One source of frustration with a time-based charging structure (“billable hours”) is that it is difficult to accurately estimate how long a piece of work will take. This post looks at ways we can address this. (Or at least puts down my thoughts on virtual paper .)
Many professional services are priced based on an hourly (or day) rate. This is true of private practice patent attorneys. Although there are critics, the persistence of the billable hour suggests it may be one of the least worst systems available.
Most day-to-day patent work in private practice consists of relatively small items of work. Here “small” means around £1k to £10k, as compared to the £1m cases or transactions of large law firms. These small items of work typically stretch over a few weeks or months.
When performing patent work an unforeseen issue or a overly long publication can easily derail a cost estimate. For example, it is relatively easy to find that a few more hours are needed after looking into an examiner objection or piece of prior art in more detail. This often presents a lose-lose situation for both attorney and client – the work needs to be done, so either the attorney has to cap their charges in line with an estimate or the client needs to pay above an estimate to complete the job. This is not just an issue for patent attorneys – try comparing any quote from a builder or plumber with the actual cost of the work.
This got me thinking about taxis. They have been around for a while, and recent services like Uber offer you a price on your phone that you then accept. This is a nice system for both customer and driver – the customer gets a set price and likewise the driver gets a fare proportional to her time. Could something like that work for patent work?
For taxi services, the underlying variable is miles (or kilometres depending on your Brexit stance). A cost is calculated by adding a mile-based rate to a basic charge, with minimum and cancellation charges.
For patent work, one underlying variable is words. Take an examination report (or “office action”). The amount of time it takes to respond to novelty and inventive step objections is typically proportional to the length of the patent specification in question, the number of claims and the number of prior art citations.
Now, we can use EPO OPS to retrieve the full text of a patent application, including description and claims. We can also retrieve details of citations and their relevance to the patent application (e.g. category ‘X’, ‘Y’ or ‘A’). I am working on parsing PDF documents such as examination reports to extract the text therein. In any case, this information can be quickly entered from a 5 minute parse of an examination report.
Wikipedia also tells me that an average reading rate for learning or comprehension is around 150-200 words per minute.
This suggests that we can automate a time estimate based on:
- Words in the description of a published patent application – WPA (based on a need to read the patent application);
- Number of claims – NCPA (applications with 100s of claims take a lot longer to work on);
- Words in the claims – WCPA (claims with more words are likely to take more time to understand);
- For each relevant citations (category ‘X’ or ‘Y’ – this could be a long sparse vector) :
- Words in the description of the citation – WCITx (as you need to read these to deal with novelty or inventive step objections); and
- A base time estimate multiplied by the number of objections raised – BTo (possibly weighted by type):
- E.g. x amount of time per clarity objection, y amount of time per novelty objection.
Even better we need not work out the relationship ourselves. We can create a numeric feature vector with the above information and let a machine learning system figure it out. This would work based on a database of stored invoicing data (where an actual time spent or time billed amount may be extracted to associate with the feature vector).
The result would be an automated system for pricing an examination report response based on publically available data. We could host this on Heroku. By doing this we have just created a marketplace for patent responses – a single weight could be used by patent firms to set their pricing.
Similar pricing models could also be applied to patent drafting. The cost of a draft may be estimated based on a set length, number of drawings, number of claims, number of independent claims, length of invention disclosure and length of known prior art. The variables for a response are similar for a European opposition or an appeal, just with different weights and expanded feature vectors to cover multiple parties.
This would yield a compromise between billable hours and fixed fees. For example, a variable yet fair fixed fee estimate may be generated automatically before the work is performed. The client gets predictability and consistency in pricing. The attorney gets paid in proportion to her efforts.
The European Patent Office has now published a case law summary for 2014 as Official Journal supplementary publication 4/2015. Sections I-C-4.1, I-C-5.1, II-A-1, and II-E-1.4 discuss case law that relates to computer-related inventions. The relevant passages are extracted and commented on below.
T 407/11 held that the relevant skilled person in the context of providing computer-system users with operating assistance via a user interface (e.g. error messages or warnings) was an expert in software ergonomics concerned with the userfriendliness of human-machine interfaces rather than an expert in software programming or in computer technology in the strict sense.
The objective problem to be solved by that skilled person was to prevent a situation whereby the user’s action caused an electronic data-processing system to execute a called function differently from intended (or even to fail to execute it at all).
