Archive for April, 2010

Just read the news that Hewlett Packard (HP) has bought Palm for a rumoured $1.2 billion.

Even though this seems like a lot of money I think HP has snagged a bit of a bargain. Recent Palm shares were trading at 30% of their 52-week-high value, following the relatively meagre sales performance of the Palm Pre.

It also seems a shrewd strategic move with regard to intellectual property (IP). Palm likely has an extensive patent portfolio covering touch screen technologies and mobile devices, areas into which HP has recently moved. Considering Apple’s recent assault on HTC the acquisition of Palm will naturally beef-up HP’s portfolio allowing a more aggressive defensive or counter-claim if Apple come a-knocking.

A strong patent-portfolio will become important if HP looks to use webOS on the Slate and go head-to-head with Apple’s iPad.

Can software be patented? If so, in what form?

This post provides some general background on the issue and briefly considers two pending cases in Europe and the US.

The patentability of software has important consequences for the way in which individuals and businesses protect, and make money from, their creations under the law.

Nearly all modern inventions make use of a computer, whether in their design, construction or operation. The Internet is simply a network of computers.

On one side of the debate are those calling for the abolition of patents for software; on the other side are those calling for clearer protection.

Quick Crib Sheet

A patent is a property right granted by a state which allows its holder to prevent third parties from commercially exploiting an invention for a set period of time.

The enforcement of a patent is governed by national law.  The procedure for obtaining a patent is governed by at least one of national law (e.g. the UK Patents Act), regional treaty (e.g. The European Patent Convention) and international treaty (e.g. The Patent Cooperation Treaty).

The era of revolution, both industrial and political, gave birth to substantive patent law.  Modern patent law was codified in the post-war period.  British, European and international codes were drawn up in the 1970s.

Since the 1970s, the growth in computing has been exponential.

From this:

Computer - 1970s c/o Ecksemmess

to this:

iPhone c/o Masaaki Komori from Tokyo, Japan

Under British and European patent law, a patent cannot be granted for “business methods” or “computer programs” “as such”.  However, certain inventions may be patented as “computer-implemented inventions” (CIIs).  The law in the UK and Europe should be harmonised but in practice differs on points of interpretation.  This prompted Lord Justice Jacob, in the Court of Appeal, to ask the European Patent Office for clarification in 2006.  The European Patent Office refused the request.

In the US, case law developed at the turn of the last century was used to demonstrate a “business method” exclusion for patents.  This changed in the late 1990s when, under pressure from the dot-com boom, the US Patent Office began to grant patents for “business methods” implemented using a computer.  The explosion of such patents, which were considered by some to be of “potential vagueness and suspect validity”, has recently seen a legal backlash.



Points of law are considered by the Enlarged Board of Appeal.  On the 22 October 2008 the (British) President of the European Patent Office referred a series of questions to the Board.  These questions were formulated to seek an answer to the question above and provide guidance for national harmonisation.  The Board may dismiss the referral.

The referral was rigorously debated by the high-tech community.  Amicus curiae briefs were filed by many well-known companies, including Apple, IBM, and Philips, as well as by groups such as the Foundation for a Free Information Infrastructure and the Pirate Party.


The US Supreme Court is presently considering a case concerning a 1997 patent application filed by Bernard Bilski on a business method for hedging financial trades (known generally as “Bilski”).  The application was rejected by the U.S. Patent Office and this decision was upheld by the Federal Circuit Court.  As in Europe, the case has ignited fierce debate; amicus curiae briefs have been filed on behalf of, for example, Microsoft, Google, and Bank of America, as well as associations both for and against patents for software.

I have been doing some detective work in response to a new R.161 EPC communication. I have found out the following (disclaimer: procedure appears to be still in limbo at the EPO at the moment so use any common sense you have available; the following may be liable to change):


There are 3 versions of the new R.161 EPC Communication: – EPO Form 1226A; EPO Form 1226B; and EPO Form 1226C. Look in the lower left-hand corner for the number.

  • EPO Form 1226A is issued if there has been a negative opinion by the EPO and no amendments or comments have been filed on regional phase entry. A response to this form within 1 month is mandatory (i.e. or else the application is deemed withdrawn) and your attention is drawn to this on the form.
  • EPO Form 1226B is issued if there has been a negative opinion by the EPO and amendments or comments have been filed on regional phase entry. A response to this form within 1 month is voluntary (i.e. the application is NOT withdrawn if you do not response). This is indicated by the wording “you may comment….”.
  • EPO Form 1226C is issued in other cases (e.g. non-EPO ISA, positive opinion). A response to this form within 1 month is voluntary (i.e. the application is NOT withdrawn if you do not response). This communication resembles the old R.161EPC communication.

This means that the situations where a reply to the R.161 EPC Communication is required is determined by the EPO and indicated by the form that is sent.

