EPO Computer-Implemented Invention Round Up

A quick post that checks on the state of play for computer-implemented inventions (“software patents”) at the European Patent Office. It has a quick look at some minor updates to the Guidelines for Examination and then reviews a few recent Board of Appeal cases.

Guidelines for Examination

After the overhaul of 2018, there are relatively few updates to the Guidelines for Examination for the 1 November 2019 edition. I go through those that relate to computer-implemented inventions below. I recommend viewing the links to the sections with the “Show modifications” check box ticked.

Section G-II, 3.3.1 on “Artificial intelligence and machine learning” has been tweaked to indicate that terms such as “support vector machine”, “reasoning engine” or “neural network” do not by themselves imply a technical means. They must be considered in context (i.e. make sure you describe a “hard” engineering problem and context).

Section G-II, 3.3 on “Mathematical methods” has a few minor changes.

It is stressed that special attention needs to be paid to the clarity of terms in claims that relate to mathematical methods. If terms are deemed to have “no well-recognised meaning” this may make it difficult to demonstrate a technical character (and so care should be taken to provide detailed functional definitions within the detailed description).

It is also added that mathematical methods may produce a technical effect when applied to a field of technology and/or adapted to a specific technical implementation. In this case, the “computational efficiency” of the steps of the methods may be taken into account when assessing inventive step. This is echoed in a minor update to section G-II, 3.6 on “Programs for computers”.

As also discussed below, the EPO is hinting that it might be a good idea to provide some actual experimental evidence to back up claims of increased efficiency when dealing with more abstract software-style inventions.

T 1248/12 – Data Privacy

T 1248/12 considers the field of data privacy.

In this case, the Board distinguished the field of data privacy from the field of data security. It was implied that the field of data security could give rise to technical solutions that provide an inventive step under Article 56 EPC. However, the field of data privacy was felt to relate to administrative, rather than technical, endeavours. In particular, the Board held that de-identifying data, by removing individually identifiable information, and by aggregating data from a plurality of sources, was not technical. It was felt that the claims related to data processing with a legal or administrative aim, rather than a technical one.

It is noted that the specification of the patent application was relatively light on concrete technical details – this may have led the Board to a negative opinion. The generalizations to the field of data privacy are perhaps too heavy-handed; there appears to be room to argue that some data privacy systems do contain technical features. In the light of this case, those drafting applications directed towards a data privacy aim may wish to determine if the technical effects may be recast in neighbouring data security fields.

T 0817/09 – Scoring a Document

T 0817/09 related to a computer implemented method for scoring a document.

The scoring was related to history data and was generated by monitoring signatures of the document, where the signatures were provided in the form of “term vectors”. As per similar linguistic processing cases discussed before, the “term vector” was found not to be “an inherently technical object” and “semantic similarity” was deemed to be a non-technical linguistic concept. The Board considered that solutions developed by the “notional mathematician” or the “notional computer programmer” would generally not be technical, whereas solutions developed by a digital signal processing engineer could be technical.

On the facts, the claimed methods were not found to provide any resource savings that could be presented as a technical, rather than linguistic effect. This does, however, suggest that providing evidence of technical improvements, e.g. reduced server processing times and/or reduced memory usage, may help applications with algorithmic subject matter.

T 0697/17 – Database Management Systems

T 0697/17 considered the patentability of SQL extensions within a relational database.

At first instance, the Examining Division held that the claim in question “entirely described a purely abstract method”. The Board disagreed: they held that the claim related to a method performed in a relational database system, which was a known form of software system within the field of computer science and as such would involve a computer system. The claim was thus not an abstract method. The Board noted that describing a technical feature at a high level of abstraction does not necessarily take away the feature’s technical character.

In consideration of inventive step, the Board cited T 1924/17, and stated that features make a technical contribution if they result from technical considerations on how to (for instance) improve processing speed, reduce the amount of memory required, improve availability or scalability, or reduce network traffic, when compared with the prior art or once added to the other features of the invention, and contribute in combination with technical features to achieve such an effect. However, effects and the respective features are non-technical if the effects are achieved by non-technical modifications to the underlying non-technical method or scheme (for example, a change of the business model, or a “pure algorithmic scheme”, i.e. an algorithmic scheme not based on technical considerations). The Board made an interesting distinction between a “programmer as such” and a “technical programmer”, and stated it was difficult to distinguish abstract algorithmic aspects that were non-technical and arose from the “programmer as such” from “technical programming” aspects that arose from the “technical programmer”.

Returning to T 1924/17, the Board concluded that a database management system is not a computer program as such but rather a technical system. The data structures used for providing access to data and for optimising and processing queries were deemed functional data structures and were held to purposively control the operation of the database management system and of the computer system to perform those technical tasks. While a database system is used to store non-technical information and database design usually involves information-modelling aspects, which do not contribute to solving a technical problem, the implementation of a database management system involves technical considerations. In the end, the case, which had been pending for 13 years, was remitted back to the Examining Division with an informally rap over the knuckles. It provides a useful citation for those drafting and prosecuting applications relating to database management systems.

Amazon’s “One Click”: Still Not Inventive [T 1244/07]

Often, when discussing my job in public, I receive a number of pontifications on the various merits, or more usually demerits, of “the patent system”.  It is said that “the patent system” is “broken” and that there are far too many “dubious patents”. Oft cited is Amazon’s “1-Click” patent, typically described as a monopoly on anything “1-Click” related.

