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.

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.

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.

Case Law Review – T 1954/08

Case:

T 1954/08

Claimed Subject Matter:

Predicting marketing campaigns using customer-specific response probabilities and response values (SAP).

The application seeks to improve on iterative algorithms which have been used to find a global maximum of a goal value of an envisaged marketing campaign. The iteration represents a “simulation” of the marketing campaign.

 Comments:

The use of computers for automation purposes is technical but commonplace.

A mathematical algorithm may become a technical means, i.e. it may go beyond a mere mathematical contribution, if it serves a technical purpose (T 1227/05-points 3.1 / 3.2).

Anticipating a maximum revenue or profit value of a marketing campaign is a commercial rather than a technical purpose. Therefore, the iterative mathematical algorithm of claim 1 remains a mere mathematical contribution which does not enter into the examination for an inventive step.

The Board agrees that the mathematical algorithm is not provided by the business manager who is only interested in an economic forecast on which he can base his decision for a marketing campaign.

However, the Board does not agree with the appellant’s conclusion that the algorithm is provided by the implementing programmer. In the absence of a technical overall effect and purpose, the algorithm is provided by a mathematician for mathematical and ultimately commercial purposes. Mathematical definitions do not become technical by defining commercial relationships.

In T 1227/05, point 3.2.5 it was held that processing speed was not a suitable criterion for distinguishing between technical and non-technical method steps since it was always possible to conceive of a slower algorithm than the one claimed. Similarly, the sole amount of memory a computer-implemented algorithm requires is equally unsuitable for determining whether or not a method step contributes to the solution of a technical problem since it is always possible to imagine an algorithm demanding more memory. Furthermore, whether or not an algorithm is similar to what a human being would do may play a role for the examination for inventive step, but this examination presupposes that the technicality of the feature has been established.

The Board concludes that the claimed method does not involve an inventive step over a general computerised method for processing data according to any existing mathematical algorithm and, thus, does not meet the requirements of inventive step.

Case Law Review – T 0844/09

Case:

T_0844/09

Claimed Subject Matter:

A computer-implemented method of operating a verification system (100) for verifying details of transactions drawn upon a financial account and a user’s authorization to use the financial account, the method comprising:

    • receiving from a user, at a user interface (102), information identifying (204) a financial account which the user desires to use, before the user may initiate an online transaction using the financial account;
    • generating (208) a series of verifying transactions involving the financial account, with selected details of the transactions not being known to the user;
    • initiating (210) the series of verifying transactions from a transaction processor (106);
    • storing in storage means within the verification system a first set of details of said series of verifying transactions;
    • receiving (216) from the user, at the user interface, a test set of details, to include specified details of evidence of the verifying transactions retrieved by the user from his or her financial account;
    • comparing (218) said test set of details to said first set of details; and
    • if said test set of details matches said first set of details, authorizing (220) the user to conduct online transactions using the financial account.

Comments:

Claim 1 concerns a computer-implemented method of operating a verification system for verifying details of transactions drawn upon a financial account and a user’s authorization to use the financial account. It thus relates to the field of schemes, rules and methods for doing business, which shall not be regarded as inventions pursuant to Article 52(2)(c) EPC. The corresponding features in claim 1 are deemed to be non-technical. The method of claim 1 is, however, defined to be computer-implemented and thus involves a computer as technical means, with a transaction processor, storage means and a user interface. The corresponding features in claim 1 are technical. Claim 1, thus, contains both non-technical and technical features and has technical character as a whole. Accordingly, the subject-matter of claim 1 is not a scheme, rule or method for doing business as such. The patentability of the subject-matter of claim 1 is, therefore, not considered to be excluded under Article 52(2) and (3) EPC (cf T 258/03 (OJ EPO 2004, 575), reasons 3 and 4).

Although verifying a user’s authorization to use a financial account may in certain cases involve an administrative procedure lacking technical character, this is not considered to be the case for the subject-matter of claim 1.

The verification of the user’s authorization to use a financial account in the present case, in particular the recognition that the retrieval by the user of transaction details offers a convenient and secure channel for forwarding transaction authentication information to the user, and the realization that “verifying” transactions can be generated and initiated to contain the transaction authentication information, relies on a technical understanding of the operation of the transaction system and its respective components and, thus, lies within the scope of a technically qualified person working in the field of computer-implemented online financial transaction systems and notably entrusted with the security aspects thereof.

Neither the business professional nor the administrative professional would, in the board’s judgement, be qualified and indeed able to devise any of these ideas as they lie outside their areas of competence.

Accordingly, the above consideration relating to the verification of the user’s authorization to use a financial account cannot be included in the formulation of the technical problem, contrary to what is essentially argued in the decision under appeal applying the principles of decision T 641/00 (cf above).

Still, the remaining features of claim 1 relating to a financial transaction refer to an aim to be achieved in the field of schemes, rules and methods of doing business, deemed to be non-technical, which may legitimately appear in the formulation of the problem (following T 641/00 above).

The appellant argued that since the user had to obtain transaction details online relating to a previous or test transaction, effectively he had to pass two levels of verification in order to use an account.