What Counts as “Amendments or Comments”?

For this we look at section C VI 3.5.1 of the revised Guidelines for Examination. This sets out a number of situations that I will summarise below. As always, take the wording of the Guidelines, rather than my summary, as legal basis (i.e. READ the section at the above-link).

“New amendments and/or comments”

From a conversation with a formalities officer and the wording of the forms, it appears (thus far) that any amendments filed on European regional phase entry count as a response under R.161(1)EPC. For example, a case where the claims were amended to reduce excess claims fees resulted in a “B” form that does not require a mandatory reply.

The revised Form 1200 contains two check boxes for each of Chapter I or Chapter II entry respectively indicating: 1) “unless replaced by the amendments enclosed” and 2)”Comments on the written opinion established by the EPO as the International Searching Authority and/or observations are enclosed”. From the wording of the Guidelines (“and/or”) it would appear that either count as a response under R.161(1)EPC. The Guidelines imply that at least one of the check boxes needs to be checked to avoid an “A” communication. This makes sense at a formalities level.

I am told that some version of the EPOnline form have not been updated yet to include the latter checkbox; however, in this case the attaching of amendments to the online Form 1200 and the checking of the old checkbox indicating their presence may be enough to avoid an “A” communication.

“New” is mentioned in the Guidelines but not defined. Would attaching the existing claims as “amendments” bypass the “A” communication?

When a Response is Required…

From the position of the EPO so far, it would appear that the response to the R.161EPC communication is treated as a formality rather than a substantial matter. Hence, it would appear (untested!) that any comment or amendment filed in response to the “A” communication would tick the formalities officer’s boxes (so-to-speak).

Downside of Not Responding (Substantially)

The Guidelines state that “the Examining Division will issue at least one communication according to Art.94(3) and Rule 71(1),(2) in subsequent examination proceedings”. It would seem common sense to state that a substantial response early in the procedure (on entry / in reply to the R.161 EPC communication) would at least allow two substantive replies before Oral Proceedings (and possibly paint you in a more favourable light).

Additionally, new Rule 137(2) EPC only allows you to amend of “your own volition” in reply to the R.161 EPC communication. If you wait until Examination to file a substantive amendment there is a risk that the Examining Division will disallow the amendment.

R.137(4) EPC – Basis for Amendments

The EPO seem quite hot on issuing one of these. My guess it will occur when the Examining Division get hold of the case without too much thought. I would recommend indicating basis when filing amended claims on regional phase entry or filing such basis in response to any R.161 EPC communication to avoid a later R.137(4)EPC communication (and its one month time limit).

It is sometimes difficult to visualise the extent of the Patent Cooperation Treaty (PCT). Helpfully, World Intellectual Property Association produce this handy world map:

PCT Contracting States as of 1 April 10

The text list is as follows (click image for readable version):

States as of 1 April 10

Just to remind all those EPA’s out there, Article 2(2) of Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 3/09) states:

New Rule 62a, Rule 63 as amended by Article 1, paragraph 2, of this decision, new Rule 70a and Rule 137 as amended by Article 1, paragraph 7, of this decision shall apply to European patent applications for which the European search report or the supplementary European search report is drawn up on or after 1 April 2010.

The date the “European search report or the supplementary European search report is drawn up” is, according to Guidelines for Examination B-X 10:

The date on which the search report was drawn up is indicated in the report. This date should be that of the drafting of the report by the examiner who carried out the search.

Summary: Go by the date in the search report, not the date of mailing of the search report.

EPO Room Shortages

Following Iceland’s example, the EPO appears to be having their own particulate problems.

Apparently, asbestos has been found in some of the EPO Buildings in Munich. This has required the relocation of the Boards of Appeal, leaving the Boards and the Examining Divisions to fight it out over a limited number of rooms.

You may find this helpful to bear in mind if thinking of re-arranging Oral Proceedings. You may also find that room allocations are prone to change. Many of you probably know this already.

In the last few months I’ve noticed a change in practice among some EPO Examiners when it comes to unity and dependent claims.

The objection runs as follows: object to the independent claim for lacking novelty/inventive step; decide that each dependent claim comprises a different technical feature; conclude that the claim set lacks unity a posteriori. This is often combined with the fact that only the first dependent claim is deemed to be searched, leaving the only apparent option to be the filing of a divisional application.

HMS Unity

While possibly technically correct, something about the literal and inflexible approach taken by these Examiners grates against common sense and the rights of the applicant (e.g. to amend under Art. 123(1) EPC). The Applicant cannot accurately predict what prior art will be raised nor what specific features end up distinguishing the invention from this art. It is also worth remembering that inventive step is often evaluated differently under national laws in national proceedings; dependent claims to specific embodiments may be useful in these proceeding.

