Software & Patenting: IP Outside Your Comfort Zone

A presentation given as a CIPA Webinar on 25 February 2014.

Provides an introduction to software as it relates to patenting and an overview of current practice in UK and Europe. Details of relevant legislation and case law are provided, together with some tips for drafting.

Provided according to the terms set out here: http://www.eip.com/legal.php – i.e. does not constitute legal advice and should be taken as guidance.

Case Law Review – T 0218/11

Case:

T 0218/11

Claimed Subject Matter:

A self-service checkout which solved the problem of the self-service checkout being overly sensitive (or conversely not sensitive enough) to people making mistakes (or conversely, trying to “cheat” the checkout).

Comments:

The Appellant argued that keeping track of customers and tolerating different numbers of errors when using the checkout was itself technical, and that this would form part of the problem for the technically skilled person to solve.

However, the Board concluded that judging whether a customer is trust-worthy and treating them according to that judgement was a non-technical matter. Hence, an underlying idea of recording a level of trust forms part of a requirements specification that is given to the skilled person; the technically skilled person is faced with the task of modifying the self-service checkout terminals so as to keep track of how trusted different customers are, and so as to interrupt transactions earlier for those customers who are less trusted, and later for those that are more trusted.

The features of the claimed solution was thus deemed to either be found in the prior art, be non-technical and thus not contribute to an inventive step, or be technically obvious given the defined technical problem.

[With thanks to Jake Loftus for help finding and reviewing these cases.]

Case Law Review – T 2216/09

Case:

T 2216/09

Claimed Subject Matter:

A a system that enabled subscribers of a wireless telecom operator to execute financial transactions with a mobile phone.

Comments:

The system was deemed to mainly relate to an excluded business scheme.

All steps of the underlying business scheme were deemed part of the information provided to the technician in charge of the technical implementation and did not as such contribute to inventive step.

The Appellant argued that the specific transaction platform and client software did not exist in a conventional wireless phone system, and so were out of reach of the normal activity of the person skilled in the art of telephone networks. However, the Board concluded that the person skilled in the art would be able to implement the new system, given the specifications of the underlying business scheme. For example, any extension of the type of financial transactions which can be performed with the account (receive monetary deposits, debit and credit operations) was deemed to be dictated by the underlying business scheme.

[With thanks to Jake Loftus for help finding and reviewing these cases.]

Immediate Refusal – When can the European Examining Division refuse an application?

Friday afternoon: office debate on the European Patent Convention (EPC).

The question that arose was: when should you request Oral Proceedings in a written response to the European Patent Office?

With the European Patent Office providing a form of “examination” at the search stage (the “Written Opinion”), it is now mandatory to respond to any objections raised therein before “examination” officially begins (via Rule 70a EPC). In this response should you request Oral Proceedings?

The question then becomes: can the Examining Division refuse a European patent application in the “first” examination communication under Article 94 EPC?

For

The case law that was laid down under the old rules (i.e. with no “Written Opinion”) held that a decision to refuse could legitimately be issued by the Examining Division as a second communication, i.e. no “further” communication under Article 94(3) EPC (nee Article 96(2) EPC 1973) was necessary. See the link for more details. This generally applied to cases where the applicant made no effort to address any objections raised in a first communication.

If these cases are applied to the present set of circumstances, where the “Written Opinion” is practically a first “examination” communication, it could be argued that the Examining Division can legitimately refuse the application without issuing an official examination communication (e.g. with a second communication relating to substantive issues). It could be argued that the right to be heard, set out in Art. 113 EPC is met, as the applicant had the chance (moreover had) to respond to the Rule 70a EPC communication.

However, if this is the case, and a request for Oral Proceedings is made in the response to the R.70a EPC communication, is the request made to the Examining Division or the Search Division? A request to the Search Division may not be valid as the Search Division cannot refuse the application. As the Examining Division “take account” of the response (see here), does this pass on the request in a valid manner?

Against

Article 94(3) EPC states that:

 “the Examining Division shall invite the applicant, as often as necessary, to file his observations and…to amend the application”.

Now the “shall” in this provision seems to suggest that at examination the applicant should have one opportunity to file observations and/or amend the application. This would rule out a decision to refuse as the first examination communication.

However, the “as often as necessary” complicates matters – if the applicant has not responded to substantive issues in a Written Opinion at the Rule 70a EPC stage, is it necessary to give them another chance? Does “as often as necessary” mean one or more times (consistent with “shall“) or does it make the “shall” conditional (zero or more times)?

If anyone is aware of any case law or guidance that clears this up please let me know.

Case Law Review – T 972/07

Case:

T 0972/07

Claimed Subject Matter:

System and method of assisting goods collection (e.g.  to salvage the lens in disposable cameras).

Comments:

The appellant argued that the invention related to the recycling of goods, which they believed was technical.

The Board of Appeal disagreed. They argued that the invention was essentially concerned with logistical matters of collecting and distributing goods prior to the recycling process. It is those logistics that had to be examined for technical effect, not the recycling process, which is not claimed. In the present case, those logistics were found to be administrative in nature and lacking in technical character. The remaining technical features were simply well-known computers and databases. Any dependent claims related to improvements to the administrative method rather than the technical features.