In the board’s view, however, the technical effect claimed in the application (simpler operation of an object-oriented user interface, facilitating initial use and subsequent familiarisation, especially for beginners or upgrading users, and so making the resulting method easier and more intuitive to learn) could not be considered a directly derivable consequence of the distinguishing features, because attributes such as “simpler operation” or “easy and intuitive familiarisation” were generally subjective, i.e. depended on the user’s individual preferences and experience or intellectual capabilities, while the classification of users as “beginners”, “upgraders” or “advanced” was generally based on a variety of criteria which were not clearly defined.
This suggests that providing objective definitions of technical effects (e.g. millisecond time savings) may help to support an inventive step under European practice. It also further indicates a need to avoid reference to “user”-based advantages.
Applications of Algorithms
In T 2035/11 the application mainly related to navigation systems that could be tailored to a user’s particular wishes. The focus of the application was on the route-planning functionality of a navigation system.
The board held that the subject-matter of claim 1 lacked an inventive step within the meaning of Art. 52(1) and 56 EPC. It noted that mathematical algorithms may contribute to the technical character of an invention only in so far as they serve a technical purpose (see e.g. decision T 1784/06). The purpose of the algorithm was the mere display of an optimal path to the user for cognitive processing. The user could act on the information, but did not need to.
As stated in decision T 1670/07, a technical effect may arise from either the provision of data about a technical process, regardless of the presence of the user or its subsequent use, or from the provision of data (including data that on its own is excluded, e.g. produced by means of an algorithm) that is applied directly in a technical process.
In the case at issue, the data was produced by means of an algorithm and was not applied directly in a technical process, so neither possibility applied.
Warning on Generalisation
In T 2231/09 the patent in suit concerned a method of representing and analysing images. Claim 1 of the main request set out that “… at least one said descriptor element is derived using only a subset of pixels in said image.”
The board considered the expression “subset of pixels” to be problematic under Art. 84 EPC 1973 and stressed that, while a certain degree of generalisation may be permitted, features as claimed should make it possible to clearly identify features of embodiments that are covered by the terms of a claim. Moreover, the generalised subject-matter as claimed should make it possible to understand the technical problem to be solved.
When amending claim 1, the applicant had put forward a new interpretation according to which a “region” could mean the whole image, and a “subset” could correspond to all pixels of the region. The board considered this interpretation to be inconsistent with essential parts of the described embodiments, according to which a subset corresponded to only some of the pixels of a region. The subject-matter of claim 1 was thus unclear when interpreted in the light of the description.
The board also stated that the requirements of clarity and support by the description in Art. 84 EPC 1973 were designed to reflect the principle that the terms of a claim should be commensurate with the invention’s technical contribution to the art. Taking into account the description, the board regarded the division of the image into regions and subsets as essential for achieving the technical effect underlying the invention. Therefore, the subject-matter of claim 1 was not supported by the description. The board concluded that claim 1 did not comply with Art. 84 EPC 1973.
This indicates the need, when drafting claims for computer-related inventions, to provide clear and unambiguous definitions of terms used within the claims. This is especially important when features of the claims relate to abstract entities, e.g. data within a data processing system.
Added Subject Matter and Features without Technical Contribution
In T 1779/09 the board considered that the appellant had found itself exactly in the situation envisaged in decision G 1/93 (OJ 1994, 451). As emphasised in Headnote II of G 1/93, “a feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Art. 123(2) EPC.” These principles were confirmed in G 2/98 (OJ 2001, 413) and G 2/10 (OJ 2012, 376). The board in the case at issue concluded that a limiting feature which generally would not be allowable under Art. 123(2) EPC could, under certain conditions, nevertheless be maintained in the claim of an opposed patent in the particular situation addressed in decision G 1/93. It then complied with Art. 123(2) EPC by way of a legal fiction. In the case at issue, the term “only” was introduced during the examination proceedings and successfully objected to under Art. 100(c) EPC in proceedings before the opposition division by the former respondent. Since the board considered the term to be truly limiting, its deletion would extend the protection conferred and thereby infringe Art. 123(3) EPC. However, the board held that the exclusive limitation did not influence the solution of the technical problem as understood from the application as originally filed, and hence provided no technical contribution to the claimed invention (see also decision T 384/91, Headnote II). It merely excluded protection of part of the invention described in the application, thus not giving any unwarranted advantage to the applicant. Claim 1 of the appellant’s sole request was therefore deemed to comply with Art. 123(2) EPC.