In reply, I politely ask which “patent system” is being discussed, explaining the system of national territorial rights. The eyes then glaze over as I launch my defence.

Helpfully for me the European Patent Office has recently published Board of Appeal decision T 1244/07. This case relates to a divisional European patent application within the “1-Click” family. It is worth a read, especially for those with negative views of “the patent system”, as it rather nicely shows the European Patent system operating smoothly with not a breakage in sight.

Firstly,  the claimed invention does not consist of the words “1-Click”. Instead, all of the following features are required:

         “A method for ordering an item using a client system, the method comprising:

receiving from a server system a client identifier of the client system when the client system first interacts with a server system;

persistently storing the client identifier at the client system, wherein the client identifier is from then on included in messages sent from the client system to the server system and retrieved by the server system each time a message with an identifier is received from the client system by the server system;

storing at the server system for that client and other clients a customer table containing a mapping from each client identifier identifying a client system to a purchaser last associated to said client system;

storing at the server system customer information for various purchasers or potential purchasers, said customer information containing purchaser-specific order information, including sensitive information related to the purchaser;

connecting at a later point in time, when a purchase is intended, the client system to the server system, comprising the steps of:

sending from the client system a request for information describing an item to be ordered along with the client identifier;

determining at the server system whether single-action ordering is enabled for that purchaser at the client system;

if enabled sending from the server system the requested information to the client system along with an indication to perform a single action to place the order for the item;

displaying at the client system information identifying the item and displaying an indication of a single action that is to be performed to order the identified item,

performing at the client system that single action and in response to that indicated single action being performed, sending to a server a single action order to order the identified item and automatically sending the client identifier whereby a purchaser does not input identification information when ordering the item, and

completing at the server system the order by adding the purchaser-specific order information including said sensitive information that is mapped to the client identifier received from the client system.”

Secondly, even with this long list of features the Board of Appeal found the claim to lack an inventive step over previously published documents. In particular a journal article called “Implementing a Web Shopping Cart” by Baron C. et al was cited.

Thirdly, I enjoyed the thinly-veiled dig at US and Canadian law:

         27. It is interesting to observe the outcome of this application in other jurisdictions.

In the US, where there is no specific exclusion for business methods, the validity of the equivalent claims was never decided in court, but a decision by the Court of Appeal of the Federal Circuit (D6) lifted an injunction on the basis that the alleged infringer had “raised substantial questions as to the validity of the … patent”. The patent was also re-examined and allowed in essentially the same form albeit limited with additional features of a shopping cart. The office action in the re-examination did not discuss D1, or go into details of cookie technology and the skilled person’s appreciation of it.

In Canada, the examiner had considered equivalent claims to be obvious over D5 and cookie technology. The review (D7) by the Commissioner of Patents found that the use of a cookie to retrieve purchaser-specific information was obvious (point 87), and the single-action ordering aspect not obvious (point 102), but an unallowable business method (point 181) and not technical (point 186). On appeal, the Federal Court overturned the latter findings for having no basis under Canadian law for such exclusions. D1 was not discussed in either of these decisions.

Non-Attendance at Oral Proceedings: Be Courteous [T1930/07]

A little case law snippet (from T1930/07) to remind parties that are not turning up at Oral Proceedings to inform the EPO beforehand. Manners maketh the man (or woman):

3. The board notes that a professional representative has a duty to inform the European Patent Office as soon as possible of a party’s intention not to be represented at oral proceedings (cf. e.g. T 653/91, reasons 8, and T 1485/06, reasons 2.8; both not published).

Article 6 of the code of conduct of members of the European Patent Institute (epi), of which the representa tive is obligatorily a member, stipulates that the mem bers are required to act courteously in their dealings with the European Patent Office. The epi Council also issued the explicit recommendation that “if a party to an appeal decides that it will not attend a scheduled oral proceedings, the representative of the party should, as soon as possible … before the oral proceedings … inform the board of the party’s non-attendance” (epi Informa tion 4/2009, pp. 133-134).

The board considers it discourteous of the representative in the present case not even to have informed the board in time for the start of the oral proceedings that he would not attend.

Just So (Patent) Stories: How the Patent Got its Claims

Fletcher Moulton LJ explained in British United Shoe Machinery Company Ltd, v A Fussell & Sons Ltd (1908) 25 RPC 631 at 650 how claims came to be incorporated into a patent specification and their purpose:

“As it is the duty of the inventor to give the fullest practical information to the public he is bound to put in, if, for instance the invention is a process, quantities and times which are the best he knows.

But it would be very cruel to hold him to the invention when carried out only with those best quantities and times, because a person could then take his invention in substance if he did not take it in quite the best way, and the value of the grant would be practically nothing. Hence inventors, in their own protection, took to introducing into their specifications language intended to distinguish between that which was there for the practical information of the public, and that which was there for delimitation of the invention.

Correct delimitation was of the greatest possible importance to the inventor, because if his Patent covered something which was old the Patent was wholly bad. At the same time there was the danger of confining himself to a mere outline which gave delimitation, but did not tell the public the best way within those limits of performing his invention. The one duty required him to state his invention in its most general form, and the other duty required him to state it in its best and therefore in a very special form.

Out of that has arisen the practice, which originally was perfectly optional, of having a separate part of the specification primarily designed for delimitation. That is what we call the Claim.”