This argument is, however, not convincing. In conventional online-banking systems, involving the use of lists of Transaction Authentication Numbers (TAN) provided to the user like in D3, the user gains online access to a bank account via an internet site of his bank, typically by entering the bank account number and a password, thereby passing a first level verification. At this point, the user has eg direct access to his financial statements or can initiate a fund transfer for which a TAN will be needed. In the case envisaged in the application and covered by claim 1 where the transaction authenticator in the form of a set of details of evidence of a verifying transaction is available through online access to the financial statement of the bank account, a fraudulent user will, thus, have unrestricted access to the transaction authenticator. Accordingly, no second level verification needs to be passed in this case.

The objective problem to be solved relative to document D3, accordingly, is to provide transaction authenticators to the user in an alternative manner.

The claimed solution consists in:
– generating (208) a series of verifying transactions involving the financial account, with selected details of the transactions not being known to the user;
– initiating (210) the series of verifying transactions from a transaction processor (106);
– storing in storage means within the verification system a first set of details of said series of verifying transactions;
– receiving (216) from the user, at the user interface, a test set of details, to include specified details of evidence of the verifying transactions retrieved by the user from his or her financial account;
– comparing (218) said test set of details to said first set of details; and
– if said test set of details matches said first set of details, authorizing (220) the user to conduct online transactions using the financial account.

This solution is not rendered obvious by document D3.

Case Law Review – T 2464/09

Case:

T_2464/09

Claimed Subject Matter:

A system for automatically managing workflow, comprising:

    • a first computer arranged to receive an originating job request and job instructions from an authorized user, and to generate a job packet associated with-a digital file, wherein the digital file represents job input from the authorized user, and
    • a second computer for processing said job packet;

characterised in that the first computer is arranged to interpret said job instructions to provide in the job packet a job record that includes a set of computer-readable job processing requirements and the second computer is arranged to read and analyze the job processing requirements, to maintain respective scribe data for each of a plurality of scribes, the scribe data including a respective schedule data associated with each scribe and indicating when the respective scribe is to be available to work, and to automatically forward job step data to a remote computer associated with a selected scribe based on the corresponding schedule data.

Comments:

Underlying the system defined in claim 1 is a method of allocating work to workers.

A manager receives a job specification from a client and uses it to generate a “job packet” which he passes on to another manager. The second manager maintains data, including schedules, about “scribes” and forwards the job packet, or part of it, to particular scribes on the basis of their schedules. There is nothing technical in the underlying method.

It would have been obvious to the skilled person, seeking to automate that method, to use a network of computers. Once it had been decided to use such a network, it would have followed directly that the “job packet” would be associated with a digital file, that the data would be maintained on the second computer, which takes the role of the second manager, and that forwarding would be automatic.

The appellant has argued that account must be taken of the state of technology in 1998, without knowledge of the developments which have taken place since. The Board accepts that, but notes that the use of a network of computers in similar systems was known in 1998. D1 provides an example. The argument above relies only on the obviousness of using a network of computers, and not on any technical details beyond the abilities to store, process and communicate data.

Case Law Review – T 2090/08

Case:

T_2090/08

Claimed Subject Matter:

Method and system for transferring or returning unused digital rights.

The independent claims of the main request differ from the disclosure of the prior art (D1) by the following features:

    1. The procedure according to D1 requires manual user intervention to store the licence on a floppy disk and to install it on the second device, whereas the transfer procedure according to the claimed invention is automatic and runs under the control of the server. More specifically, the claimed procedure involves a request message from the first terminal to the server, identifying inter alia the second machine to which the rights object is to be transferred, and a response message from the server to the first terminal after succesful transfer of the rights object.
    2. The system of D1 does not provide the first device with selection options when the transfer fails.
    3. D1 does not disclose that a revoked license, i.e. the rights object, is deleted from the first terminal, let alone in response to a response message indicating successful transfer of the license.

Comments:

In the board’s judgment, differences 1)-3) solve the following problems:

    1. Difference 1) makes the relicensing procedure of D1 more convenient for the end user by avoiding the need for a manual transfer of the license.
    2. Difference 2) handles the possible failure of the relicensing procedure at the second terminal.
    3. Difference 3) saves storage on the first machine by deleting a revoked license. The board considers that these problems arise naturally in the context of D1.

The board considers it obvious to provide a protocol according to which the first end user’s machine and the license clearing house, i.e. the server, communicate using a “request message” which, inter alia, identifies the “second machine” to the license clearing house, and wherein a “response message” is used which acknowledges this request to the first machine and confirms successful receipt of the license.

The problem to contain, control or reduce storage consumption is one that, in the board’s view, a person skilled in software development is always aware of. The board therefore deems obvious the idea that any unused data object – such as, in D1, a revoked license – should, at some point, be deleted from the end user’s machine. It is also obvious for the skilled person that the unused data object can be deleted as soon as possible or at later point in time. In order to choose between these alternatives the skilled person would have to assess the circumstances and weigh the requirements against each other, including, e.g., whether storage consumption is critical and whether it is likely that a deleted object may be needed again later (see point 5 above). In the board’s view, the skilled person would make this assessment and choice as a matter of routine and with out exercising an inventive step.