Patentability of Computer Implemented Inventionsat the European Patent Office

Daniel ClosaPatent Examiner, 2.2.21, Cluster ComputersEuropean Patent Office

28 April, 2009

LYON

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The presentation and in particular the treatment of the examples reflects the personal opinion of the author and does in no means prejudice any Examination Division or Opposition Division working on related applications.

Disclaimer:

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Agenda

1. Computer-Implemented Inventions

2. Legal Background

3. Examination Practice and Case Law

4. Case Law for Computer Programs

5. PPN 03/06 - Types of Claims

6. PPN 08/08 - Referral G3/09

Annex I: Case Law

Annex II: Classification - Business Methods

Examples

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1. Computer Implemented Inventions

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• FindArrayMax (t[ ], minI, maxI)• for (max = t[minl], l = minl + 1;

l<=maxl; l++)• 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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"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 – PPN 11/06

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2. Legal Background

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European Patent Convention

Patentable InventionsPatentable Inventions

European patents shall be granted for - any inventions, in all fields of technology,

Art. 52(1)

→ A.57

→ A.54

→ A.56

→ A.52(2)(3)

- involve an inventive step and

- are susceptible of industrial application

- are new

What is an Invention?

provided that they

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European Patent Convention

A.52(3)

A.52(2)What is NOT an Invention?

a) discoveries, scientific theories, mathematical methods;

The following, in particular, shall not be regarded as inventions:

...only to the extent to which a European patent application relates to such subject matter or activities as such.

c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

b) aesthetic creations;

d) presentations of information;

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What is an Invention?

Guidelines for Examination in

the EPO

Case Law of the

Boards of Appeal

There is no positive definition of the term "invention" in the EPC.

Interpretation

EPC European Patent

Convention

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Non-Inventions

- Narrow Interpretation

- Activities falling within the notion of a non-invention would typically represent purely abstract concepts devoid of any technical implication.

- A non-invention has no technical character

T 258/03 (HITACHI)

What is an Invention?

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Technical Character

- no general definition of „technical“

- interpret grey areas

- series of individual Board's of Appeal decisions

Further requirement for patentabilityimplicitly contained in the EPC:

the invention must be of "technical character" to the extent that it - must relate to a technical field → R.42(1)(a) EPC

- must concern a technical problem → R.42(1)(c) EPC - must have technical features in terms of which the matter for which protection is sought can be defined in the claim → R.43(1) EPC

Guidelines, C-IV 1.2

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Technical is...

processing physical data parameters or control values of

an industrial process

processing which affects the way a computer operates

saving memory, increasing speed

security of a process, rate of data transfer etc.

the physical features of an entity

memory, port etc.

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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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3. Examination Practice and Case Law

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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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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: Declaration under Rule 63

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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 interactiondoes not contribute to technical character

The subject matter of the claim defines technical and non-technical aspects and thus has technical character.

assessment of inventive step

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Inventive Step

Problem Solution Approach

• Establish closest prior art

• Determine differentiating features and their technical effects

• Formulate an objective technical problem

• Decide whether the proposed solution is obvious for the skilled person

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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; has general programming skills

- 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 programmer summarising the requirements of the customer

i.e. business or administrative process to be automated

≠ state of the art

T172/03 RICOH

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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: T0172/03 (27.11.2003)

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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.

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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 user.

said business methodmethod steps x, y, z

data processing expert

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

1. automation is obvious2. obvious?

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Example: Computer-Implemented Control 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.

A computer implemented method of

controlling a 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:

Clearly Technical Aspect (alleged) Non-Technical Aspects

Contributes to technical character

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4. Computer Programs

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C-II, 4.15 Computer programs

• program listings in programming languages cannot be relied on as the sole disclosure of the invention

• description: - to be written substantially in normal language, possibly by flow diagrams - to be understood by a skilled person having general programming skills

• short excerpts from programs written in commonly used programming languages can be accepted if they serve to illustrate an embodiment of the invention

Guidelines

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Guidelines

C-IV, 2.3.6 Programs for Computers – PPN 11/06

Basic patentability considerations in respect of claims for computer programs are in principle the same as for other subject-matter.

