Category: Courts

Patenting Software – Can You Protect Programming Inventions in the EPO?

This article is a brief summary of the European Patent Office position on patenting inventions associated with computer programming.

Overview

It may be easier to obtain a granted patent for computer programming inventions when an application is made via the European Patent Office rather than the UK Patent Office.

However, the European Patent Office may be more likely to raise clarity objections and find relevant prior art.

Defining Case: COMVIK

The defining case in Europe is COMVIK.

Following this case, the claims of a patent application are assessed for “technical” and “non-technical” features. Only “technical” features may be used to demonstrate an improvement over previous publications.

The term “technical” is necessarily fuzzy; it has been defined in a piece-meal manner by European case law. However, it is generally taken to mean clearly relating to a field of science or engineering. Features relating to “administration” or “business” are considered “non-technical”.

Useful Case Law

The cases below provide examples of the thinking of the UK Patent Office.

  • T_0505/09: in this case, an invention related to a method for identifying defective program code. At an abstract level, certain testing techniques were agreed to form part of the common general knowledge. However, there was no objection that the invention related to “non-technical” features. Instead, emphasis was put on what written evidence relating to the invention was published before the application was filed.

 

  • T_1893/08: in this case, information on data definitions was provided in the form of a common language file represented in a different language to first and second languages for compilation. The first language had an “import” statement that imported the common language file. The board concluded that compiler features provided a solution to a “technical” problem and did provide an inventive step when compared to the cited art.

 

  • T_1216/08: this case featured authentication of software in a dynamic loading environment. A validator generated a digital signature based on a portion of a program image, wherein pointers in the image that required “fixing up” by a program loader were excluded from the portion. Implicitly, these features were considered “technical” and an inventive step was found.

 

  • T_0702/08: in this case, a patent claim referred generally to “process objects” and “task objects”. These terms were considered to have a broad meaning encompassing the general concept of a “goal” or “objective” at an administrative management level. It was concluded that there was no unambiguous correlation between the described “objects” and object-oriented programming. Hence, a specific technical mapping between abstract concepts and their technical implementation needs to be set out in any patent application.

 

  • T_0077/08: here the main difference between a patent claim and a previous publication was that a business logic rule was expected as an expression rather than a statement in a programming language. It was considered obvious that both formulations would be considered. It was questioned whether making a system more “flexible” was a “technical” problem.

 

  • T_2078/07: in this case the invention, using metadata to describe data types, was found not to provide “a further technical effect” over fundamental programming conventions. It was “simply an advice on how to write a program”.

 

  • T_1928/07: this case referred generally to “event processes”, “tasks”, “inclusion” and “execution” in a programming context. These terms were not defined in terms of concrete, rather than abstract, features. The case was thus rejected for lacking clarity.

Patenting Software – Can You Protect Programming Inventions in the UK?

This article is a brief summary of the UK position on patenting inventions associated with computer programming.

Overview

In the UK, it may be difficult to obtain a granted patent for inventions relating to computer programming.

These inventions may not be allowed by the UK Patent Office on the basis that they relate solely to a “computer-program”, a “mental act”, a “business method” or a “mathematical method”.

However, while patent applications for application-level software are most likely to be refused, certain improvements at a low, technical level may be allowed.

Defining Cases: Symbian and Halliburton

The defining cases in this area are Symbian and Halliburton (see links for full references).

  • Symbian concerned adapted dynamic link libraries (DLLs) with two parts: a fixed part and an extension part. Even though it was directed to a method implemented in practice by a computer program, it was found not to be solely a computer program as it made a computer work better as a matter of practical reality. From this case, an improvement at the level of the operating system or below could form the basis of a granted patent. The UK Patent Office appears to dislike the citing of Symbian; frugal use is recommended.

 

  • Halliburton made it easier to obtain a granted patent for inventions that could be performed mentally. In the past, these would be rejected. Now, inventions that are described as “computer-implemented methods” are not rejected just because the “method” could be performed mentally.

Hearings from the UK Patent Office in this area suggest it will be difficult, but not impossible, to obtain a granted patent for a computer programming invention.

Much will depend on the language of the patent application and the particular examiner considering the case. It must be shown that there is more than would be expected when simply running a better program on a computer.

Useful Case Law

The cases below provide examples of the thinking of the UK Patent Office.

  • O/173/08: the invention involved “taking an existing computer program, analysing the instructions … and applying [parallel processing code] substitutions so that the program will operate more quickly”. This may be performed at runtime using a “rules-based system for converting the original code into more efficient code”. This was found to relate to “the generation of more efficient program code rather than an improvement in the operation of the computer system”, i.e. to be an improvement in “programming” and thus excluded for being a “compute program as such”.