The USPTO issued updated guidance on Patent Subject Matter Eligibility (i.e. things you can get a patent for in the US) at the end of July.
The materials are fairly dense and help address some of the criticisms raised by applicants. Further explanations of the approach are provided as well as an expanded list of examples.
Reading between the lines, it appears the USPTO is moving towards a position that is harmonised with European, Chinese and UK approaches on excluded subject matter.
Having a relatively simple mind, I found the following page from the guidance summary useful.
One thing I have been trying to do recently is to connect together a variety of information sources. This has inevitably involved Python.
Due to the Windows-centric nature of business software, I have also needed to setup Python on a Windows machine. Although setting up Python is easy on a Linux machine it is a little more involved for Windows (understatement). Here is how I did it.
- First, download and install one of the Python Windows installers from here. As I am using several older modules I like to work with version 2.7 (the latest release is 2.7.8).
- Second, if connecting to a Microsoft SQL database, install the Python ODBC module. I downloaded the 32-bit version for Python 2.7 from here.
- Third, I want to install IPython as I find a notebook is the best way to experiment. This is a little long-winded. Download the ez_install.py script as described and found here. I downloaded into my Python directory. Next run the script from the directory (e.g. python ez_setup.py). Then add the Python scripts directory to your Environmental Variables as per here. Then install IPython using the command: easy_install ipython[all].
- Fourth, download a Windows installer for Numpy and Pandas from here. I downloaded the 32-bit versions for Python 2.7. Run the installers.
Doing this I can now run a iPython notebook (via the command: ipython notebook – this will open a browser window for your default browser). I found Pandas gave me an error on the initial import as dateutil was missing – this was fixed by running the command: easy_install python-dateutil.
If you are looking for some data to help with marketing efforts Google Trends can be useful.
For example, you can play with terms to work out areas of rising interest and direct blog posts and tweets in that direction. It can also provide a guide to the terms non-professionals use.
For example, I work in intellectual property. In this field talking about “protecting ideas” would likely get you more interest/exposure than talking about protecting “innovations” or “inventions” or “patents” specifically.
Similarly, talking about “Brands” would likely get you more interest/exposure than talking about “Trademarks”.
Have a play and let me know if you come up with any interesting insights.
Claimed Subject Matter:
The alleged invention relates to a computer system and method for executing a point of sale transaction. In particular, the invention provides a point of sale terminal which is capable of receiving first price data from at least one item purchased by a customer and a server which receives both transaction data from the point of sale terminal and second price data pertaining to comparable competitor items from an update server so that the first and second price data can be compared and a voucher issued based on the comparison.
[This appears to be a patent application directed to Sainsbury’s Brand Match feature.]
The Hearing Officer found that the actual contribution of the invention related entirely to a method of doing business which, as it was brought about by a computer program, also related to a computer program, as such. The invention was therefore excluded by section 1(2) and the application was refused.
Section 22 shows the risk of using an argument that is not present in the specification; the Hearing Office was sceptical of an argument based around quality control / self-checking that appeared to have little basis in the application as filed. As we have seen with many Europe cases, basing an argument on advantages not described in the patent application rarely succeed.
The Applicant attempted to argue that a technical contribution lay in “the overall architecture of the computer system with technical components which in themselves are known but connected in a different way” . However, on applying step 3 of the Aerotel/Macrossan test the Hearing Officer was firmly of the view that “the actual contribution relates entirely to a way of conducting business” (see 27). This is because the actual contribution was deemed to be “about: (i) comparing prices, which manifestly is a business issue, and (ii) issuing a voucher with “value” information on it, which is also wholly a business issue”.
Section 29 has useful comments on whether the computer program exclusion is avoided. It was argued that “it is the connectivity of the components of hardware that creates the overall architecture of the invention” and that the computer program “lies in the middle of the system” but does not make up the whole system. This was found to be initially persuasive. However, the Hearing Officer concluded that the ” connectivity is necessarily brought about by a computer program” and that therefore lies “entirely in the programming itself”.
Claimed Subject Matter:
OFDM-transmitting apparatus and method, and OFDM-receiving apparatus and method.
This case provides an interesting consideration of technical prejudices.
The Appellant attempted to argue that technical prejudices of the company behind the closest prior art document (the BBC) meant that the claimed solution was not obvious.