If the claimed subject-matter has a technical character it is not excluded from patentability by provision of Art. 52(2).

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Computer Programs

- With regard to Art. 52(2) & (3), it does not make a difference whether a computer program is claimed by itself or as a record carrier.

- The combination of Art. 52(2) & (3) demonstrates that the legislators did not want to exclude from patentability all programs for computers.

- Interpretation of “as such”: programs for computer must be considered as patentable inventions when they have a technical character.

- Physical modifications of the hardware, causing e.g. the flow of electrical currents, cannot per se constitute the technical character.

- If computer program produces a “further technical effect” or solves a technical problem, it is considered as an invention in the sense of Art. 52(1).

IBM: T1173/97 (01.07.1998) & T935/97 (04.02.1999)

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Computer Programs

- The hardware on which the program is intended to run is outside the invention, i.e. the hardware is not part of the invention.

- The effect only shows in physical reality when the program is being run. Thus, it only possesses the “potential” to produce said effect.

- A computer program product may therefore possess a technical character because it has the potential to cause a further effect.

IBM: T1173/97 (01.07.1998) & T935/97 (04.02.1999) – cont.

- Computer program products are not excluded from patentability under all circumstances.

- A computer program product which (implicitly) comprises all the features of a patentable method is therefore in principle considered as not being excluded from patentability under Art. 52(2) and (3).

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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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5. Types of Claims

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Guidelines

C-III, 3.1 - Claim Categories

There are only two basic kinds of claim:

1. claims to a physical entity (product, apparatus) -> "product claim" 2. claims to an activity (process, use) -> "process claim”

For many inventions, claims in more than one category are needed for full protection.

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Types of Claims - PPN 03/06

1. A method of operating a data processing system comprising steps A, B ... .

2. a) A data processing apparatus/ system comprising means for carrying out the method of claim 1.

b) A data processing apparatus/ system comprising means for carrying out steps A, means for carrying out step B ... .

3. a) A computer program [product] adapted to perform the method of claim 1.

b) A computer program comprising software code adapted to perform steps A, B...

4. a) A computer readable storage medium comprising the program of claim 3.

b) A computer readable storage medium comprising instructions to cause a dataprocessing apparatus to carry out steps A, B ....

5. Data structures, signals, etc (see e.g. T 1194/97)

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Types of Claims - PPN 03/06

1. Claim types 3 (program) and 4 (storage medium) are of the same nature, and both are a consequence of T1173/97. Independent claims of these two types may nevertheless exist together without infringing Rule 43(2).

2. Claims types 2, 3 and 4 can be allowed as additional independent claims if the method claim (type 1) is allowable (T1173/97).

3. Apparatus/ system claims (type 2) are not excluded under Art. 52(2) and (3) (T931/95).

4. Method claims involving technical means are not excluded under Art. 52(2) and (3) (T258/03).

5. Non-technical activities (performing mental act or doing business) do not avoid exclusion merely through their routine implementation as a computer program (T1173/97).

6. Claims of type 5 can be allowed in specific cases (T1194/97).

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Druckexemplar: IBM 1173/97

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Druckexemplar: IBM 1173/97

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6. PPN 08/08 - Referral G3/08

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PPN 08/08 - Referral G3/08 - Patentability of programs for computers

Requirements for staying the proceedings:

Proceedings shall be stayed until the EBoA has issued its opinion only if:

• at least one of the parties to the proceedings explicitly requests staying of the proceedings, and

• the division is of the opinion that the outcome of the proceedings depends entirely on the opinion of the EBoA.

• request of the party should be sufficiently substantiated• rejection of such a request should be substantiated• as should be the granting if it has been objected by another party

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PPN 08/08 - Referral G3/08 - Patentability of programs for computers

Question 1:Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

Question 2a:Can a claim ... avoid exclusion under Art. 52(2)(c) and (3) merely be explicitly mentioning the use of a computer or computer-readable storage medium?

-> Art. 52(2)(3) EPC?

-> Art. 52(2)(3) EPC or Art. 52(1)?