 

  • O/066/06: in this case, data received from trace units associated with a processor was used to adapt compilation in real time. The Hearing Officer stated that compilers per se were not patentable for being a mental act; it is likely this is now overturned by Haliburton. The result of the invention was “a faster, more accurate compiler, able to adapt and improve in an iterative manner each time the compiler is used”. This was seen to be a “technical” rather than “cosmetic” advantage, and the case was allowed.

 

  • O/057/06: this case involved the application of a reduced set of Java® Bytecode instructions, i.e. multiple Bytecode instructions were reduced to a single virtual machine instruction. Even though the Hearing Officer acknowledged that Reduced Instruction Set Computers (RISC) were well known, he found that the application related to a non-obvious “invention” under UK patent law. Following from this a patent should be granted. His logic was that hardware-based RISC processors were unarguably patentable, providing a clear technical effect of being faster and more economical. Hence, a software-based version should not be excluded simply because it is implemented on a programmed computer.

 

  • O/036/10: this case involved a simulation system comprising a new arrangement for debugging software enabling a user to locate bugs more quickly and more effectively. Here, however, the computer running the software was “entirely conventional”. The software made “a computer, work differently in the sense of processing data in a different way, but it [did] not make it work better, faster or more reliably in terms of its performance”. No “deep level” technical improvement was located. Thus the application was refused.

Copyright in the Digital age – Infopaq Revisited

A couple of recent copyright cases, one in the European Court of Justice (ECJ) and one in the England & Wales High Court, have me worried about the balance between copyright and technology.

Before I begin, let me emphasise that I believe copyright is necessary to provide a reward for intellectual endeavour. There is nothing better to promote and pay for artistic and journalistic works. The problem is ascertaining an appropriate balance between the rights of copyright owners and the rights of the public and technologists. I also have a natural dislike of the use of copyright as a control mechanism, rather than as a (temporary) way to recoup commercial investment. With these recent cases I think the balance has tipped too far in the direction of rights holders. I wish to point out that this is my amateur interpretation of the cases, feel free to comment on corrections etc and do not use it as legal opinion.

Infopaq

The first case is C-5/08 –  Infopaq International A/S v Danske Dagblades Forening (“Infopaq”) at the ECJ. The case considers a number of questions referred by the Danish Courts (Højesteret). The background is set out in the judgement, but to crudely summarise: Infopaq digitised newspapers (scan and OCR) in order to provide a searchable database of articles. A search term could then be entered and the results printed, together with an extract of 11 words indicating the context in which the search term appeared. The ECJ found that those 11 words could be subject to copyright protection if “the elements thus reproduced are the expression of the intellectual creation of their author”.   The comments of the ECJ, for example in paragraphs 40 and 47, suggest that this test, in most cases, would likely be satisfied.

Meltwater

In the second case – The Newspaper Licensing Agency Ltd & Ors v Meltwater Holding BV & Ors [2010] EWHC 3099 (Ch) (26 November 2010)  (“Meltwater”) – the English High Court cites Infopaq and considers similar issues. Both cases rely on an interpretation of Directive 2001/29/EC (“InfoSoc Directive”). Meltwater runs a Media Monitoring Service, which involves monitoring newspaper websites to create a database of articles. Website content is scraped to create the database, which can be searched for a particular term. Like Infopaq, the service may be used by commercial organisations who wish to monitor references to their brands in the media. An email report is sent out containing a hyperlink to each relevant article, the opening words of the article after the headline, and, like Infopaq’s service, an extract showing the context in which a search term appears. One of the questions was whether an End User infringes publisher’s copyright in the articles by receiving the email, and thus requires a licence. The Court found that copyright could exist in a headline and text extract. Receipt of the email constituted making a copy and thus there was infringement (see paragraph 102).

Meltwater then continued to suggest that supply of a hyperlink may infringe copyright (in this case an End User clicking on a link, and thus creating a copy would infringe) and that forwarding the hyperlink would also infringe (see paragraph 104). The exceptions were considered and found not to apply.

Consequences

Both cases appear to introduce an additional layer of legalistic worry on day-to-day digital activities. For example, the ECJ state that:

23. According to the Højesteret, it is not disputed in this case that consent from the rightholders is not required to engage in press monitoring activity and the writing of summaries consisting in manual reading of each publication, selection of the relevant articles on the basis of predetermined search words, and production of a manually prepared cover sheet for the summary writers, giving an identified search word in an article and its position in the newspaper. Similarly, the parties in the main proceedings do not dispute that genuinely independent summary writing per se is lawful and does not require consent from the rightholders.