C-III 7.8 states the following about the unity of dependent claims:

“If, however, the independent claim appears not to be patentable, then the question whether there is still an inventive link between all the claims dependent on that claim needs to be carefully considered [non-unity “a posteriori”]. It may be that the “special technical features” of one claim dependent on this non-patentable independent claim are not present in the same or corresponding form in another claim dependent on that claim.”

This, however, must be balanced with the guidance in the previous section (C-III 7.7):

Although lack of unity may arise a posteriori as well as a priori, it should be remembered that lack of unity is not a ground of revocation in later proceedings. Therefore, although the objection should certainly be made and amendment insisted upon in clear cases, it should neither be raised nor persisted in on the basis of a narrow, literal or academic approach.This is particularly so where the possible lack of unity does not necessitate a further search. There should be a broad, practical consideration of the degree of interdependence of the alternatives presented, in relation to the state of the art as revealed by the search report. If the common matter of the independent claims is well-known, and the remaining subject-matter of each claim differs from that of the others without there being any unifying novel concept common to all, then clearly there is lack of unity. If, on the other hand, there is a common concept or principle which is novel and inventive, then objection of lack of unity does not arise.

For determining what is allowable between these two extremes, rigid rules cannot be given and each case should be considered on its merits, the benefit of any doubt being given to the applicant.

In certain recent cases, possibly due to revised internal practice at the EPO in advance of the changes to Rules 62a and 63, this balance has fallen out of line.

Legal Balance

T 1394/04, which is cited in C-VI 5.2, is useful case to cite in responses to redress this balance:

As a general principle it was held in T 708/00 that “a subsequent amendment to limit the subject-matter of the main claim by additional features disclosed in the application as filed does not generally affect the notion of unity of invention under either Rule 86 (4) or Rule 46 (1) EPC” and that “it is normal for an applicant to make such an amendment in respect of an objection to the patentability of the subject-matter in unlimited form” (T 708/00, headnote III). [Reasons – 3.]

In T 274/03 it was however made clear that certain conditions have to be satisfied for an amendment not to generally affect the notion of unity of invention. Thus, this
notion is not affected, and therefore no post-search switching of subject-matter is involved by the amendment, if for instance features are added from the description to further define an element that was already a feature of the original main claim (see [T 274/03]), to further specify an essential aspect of the original main claim. [Reasons – 3.]

In fact, as decision T 274/03 clearly demonstrates, if it is assumed, as is usually the case, that the original main claim contains at least in very broad terms the general inventive concept of the invention as set out further in the dependent claims, if any, and in the description, then it is certainly possible to determine whether later amendments form part of said general inventive concept, quite independently of the question whether the subject-matter of the main claim lacks novelty. [Reasons – 6.]

The example under point 5 elucidates that situations may actually occur where the amendment of the main claim, whose subject-matter lacks novelty, based on features supported exclusively by the description, may affect the notion of unity of the invention. Although such situations occur very rarely in practice, as already noted above, in such cases Rule 86 (4) EPC would have to be applied in order to avoid a possible circumvention of Article 82 EPC. [Reasons 6.]

In the present case however it is clear that, much the same way as in the decision T 274/03…the introduced amendment…merely constitutes a further specification of original features of the claim which are essential to the invention… as it appears particularly from the published patent application, column 1, lines 15-18 and lines 31-42. Consequently, [the features of the amendment] are to be regarded as being part of the constructional measures which are necessary to implement [the originally claimed features]. [Reasons – 7]

I believe it is also worth reminding the Examiner(s) that the dependent claims necessarily contain all the features of the independent claim(s) on which it depends. In certain unity objections, the features of the dependent claims are taken in isolation, contrary to the teachings of T 1394/04 above.

If anyone has had similar experiences or has found useful arguments or case-law to keep the EPO on track please “share with the group”.

New EPO Guidelines

The “April 2010” EPO Guidelines for Examination are now available for download at:

The new Guidelines supersede the “April 2009” edition as of 1 April 2010.

The amendments are set out at the bottom of the EPO Notice:

The new Guidelines should mirror the previously issued draft Guidelines; although I have not had time to go through the publication yet.

A passage of the Notice that caught my eye was the following:

It should be noted that the Guidelines have not been fully revised. In one instance, where the Guidelines are still to be revised, several passages do not completely reflect current examination practice. Furthermore, once the work as regards content had been concluded, recent publications or decisions that appeared subsequently could no longer be taken into account. Thus, the relevant notice dated 14 September 2009 (OJ EPO 2009, 486), applies, for example, with respect to the filing of a certified copy of an earlier application to which reference is made, notwithstanding the relevant sections A-II, and A-IV, 1.3.1 of the Guidelines.

The paper version of the Guidelines won’t be available until May.