This case can be distinguished from T 1411/08 wherein the case was remitted to the department of first instance to perform an additional search on the basis that the Examining Division did not convincingly demonstrate that certain technical features were “notorious”

Case Law Review – T 907/09

Case:

T 907/09

Claimed Subject Matter:

Valuation of a futures contract.

The application relates to data processing systems and methods for assessing the failure risk of a bundle of constructs that may individually fail. A resource amount is determined so as to counterbalance the failure risk when it is transferred. The risk assuming entity receives the resource amount.

Comments:

The claimed system is defined functionally in terms of means for storing and processing spread values and for continuously calculating a resource amount which reflects a value of a futures contract (which is based on a basket of credit default swaps). The claim is not limited to a technical field of application; on the contrary, its final paragraph emphasises a commercial goal.

The Board does not see any technical effect in knowing the resource amount or failure risk of a bundle of credit default swaps. The overall effect of the claimed system is that a mental, mathematical, commercial or administrative result is provided: What premium does the owner of the bundle have to offer so that another market participant is willing to take over the failure risk of the bundle?

Case Law Review – T 1261/08

Case:

T 1261/08

Claimed Subject Matter:

Electronic trading – system for settling over the counter trades.

Whether a trade will be settled bilaterally or through clearing depends on the preferences of the party to accept the offer. If the party making the offer has bilateral trading closed with a particular counterparty and the counterparty does not permit cleared trading of the product, the product will show up as red on the trading screen. If trading is possible, the product offer will show up as white. The colour coding acts as a means for indicating whether trading is possible while preserving the parties’ anonymity.

Comments:

The Board confirmed that business aspects of an electronic exchange, such as parties’ trading preferences, do not constitute a technical contribution and, thus, do not enter into the examination for an inventive step.

However, displaying data indicative of the availability or unavailability of a computer-implemented function may be considered as a technical feature independent of any cognitive or aesthetic aspect of its presentation and independent of any business aspect of the underlying computer-implemented function. The technical character of the implementation of such an indication is not wiped out by its commercial goal.

Despite this, a feature of binary colour coding, as found in the claim in question was, in the technical context of user terminals, a notorious way of indicating the availability or unavailability of a computer-implemented function. In addition, there could be an argument that it related to a presentation of information as such.

The appellant also made reference to a granted case in the field of transaction data processing. The Board dismissed this – a granted patent is not a case law precedent and so should not be commented on or compared with the case in question.

Case Law Review – T 2217/08

Case:

T 2217/08

Claimed Subject Matter:

Detection of files that do not contain executable code (Microsoft).

The claim was found to differ from the prior art by the fact that:

a. parsing comprises the step of parsing said input file with all the component parsers, said parsing continuing even if a component parser has already recognized said file format;

b. the compound parser is configured to allow extension by addition of a new component parser to the compound parser, the new component parser recognizing a further file format and recognizing executable code within the further file format and

c. the input file is stored only if no executable code has been found.

Comments:

The Board of Appeal debated whether a step of “parsing” per se had technical character. They concluded that it did not necessarily rely on technical considerations or have technical effects – i.e. it may lack a technical character in certain cases.

In the case in question the appellant added a concrete step of “storing” based on the output of the “parsing” step. The Board of Appeal concluded that the storage of a file was a technical step that provided a further technical effect. This could then lend technical character to the preceding “parsing” step.

Case Law Review – T 0042/10

Case:

T 0042/10

Claimed Subject Matter:

Determining relative skills of players (Microsoft).

The invention models performance by way of probability distributions and factor graphs.

Comments:

This case is interesting as  the Board of Appeal make reference to Gale’s Application [1991] RPC 305, a UK Court of Appeal case that considered an improved method of evaluating a square root. The Board took a similar approach to Lord Justice Nicholls in the UK case, asking: 1) what does the method as a whole do, and does it produce an overall technical result? And 2) if there is no overall technical result, does the method at least have a technical effect within the computer? If both questions are answered in the negative, no technical problem has been solved and there can be no inventive step. Using this analysis the Board concluded that certain features were not technical and that representing performance by probability distributions and using factor graphs were mathematical methods or abstract computer science concepts. As such there was no inventive step.


The Board came to a similar decision in T 1281/10, a related case. There it was found that “Bayesian learning” would be part of a non-technical method the skilled person would be required to automate.

Case Law Review – T 1459/10

Case:

            T 1459/10

Claimed Subject Matter:

Upgrading programs in a wireless communication system – i.e. upgrading TV or set-top box software (Samsung).

The claimed device differs from the cited art by:

(a) the means for downloading upgrade program code from a memory card, and

(b) the device is one of a set-top box and a television and the other device is the other one out of a set-top box and a television.

Comments:

Upgrading the software of a (stand-alone) television or set-top box is merely a specific example of the general case of a wireless communication system having a program update function, as is indeed apparent from the introduction to the description.

The limitation in claim 1 to the claimed device being a television or a set-top box only serves to specify the type of the device which is to be upgraded without implying additional technical features or requirements.

Such a limitation does not lead the skilled person to consider exclusively prior art in the field of upgrading software of a television or set-top box since, as noted above, there is no technical relationship between the device being specifically a television or a set-top box and the features in claim 1 relating to the upgrade of software, i.e. the means for downloading upgrade program code, the configuration of the upgrade program having first, second and a common upgrade programs, the configuration of the device to upgrade itself using the first and the common upgrade programs and comprising transmission means for transmitting the second and the common upgrade program to the other device.