Case Law Review – T 0004/08

Case:

Claimed Subject Matter:

Method and system for refreshing browser pages

The salient difference lies in the preliminary use of a set of functions which can modify a DOM directly. The term directly is not entirely clear, but the Board understands it to refer to functions which are, in some sense, relatively simple. When considering the whole set of functions available for modifying a DOM, some will certainly be computationally more straightforward and faster to apply, than others. The Board interprets the term directly as stipulating that the functions in the delta renderer are those which are relatively simple in this sense.

Comments:

The Board’s view is that this would have been obvious. A function’s complexity is one of the things the skilled person, a computer programmer, considers daily. She is aware that some functions are simpler and faster to apply than others. She would expect that working entirely with such functions would generally be faster than working with more complicated functions. Thus she would formulate the idea of first trying some simple functions. It is inherent in the concept of trying, that the simple functions may be insufficient. A programmer knows quite well that the set of things that can be done with a small set of functions may be strictly smaller than the set of things which can be done with more functions. It would follow naturally, that the fact that the delta renderer is insufficient must be indicated. That is all that the flag does in the main request. (See section 2.10.)

Case Law Review – T 0037/08

Case:

T_0037/08

Claimed Subject Matter:

Method for controlling subscriber accounts in connection with a pre-paid IN platform, and a pre-paid mediator

In the example of the invention set out from line 26 of page 6 to line 11 of page 7, the charging data are only generated once the service has started running. There is a distinction to be made between delivery of a service and, in this example, delivery of the SMS. Reception of a message at a mobile switching centre is part of the SMS service and an essential part of the delivery of that service. Nevertheless, the full SMS service is not delivered and it seems that claim 1 must be read such that the charging data are sent before the service is complete. (See section 3.4.)

According to D2, a running service is stopped once funds become insufficient, and this requires that charging data are sent before the service stops running. However, it is not quite clear that this is really the same thing as sending the data before service delivery, as stated in claim 1. The Board, then, tends to the view that this feature does provide novelty. (Section 3.5.)

Comments:

The effect of this feature, as argued by the appellant, is to prevent fraud, by which the Board understands that a user should not be allowed to use a service for which funds are not available. As it stands, this effect is not a technical one, and it is necessary to consider what the corresponding technical problem is. The Board notes that the sending of data before a particular time does not imply that the data is used by the recipient before that time; it is, however, a necessary condition for such use. The technical problem can, then, be formulated in this way: allow a check to be made, before service delivery, on whether sufficient funds are available. It would be obvious to the skilled person, faced with this problem, that she would have to provide for the charging data to be sent in time. The Board does not consider that this requires anything beyond the skilled person’s general technical knowledge. Nor, apparently, does the appellant, since the application does not provide more information on this feature than the statement that it is implemented (page 4, lines 19 – 22).

Case Law Review – T 0823/07

Case:

T 0823/07

Claimed Subject Matter:

Searching apparatus and a method of searching.

Novel Features:

(A) the images stored by the image storage means identify or are associated with commercial suppliers;

(B) the linking means links such images, i.e. images which identify or which are associated with commercial suppliers, with the corresponding text item to form listings (stored results entries) to display each text item and corresponding graphical image simultaneously;

(C) so that when the listings are displayed the user is enabled to readily identify a desired commercial supplier from the graphical image.

Comments:

The novel features, however, derive in a straightforward manner from an underlying concept which lacks technical character and does thus not provide a technical contribution to the prior art.

In fact, displaying logos of commercial suppliers in combination with information concerning products, services etc provided by such suppliers is a presentation of information which exclusively addresses the mental and cognitive activities of users. There is no direct causal relationship to the technical solution of a technical problem. Even if it is true that presenting information according to this concept enables the user to identify the desired supplier and the associated listings more easily and quickly than with the prior art system, this result would be entirely subjective depending on the mental furniture of the user.

