step

Guidelines in the EPO G-VII, 5

Determine the differentiating features and their technical effects

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Inventive Step

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/ processclearly technical aspects

'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

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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

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Example II: Inventive Step

Technical character:

Non-technical aspects:

Requirements specification:

Closest prior art:

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 communication network

said business method

data processing expert

automate said business method on said computer system

implementation/ automation is considered obvious

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Case Law

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: T172/03 (27.11.2003)

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Inventive Step

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?

TEST YOUR HYPOTHESIS!

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

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Case Law

• 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 delaysbecome irrelevant

=> this is not a technical solution since it only concerns modification to the rules of the auction.

HITACHI: T258/03 (21.04.2004)

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Summary: How to decide on Technical CharacterExample: A method of encouraging customers to be loyal buyers by giving a discount on future purchases. => business method => excluded

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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

Consider whether each feature or their combination lends any technical character to the claim.

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NO!

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

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technical character: no

Art. 52(2)(3) Guidelines G-VII, 5.4Official Journal 11/2007, p.594

technical character: yes

technical difference: inventive?

Art. 56

Does this merit a patent?

• 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.

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Example III: Computer-Implemented Business Method

wherein the geographic location of the user is determined by the IP address of the user terminal using method steps x, y, z.

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Example III: Inventive Step

Technical character:Non-technical aspects:

Requirementsspecification:

Closest prior art:

Non-technical differences:Technical differences:

Skilled person:

Objective technical problem:

Solution:

yesyes

= 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 methodmethod steps x, y, z

data processing expert

1. automate said business method2. find alternative method for determining geographic location of user

1. automation is obvious2. obvious?

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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.

A54/56

A54/56

A52(2)&(3)

A52(2)&(3)

A52(2)&(3)

Examples – Computer Implemented Inventions

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• 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 series of mathematical steps...

wherein the range of one of said parameters is extended in accordance with data generated for use in

A method of analysing a functional relationship between two parameters comprising:

A computer implemented method of

controlling a physical process

clearly technical aspect (alleged) non-technical aspects

contributes to technical character

Example IV: Computer-implemented method of controlling a physical process

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Test your hypothesis!!!

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Summary

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Basic components for the grant of an invention

technical character

inv. step

noveltyfurther EPC

requirements

Art. 52(2)(3)

Art. 54

Art. 56

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Any Questions?

Thank you

for your attention!

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Brochure

by the EPO:

Further Information

Patents for software?European Law and Practice

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WIPO: Experts' Study on Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights - 2010http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=141352

EPO: e-learning centre

Teach yourself!

Modules I & II:Patentability of computer-implemented 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.