This seems to suggest that the automation of this activity introduces civil liability. Automation necessarily involves storage of data, which in most cases is synonymous  with copying. This has been considered and the InfoSoc Directive provides exemption for technological use. The exemption requires:

  1. the act is temporary;
  2. it is transient or incidental;
  3. it is an integral and essential part of a technological process;
  4. the sole purpose of that process is to enable a transmission in a network between third parties by an intermediary of a lawful use of a work or protected subject-matter; and
  5. the act has no independent economic significance.

However, it both cases the exemption was found not to hold. In my opinion, conditions 4 and 5 are too onerous; for example, processing thousands of articles to determine sentiment for commercial ends would not comply with 4 or 5 but in my mind could be exempt.

Printing

It is interesting that reference is repeatedly made in Infopaq to the “printing” of the search results. If a hardcopy was not made, for example the search results were viewed on a computer screen or iPad, would the finding of infringement have been the same?

Small Parts and Twitter

I have generally been impressed with the common sense decisions in cases such as Francis Day & Hunter Limited v. Twentieth Century Fox Corp Limited[1940] AC 112, wherein copyright was found not to subsist in the title “the man who broke the bank at Monte Carlo”. More cases are set out in paragraph 61 of Meltwater. I think it is very dangerous to extend protect to short passages, titles, names and headlines, especially without any straightforward exemptions for citation. Indeed one of the reasons titles were denied copyright was to allow the free citation of books and articles.

While Infopaq introduces the condition of “the elements thus reproduced [being] the expression of the intellectual creation of their author”, I think it would be difficult to prove this did not apply; every headline, even if mostly factual, has at least a scintilla of creation, e.g. word choice, placement etc.. I think the Court in Meltwater accepted this was a likely result of following Infopaq.

The result of Infopaq and Meltwater is the situation that a Tweet, or even a newsagent’s sandwich-board, containing a newspaper headline is likely a prima facie infringement of copyright. Further a Tweet with a hyperlink accompanying the headline is a further infringement, if permission has not been obtained. Clicking on the link is also an infringement. If you RT a Guardian, New York Times, Washington Post or Telegraph tweet linking to an article you may be infringing copyright. I cannot see this interpretation as being practical or commercially desirable. I would thus expect an appeal from Meltwater in due course and some clarification from the higher courts.

 

UPDATE: The Court of Appeal have now dismissed Meltwater’s appeal. Read the judgement: here. The concerns set out above remain. While, in this particular case, the Courts have come to the right conclusion commercially – i.e. Meltwater’s customers required a licence, some guidance is required here on use and exclusions to avoid losing the trust of common Internet users.

Quick Post: IP Enforcement in the Age of Austerity – The PCC

Without much publicity (both inside and outside of the world of IP), fundamental reforms to the procedure for IP enforcement at the Patents County Court (PCC) have come into effect.

Basically, the PCC offers a more streamlined and cost effective forum for low value/complexity claims. Designed for small to medium sized enterprises (SMEs), costs are capped at £50,000. The form of proceedings sits somewhere between proceedings before the UKIPO, the EPO and the High Court.  Damages are due to be limited to £500,000 by legislation coming into force in April 2011.

The changes are summarised by the UKIPO here.

The reforms are discussed by Field Fisher Waterhouse here. [Update: details of the first case management conference have been published; see here]

Patlit has a useful two-part guide here and here.

The Spark comments on the transfer of cases from the High Court here (also discussed by Patlit here).

Changes to IP Civil Procedure Rules (UK)

On 1 October 2010 the 53rd Update to the Civil Procedure Rules comes into force.

The Rules relating to Intellectual Property Claims (Part 63) are updated to introduce reforms to the Patents County Court system; in particular, a number of caps on costs are being introduced for low value claims. It is hoped this will reduce the cost and risk for small to medium sized businesses.

The blurb from the Ministry of Justice is as follows:

Part 63 Intellectual Property Claims and PD63 Intellectual Property Claims

The rules and Practice Direction are amended to provide a simpler route for lower value claims including scale costs for each stage of the process with a total cap on costs of £50,000.00 for a claim relating to liability and £25,000 for an inquiry as to damages or account of profits. Consequential amendments are made to PD30, Part 45 and the Costs Practice Direction.

More details concerning the draft amendments can be found in the implementing SI.