As follows from decision T 1143/06, the manner how cognitive content is presented to the user may only contribute to the technical solution of a technical problem if the manner of presentation (exceptionally) shows a credible technical effect (see 5.4 of the Reasons of the decision). Non-technical features and aspects of an invention should not be given any weight in assessing inventive step. If they belong to the general framework in which the invention evolves, they may be used in formulating the relevant technical problem (see decision T 641/00 – Two identities/COMVIK, OJ EPO 2003, 352).

There has been no proof of any such technical effect of the present concept of presenting information, beyond the alleged advantages which concern the mental and cognitive activities of the user. The only credible technical effects result from the computer implementation of this concept.

This circumstance distinguishes the case from the decisions cited by the appellant in support of its arguments (see X. above). In all these decisions, the board concluded on the existence of a technical contribution over the prior art. The technical contribution resulted from overcoming physical limitations of the size and resolution of computer screens (T 643/00, T 928/03) and from the functions of a “new input device” conferring technical character (T 333/95). Neither one of the decisions derives the technical character of a feature or activity from the mental effort required or any similar effect; these are only secondary considerations. Moreover, in the context of inventive step, caution is required in applying old decisions concerning non-technical subject-matter like decision T 333/95 since the relevant case law has experienced some important development as explained in decision T 154/04 – Estimating sales activity/DUNS LICENSING ASSOCIATES, OJ EPO 2008, 46.

In the present case, the only relevant technical aspects of the invention are standard programming features for implementing the idea of displaying search results in connection with supplier logos on a computer system. The programming and implementation of this idea is obvious in the light of the prior art.

Case Law Review – T 1359/08

Case:

T_1359/08

Claimed Subject Matter:

Versioning of elements in a configuration model

A method for defining a configuration model for a configurable product and for updating subcomponents thereof. As explained in the description, a “configuration model is generally some collection of … information that is needed to configure the product” (see p. 2, section 0003). The configuration model includes components, subcomponents, and elements which define characteristics of the product as for example prices, costs, colours etc (see p. 3, section 0011 ff.).

Comments:

Defining a configuration model and its components and subcomponents is thus a form of information modelling, which is, as such, not an invention for the purposes of Article 52(1) EPC (cf decision T 49/99 – Information modelling/INTERNATIONAL COMPUTERS, not published; retrievable from URL: legal.european-patent-office.org/dg3/pdf/ t990049eu1.pdf). The same holds for the management of information models during their life cycle. In general, abstract activities in the field of information management are per se not patentable, and to the extent that they do not interact with technical features to contribute to the technical solution of a technical problem they cannot establish novelty or inventive step (for a summary of the relevant case law, see the EPO-publication “Case Law of the Boards of Appeal of the European Patent Office”, sixth edition, European Patent Office, July 2010, chapter I.D.8.1.).

All features in claim 1, except for the general computer-implementation of the method, concern abstract processes of information management in the context of defining and updating a configuration model. In particular, setting versions of the model to an active or inactive state is primarily part of the abstract concept of managing the update process and not per se a genuine technical feature of the computer implementation.

The present application does not provide any specific information about the computer implementation of the method at all. Even from the drawings, no details of the implementation can be derived. Only from the acknowledgement of the background art and from general statements at the end of the application, starting with section 0067, can it be understood that the computer implementation is a possibility for carrying out the invention.

Considering that the application is confined to disclosing abstract concepts of information management rather than setting out a practical computer implementation, the Board concludes that a technical interpretation of the said features of the second auxiliary request would be inappropriate. The board judges that these features do not support inventive step.

Case Law Review – T 1841/06

Case:

T_1841/06

Claimed Subject Matter:

Integrated multilingual browser

The claimed method is essentially characterised in that the source documents are automatically translated on-the-fly at the time the user requests access to the source documents (main request), or in that the web page retrieved is translated and cached on the web server before being sent to the user (auxiliary request).

Comments:

According to the claims as interpreted by the appellant, all web pages requested have been translated into the selected language before being sent to the user; this serves the aim to present to the user only the translated versions of web pages.