The following questions have been referred to the EBoA:

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PPN 08/08 - Referral G3/08 - Patentability of programs for computers

Question 4:Does the activity of programming a computer necessarily involve technical considerations?

Question 3a:Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

-> technical effect only possible on "hardware" or also "within software"?

-> Art. 52(2)(3) or Art. 52(1) EPC?

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PPN 08/08 - Referral G3/08 - Patentability of programs for computers

Which cases are affected?• European patents and applications• PCT and national applications are not concerned

at search stage: • requests made during the search stage should not be granted• search report and ESOP should be drawn up• request should not be addressed in ESOP

procedure to follow (for details see PPN 08/08): • granting the request: Form 2081A• denying the request: reasoning to be included in the next

communication

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Thank you

for your attention!

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Annex I: Case Law

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Annex I: Case Law: Computer-Implemented Inventions

• T 769/92 General purpose management/ SOHEI (31.05.1994)

• T 1173/97 Computer program product/ IBM (01.07.1998)

• T 935/97Computer program product/ IBM (04.02.1999)

• T 931/95 Pension benefit system/ PBS (08.09.2000)

• T 641/00 Two identities/ COMVIK (26.09.2002)

• T 172/03 Order management/ RICOH (27.11.2003)

• T 258/03 Auction method/ HITACHI (21.04.2004)

• T 1242/04 Rule 45 EPC1973/ MAN (20.10.2006)

• T 154/04 Gathering of data / DUNS LICENSING (15.11.2006)

• T 717/04 non-technical features & novelty (28.02.2007)

• G2/88 non-technical features & novelty (11.12.1989)

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Annex I: Case Law

- Features making no contribution to technical character cannot support the presence of inventive step (e.g. cost distribution).

- Claimed subject-matter: identify the technical content

- Closest prior art: related to a technical field

- Person skilled in the art: expert in a technical field

- Objective problem: realistic technical problem

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.

COMVIK: T0641/00 (26.09.2002)

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Annex I: 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: T0172/03 (27.11.2003)

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Annex I: 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

• Not a technical solution since it only concerns modification to the rules of the auction.

HITACHI: T0258/03 (21.04.2004)

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Annex I: Case Law

T 914/02 core loading arrangement/ GENERAL ELECTRIC (12.07.2005)

Having technical character is an implicit requirement of the EPC to be met by an invention within the meaning of Article 52(1) EPC.

The involvement of technical considerations, however, is not sufficient for a method which may exclusively be carried out mentally to have technical character.

Technical character may be provided through the technical implementation of the method, resulting in the method providing a tangible, technical effect, such as the provision of a physical entity as the resulting product or a non-abstract activity, such as through the use of technical means.

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T0208/84 VICOM

Image processing

a claim directed to a technical process in which a mathematical method is used is not a mathematical method as such because the algorithm is not merely carried out on numbers but on physical entities.

Mathe-matical Method

T0026/86 KOCH&STERZEL X-ray apparatus

X-ray apparatus incorporating a data processing unit; controls the X-ray tubes so that by establishing a certain parameter priority, optimum exposure is combined with adequate protection against overloading of the X-ray tubes. A mixture of technical and non-technical features is not excluded from patentability if the invention as a whole has a technical effect.

Apparatus involving Software

T0769/92 SOHEI

Computer aided management system

computer system for plural types of independent management including at least financial and inventory management comprising ... a single transfer slip (entry form) having a format commonly used for at least financial and inventory management ... various files ... and various processing means. The single transfer slip is regarded as user interface, i.e. technical considerations have been made. Software is not merely a computer program as such, if technical considerations are to be made for implementing the solution.

Computer System

T1173/97 IBM

Asynchronous resource recovery in a computer system

T0935/97 IBM

Windowing System

A computer program only causing inherent technical effects, i.e. those caused by any computer program, is considered a computer program as such.

A computer program product having the potential to cause a further technical effect is not excluded from patentability.

A computer program product which (implicitly) comprises all the features of a patentable method (for operating a computer for instance) is therefore not excluded from patentability and it does not make any difference whether a computer program is claimed by itself or as a record on a carrier.

Computer program product

Annex I: Case Law