14 – UK Patent Hearing

Case:

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.]

Comments:

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”.

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 – BL O/244/13

Case:

BL O/244/13

Claimed Subject Matter:

The invention relates to a method of synchronizing data, including representing messages as text or binary property list files (plist). The synchronization protocol provides for exchanges between a client and server in which separate sync modes (e.g. fast, slow, reset) are associated with different dataclasses and the dataclasses can be updated in parallel. This is achieved by proposing and agreeing the sync mode for each dataclass; sending sync-start, syncchanges and finally a sync-commit command between client and server.

Applicant: Apple Inc.

Claim 1 was directed to a server-side method and claim 10 was directed to the sychronization server.

Comments:

The alleged contribution was deemed to be:

Synchronizing data including initiating a sync session by receiving a request comprising a separate proposed sync mode for each of multiple data classes, specifying changes to data of the multiple data classes, using a status code to indicate whether the sync mode for each dataclass is accepted, in accordance with the sync mode for each dataclass, updating the data and selectively committing the changes, which means that a reduced number of messages is required to be transmitted. (Paragraph 23.)

The Hearing Officer deemed that the contribution was not a method for doing business as such:

The synchronised data may be ‘business data’, and the method of synchronising it may be performed in the course of business, but the contribution to data processing is broader, for example including the provision and processing of sync modes and does not, to my mind, mean that the contribution falls within the category of a method for doing business as such. (Paragraph 25.)

However there was more debate as to whether the contribution was a computer program as such. To determine whether it was, the five signposts from AT&T (paragraph 40) were considered.

The Hearing Officer was not convinced that saving bandwidth by reducing a number of messages was an effect provided by a communication process outside of a computer. Instead, the number of messages was reduced inside the computer. Hence, the first signpost was not satisfied (see paragraph 29).

Reviewing the reasoning in relation to the second signpost, I believe this is most open to counter-argument. In paragraph 31, the Hearing Officer found that the effect was dependent on the type of data being processed: sync mode data. However, he also argued that the contribution was defined in terms of data processing and not the nature of the data being synchronised. In sum, the Hearing Officer is saying that the contribution is dependent on a particular type of control or metadata, but that the data it is applied to can be anything. The Hearing Officer was of the opinion that this contra-indicates a technical contribution. I could disagree – the same reasoning could also be used to demonstrate compliance with the second signpost.

With regard to the third and fourth signposts the Hearing Officer concluded that the computer implementing the invention was not changed by the invention:

All that has changed is the number and format of the messages transmitted. (Paragraph 36.)

As such the fifth signpost was also answered in the negative. As none of the signposts indicated a technical contribution the Hearing Officer concluded that the invention was a computer program as such and the application was refused.

Without delving into the detailed facts of the case the decision seemed a bit harsh. It appears to follow reasoning similar to Hitachi (T 258/03) and apply it to subject matter that in my mind is more technical. It appears to follow similar recent decisions by the European Boards of Appeal that clamp down on the “relieves bandwidth by reducing messages” argument that is often applied in these cases.

One interesting question to consider is: would the decision have been the same if the independent claims covered a system of two entities, a client and a server? If the answer is yes then this appears unfair to parties that only supply one side of the communicating equipment.

The case does nicely illustrate how the UK Intellectual Property Office (IPO) evaluates patentable subject-matter. The framework displayed in the decision can be applied to most patentability cases at the UK IPO.

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.

Margin of Error: Document Formatting for the UK

Just a quick post for anyone looking for information relating to document formatting for UK specifications. In the words of the UK Intellectual Property Office’s Code of Practice:

“a. The presentation of the application (including drawings) should meet the requirements of rule 14 of the Patents Rules 2007 (see 14.26 – 14.57). For example, documents must be legible and capable of reproduction, and the margins should be kept clear and free from headers or footers denoting references or other matter (see 14.28).” [Section 5. – page 9 of the PDF.]

Rule 14 then makes reference to Schedule 2 of the Patent Rules 2007. I will not repeat it, it is not that exciting.

The important points from Schedule 2 for an online filing are:

Frames (lines surrounding matter) must not be used.
The pages of the description and claims must be numbered consecutively in a single series.
Page numbers must be located at the top or bottom of the page (but not in the margin) in the centre.
The minimum margins in any document must be 20mm.
Each of the following: the request for the grant, the description, the claims, and the abstract, must begin on a new sheet of paper.
The abstract, description and claims must use at least 1.5 line spacing, except where they form part of a translation or a sequence listing.
The capital letters in any typeface or font used must be more than 2mm high.

For the drawings:

Margins must be at least: 20mm top and left, 15mm right and 10mm bottom.
No shading.
Should still be clear if reduced in size to 66% of its original size.
The capital letters in any typeface or font used in any drawing must be more than 3mm high.

Acknowledging Prior Art in the UK

Can complying with European practice render a UK patent invalid?

Those of you familiar with European patent practice will be intimately acquainted with the joy that is “two-part form”. This is where features known from prior art cited in a search or examination report are placed in a preamble to a claim, with novel features being placed after words such as “characterised by…”. While not compulsory, it is normally requested during prosecution. An amendment to place a claim in “two-part form” is usually accompanied by an amendment adding references to the prior art to an introductory portion of the patent specification. Case law from the European Patent Office deems that these amendments do not add subject matter.

As these amendments are so common, it is easy to assume that they are also valid under UK patent law. However, this may not be the case.

The Manual of Patent Practice (MPP – Section 76.14) states that:

There may be no objection to an amendment introducing information regarding prior art, provided it does not alter the construction of the claims of the patent in suit (Cartonneries de Thulin SA v CTP White Knight Ltd [2001] RPC 6).