The Board disagreed with the Appellant’s arguments stating (see 2.1.10):
In this regard, the board notes that, in general, cost considerations and technological preferences of a particular company (like the BBC in this case) cannot impose technical prejudices or uncertainties upon a technically skilled person such that he would be deterred from envisaging a technically sound and feasible solution for that reason alone. Otherwise, when analysing and interpreting the actual teaching of the closest prior art determined for the purpose of assessing inventive step according to the well-established “problem-solution approach”, internal experiences, beliefs, and preferences concerning technologies to be applied by the company from which that closest prior art originates would generally have to be taken into account. This would in turn mean that – to answer the question whether the skilled person starting out from the closest prior art would in fact arrive at the claimed solution – additional internal background information on the respective closest prior art (e.g. derived from witness statements from some employees as provided by the present appellant) would be necessary. In other words, the extent to which the notional skilled person in fact applies his skills in providing a solution to an objective technical problem would be unduly bound by such internal information (e.g. the expected infrastructure costs incurred by the BBC when proposing a change in its applied technology) at the filing date of an application instead of finding an appropriate solution to the objective problem posed. That would, however, definitely be incompatible with the problem-solution approach as generally applied.
Rather, the person skilled in a technical field (i.e. mobile communication networks in the present case) would try to seek a technical solution to an objective technical problem (i.e. choosing a certain pilot symbol pattern) under certain constraints (i.e. digital video distribution), starting with the closest prior art (i.e. document D1). However, based on the reasoning set out in points 18.104.22.168.1 to 22.214.171.124.9 , the board considers that said skilled person would arrive at the solution (i.e. using a DVB-T-based pilot symbol pattern) according to feature A) of claim 1 without exercising inventive skills.
[With thanks to Jake Loftus for help finding and reviewing these cases.]
Claimed Subject Matter:
A computer system for managing relationships between brokers and traders in a trading network.
The Appellant claimed that the invention solved a technical problem which arose in such systems, namely that a trader could not simply and easily control, i.e. prevent or permit, a computer terminal operated by a broker to send trading commands on behalf of the trader from the computer terminal via the network to the trading system.
The Appeal was dismissed by the Board.
The Board found that the problem formulation only made sense in the context of operations by a (non-technical) “active trader”, these being traders who wish to be able to supervise trade orders given to brokers. It was found that since the trading was computer-based the active trader would need to have access to the broker’s trading system. The skilled person was certainly aware that this made a log-on necessary. Equivalently, if the active trader for some reason was not logged on, the broker should not be allowed to trade. Ideally, the check should be automatic. These straight-forward considerations were deemed to lead directly to the subject-matter of claim 1.
[With thanks to Jake Loftus for help finding and reviewing these cases.]
Claimed Subject Matter:
User interface with gesture recognition.
The subject-matter of claim 1 differed from the disclosure in the closest prior art document in that according to claim 1:
a) warning messages are output to the user instead of having only internal messages between different components,
b) a range of sampling periods, i.e. a period when the button is activated, is supervised,
c) a range of poses indicating ranges of pitch and roll angles of the input device with respect to the bottom plane on which the input device is positioned is supervised and
d) temporary button release when the button is deactivated and re-activated within a predetermined time causes another warning to the user.
Feature (a) of outputting warning messages to a user instead of internal messages between different components was deemed to be technical, solving the technical problem of how to provide feedback to the user about internal states or identified conditions of the device, but notoriously known.
However, features (b) of supervising a range of sampling periods and (d) providing temporary de-activation of a button were deemed to be technical features that provided an inventive step over the cited art. This set aside an earlier decision of the examining division.
The examining division had argued that although the actual implementation of the specific validation criteria involved a technically skilled person, the definition of the expected operation (e.g. what motions and durations of the input are expected) was rather business-based, according to the intended purpose of the device and to design choices. This argument was not accepted by the Board who concluded that, whatever the reason for the definition of a gesture might be, the underlying ranges, rolls and angles are of a technical nature.
Claimed Subject Matter:
Encrypting data within a database system based on a defined system role (security administrator, database administrator, and user administrator).
The case provides an interesting discussion about the term “role”, e.g. as used in a computing sense e.g sysadmin, user, database admin.
The Board concluded that “that nothing in the claims or in the description can dispel the reasonable possibility that the definition of tasks to be distributed over three administrators is merely an organisational and hence non-technical issue, notwithstanding that it relates to a technical entity such as a database system”. The claims were then found to lack an inventive step based on this assumption.
[With thanks to Jake Loftus for help finding and reviewing these cases.]