Slide 1

Novelty and Inventive Step in the Field of CII Edoardo Pastore European Patent Office Torino, 13-14 October 2011 Slide 2 2 The presentation and in particular the treatment of the examples reflects the personal opinion of the authors and does in no means prejudice any Examination Division or Opposition Division working on related applications. Disclaimer: 2 Slide 3 Computer Patents in Europe Keywords to detect use of computers: CPU, processor unit, data carrier, data structure, software, computer, mirco-processing, Internet, e-mail 3 D.Closa et.al. Patent Law for Computer Scientists Springer-Verlag Berlin Heidelberg 2010 total using IT Slide 4 Computer Patents in the USA 4 D.Closa et.al. Patent Law for Computer Scientists Springer-Verlag Berlin Heidelberg 2010 total using IT Slide 5 Classification tree G06Q: G06Computing, calculating, counting G06QData processing systems or methods, specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes G06Q10 Administration G06Q20 Payment schemes G06Q30 Commerce G06Q40 Finance Development of business methods in Europe 5 D.Closa et.al. Patent Law for Computer Scientists Springer-Verlag Berlin Heidelberg 2010 applications negative grants State Street Bank Decision, USA Slide 6 Three main criteria for patentability: novelty inventive step industrial application An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. 6 Problem solution approach Slide 7 Inventive Step "Problem and solution approach" (Guidelines C-IV 9.4): What is the technical contribution? Determine the closest prior art What is the difference in claimed features between the invention and the closest prior art? Identify the technical effects of said difference. Which objective technical problem is solved by these effects? Is the technical contribution obvious? Would the solution of the technical problem be obvious to the skilled person given the state of the art? 7 Slide 8 Example - 1 An application is filed: 8 Slide 9 Example - 2 9 Slide 10 The problem solution approach is the way to assess the inventive step: Example 3 Problem solution approch Identify the closest prior art and the differences with the application Formulate the objective technical problem how to browse the information when the telephone is closed, in a way that a user can only with an hand, both carry the telephone and browse the information Slide 11 Example of a Procedure 4 Problem solution approch The person skilled would combine: + = Slide 12 12 Agenda 12 1.Definition: CII 2. Example: business methods Slide 13 13 "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 C-IV, 2.3.6 Slide 14 14 FindArrayMax (t[ ], minI, maxI) { for (I = minI; I 18 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 18 Slide 19 19 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 provider user 19 Slide 20 20 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. Non-tecchnical process/ aspects Clearly Technical Aspects none 20 Slide 21 21 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 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) 21 Slide 22 22 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? 22 Slide 23 23 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 23 Slide 24 Inventive step: problem-and-solution approach 24 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 C-IV, 11.5 Determine the differentiating features and their technical effects Slide 25 25 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/ process clearly 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 25 Slide 26 26 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 26 Slide 27 27 Example II: Inventive Step Technical character: Non-technical aspects: Requirements specification: Closest prior art: Differences: Skilled person: Objective technical problem: Solution: 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 27 Slide 28 28 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) 28 Slide 29 29 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 Slide 30 30 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 delays become irrelevant => this is not a technical solution since it only concerns modification to the rules of the auction. HITACHI: T258/03 (21.04.2004) 30 Slide 31 31 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 31 If the claim has no technical character at all then it is excluded from patentability under Art. 52(2)&(3). Guidelines C-IV, 2; Official Journal 11/2007, p.594 Consider whether each feature or their combination lends any technical character to the claim. Slide 32 32 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 32 technical character: no Art. 52(2)(3) Guidelines C-IV, 11.5.2 Official Journal 11/2007, p.594 technical character: yes technical difference: inventive? Art. 56 Does this merit a patent? Slide 33 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. 33 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. 33 Slide 34 34 Example III: Inventive Step Technical character: Non-technical aspects: Requirements specification: Closest prior art: Non-technical differences: Technical differences: Skilled person: Objective technical problem: Solution:yes = 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 method method steps x, y, z data processing expert 1. automate said business method 2. find alternative method for determining geographic location of user 1. automation is obvious 2. obvious? 34 Slide 35 35 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 A52(2)&(3) Examples Computer Implemented Inventions 35 Slide 36 36 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 36 Test your hypothesis!!! Slide 37 37 Summary 37 Basic components for the grant of an invention technical character inv. step novelty further EPC requirements Art. 52 (2)(3) Art. 54 Art. 56 Slide 38 38 Any Questions? Thank you for your attention! 38 Slide 39 39 Brochure by the EPO: Further Information Patents for software? European Law and Practice 39 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