Note the language of “no objection” rather than a statement that this is allowable. The MPP goes on to state:

In Palmaz’s European Patents (UK) ([1999] RPC 47, upheld on appeal [2000] RPC 631) Pumfrey J stated that the practice, allowed by Advanced Semiconductor Products OJEPO 8/94 & [1995] EPOR 97 (G 01/93) of adding an acknowledgement of prior art to the body of the specification and limiting the claim by reference to the prior art so acknowledged was too generally used in proceedings before the EPO to be challenged, but noted that caution must be exercised where the patentee himself described the prior art in terms which he proposes to use in the limitation of his claim.

In the High Court decision in Cartonneries De Thulin SA v CTP White Knight Ltd, Mr Justice Neuberger (as he then was), said that:

94. I ought perhaps add this. I would be reluctant to hold that the addition of a reference to the prior art in a patent constituted impermissible added matter. However, I accept that it could well be that, if the Court concluded that the way in which this subsequently added prior art was described in the relevant patent resulted in a different construction of a particular claim in the patent from that which the Court would otherwise have adopted, then it could well be that it constitutes added matter.

In the subsequent appeal, the Lord Justices found that an amendment to the claim based on a prior art citation added subject matter and ordered the patent to be revoked.

In Palmaz’s European Patents (UK), the late Mr Justice Pumfrey (as he then was) found that an amendment to limit a claim by reference to cited prior art would add subject matter by introducing an interpretation of the claims that was not derivable from the application as filed.

Where does this leave us?

Basically, for prosecution of UK applications the guidance is: do not amend the specification or claims to reference prior art cited later in prosecution. In particular: do not make changes to the claims that are only derivable from material in the the cited art.

When amending a European patent application that is destined for the UK, the guidance is: be careful. Make sure that the placing of the claim in two-part form can be unambiguously derived from the application as filed and keep discussion of the prior art to a minimum.

I think in most cases it would be relatively easy to argue that adding a prior art reference or placing in two-part form changes the interpretation of the claims. Whether this added subject matter would be decided on the facts but the matter is likely arguable, being open to a subjective reading of the specification. This offers an interesting strategy for UK litigation of granted EP(UK) patents that have been amended to two-part form according to EP practice; it may be worth adding a short added subject matter objection to any case for invalidity. Even if their hands are tied by common European practice, it would seem that the UK courts are receptive to revoking patents on this basis.

Oops #2! We’ve missed the Compliance Deadline (Rule 30)

There is a particular aspect of UK Patent Law that often confuses patent applicants and exam candidates: the compliance period.

Section 20(1) provides that there is a period within which a UK patent application must comply with the UK Patent Act (PA) and Rules (PR), and sets out the consequence of not doing so:

If it is not determined that an application for a patent complies before the end of the prescribed period with all the requirements of this Act and the rules, the application shall be treated as having been refused by the comptroller at the end of that period…

Rule 30 PR sets this “prescribed period” as the “compliance period”, the last day of which is the “compliance date” . In most cases this “period” is 4.5 years from the priority/filing date or, if it occurs later, 1 year from the issue of the first examination report.

When an examination report is issued under Section 18(3) PA it sets a date by which to file a response and/or amendments, typically 2 or 4 months. It is the practice of the UK Intellectual Property Office (UKIPO) not to refuse the application if a response is not filed, but instead to refuse the application at the end of the compliance period.

This practice has led to a few cases where requests have been filed for reinstatement after refusal at the end of the compliance period, for example, where the failure to reply to the examination report was caused by an error. The law was considered in the case of Anning’s Application, which led to a subsequent practice note being issued. The practice note stated that it was not possible to amend the application if a case was reinstated after the compliance period, as the compliance period was not extended. Only arguments supporting the fact that the application was in compliance with the Act could be filed. This position was arguably unfair to an applicant, they could successfully reinstate an application but have no way of putting it in order for grant.

I was thus pleased to see a new Practice Note issued by the UKIPO on 15 March 2011 on this issue, which clarifies practice and enables the compliance period to be extended as well as offering a period to response to any outstanding examination report following reinstatement. The Note results from the recent case of Ali et al’s Application, which is worth a read for the clear explanation of the law in this area.

EPO Rule Changes: R.141 EPC – Update to Prior Art Exchange Procedures

Following on from my post here, the President of the EPO has decided that an applicant will not need to file search results under R.141(1) EPC if the priority application was first-filed in one of:

US,
UK, or
Japan.

These will be exchanged between the patent offices automatically. In most cases, US, British and Japanese attorneys (and the majority of their clients) can thus let out a sigh of relief.

As set out here, this adds to the exemptions available when the search reports were drawn up by the EPO (e.g. EPO search on international or national applications).

Still from January it is worth checking the state in which a priority application was filed as a general procedural step.

Quick Post: UK Patent Costs

OK. You have, or are going to have, a granted UK patent. It lasts for 20 years from the filing (not priority) date. How much will it cost once granted?

Renewal fees are due annually by the end of the month in which the filing anniversary lies. (E.g. filed on 3 October: pay renewal in 3 months up to 31 October). They are due for years 5 to 20 (i.e. the first renewal is due 4 years from filing for the 5th year).

As of 6 April 2010, the official fees increase from £70 to £600 for years 5 to 20. Current fees can be checked here. This totals £4,550 over the 20 year term (excluding pre-grant prosecution costs).

If you wish for someone else to monitor and pay the fees (typically an annuity service linked with your patent attorney), increase this cost by about 30%, i.e. ~ £6,000.

Official fees can be cut by half if you make licences of right available (which in term limits enforcement/damages in court). If the cost is a burden ask your patent attorney about this option. Application needs to be made at least 10 days before the next anniversary date to obtain the discount on the next fee.