This aim and object of the invention is at best the result of balancing various mental preferences of the user but it is per se not a technical problem. Having the option of choosing between an original language and the preferred language might be felt as an inconvenience by one user but as an advantage by another. The invention brings about a mental simplification and subjective advantage for some users but it does not provide any objective advantage nor any technical advance in any field of technology. Such purely subjective preferences like any other non-technical aspects of an invention do not form a valid basis for a technical and inventive contribution over the prior art (for a summary of the practice of the EPO in dealing with non-technical subject matter, see for example the EPO-publication “Case Law of the Boards of Appeal of the European Patent Office”, sixth edition, European Patent Office, July 2010, chapter I.D.8.1).

The computer implementation of the claimed methods requires only minor changes to the machine translation system of document D7. In the W3-PENSÉE type 2 system (see figure 4), for example, only the step of sending the original data need be omitted (the box in the middle of the flow diagram); then the subsequent step shown in the right box at the bottom of the flow diagram (see document D7, figure 4) fully meets the aims of the present invention. These changes to the prior art system do not involve any inventive step.

It might be argued that in the type 2 system the web pages translated are cached but not in a cache on the web server. However, it is an obvious alternative to locate the translation cache at any appropriate place in the World Wide Web other than between Internet and client. Such an alternative arrangement is shown, for example, in document D7, figure 1 in connection with the WWW server type.

Case Law Review – T 1097/06

Case:

T_1097/06

Claimed Subject Matter:

A computer-based system and method for detecting risks.

A specific object of the invention is to provide a computer-based system and method for detecting risks emerging in geographical areas without having to collect measurements of risk indicators in all of the geographical areas (A1 publication, paragraph [0004], last sentence).

Comments:

Side steps inventive step issues raised in examination by refusing application for lacking novelty over the prior art.

Can software be patented?

Can software be patented? If so, in what form?

This post provides some general background on the issue and briefly considers two pending cases in Europe and the US.

The patentability of software has important consequences for the way in which individuals and businesses protect, and make money from, their creations under the law.

Nearly all modern inventions make use of a computer, whether in their design, construction or operation. The Internet is simply a network of computers.

On one side of the debate are those calling for the abolition of patents for software; on the other side are those calling for clearer protection.

Quick Crib Sheet

A patent is a property right granted by a state which allows its holder to prevent third parties from commercially exploiting an invention for a set period of time.

The enforcement of a patent is governed by national law. The procedure for obtaining a patent is governed by at least one of national law (e.g. the UK Patents Act), regional treaty (e.g. The European Patent Convention) and international treaty (e.g. The Patent Cooperation Treaty).

The era of revolution, both industrial and political, gave birth to substantive patent law. Modern patent law was codified in the post-war period. British, European and international codes were drawn up in the 1970s.

Since the 1970s, the growth in computing has been exponential.

From this:

Computer - 1970s c/o Ecksemmess

to this:

Under British and European patent law, a patent cannot be granted for “business methods” or “computer programs” “as such”. However, certain inventions may be patented as “computer-implemented inventions” (CIIs). The law in the UK and Europe should be harmonised but in practice differs on points of interpretation. This prompted Lord Justice Jacob, in the Court of Appeal, to ask the European Patent Office for clarification in 2006. The European Patent Office refused the request.

In the US, case law developed at the turn of the last century was used to demonstrate a “business method” exclusion for patents. This changed in the late 1990s when, under pressure from the dot-com boom, the US Patent Office began to grant patents for “business methods” implemented using a computer. The explosion of such patents, which were considered by some to be of “potential vagueness and suspect validity”, has recently seen a legal backlash.

Cases:

Europe:

Points of law are considered by the Enlarged Board of Appeal. On the 22 October 2008 the (British) President of the European Patent Office referred a series of questions to the Board. These questions were formulated to seek an answer to the question above and provide guidance for national harmonisation. The Board may dismiss the referral.

The referral was rigorously debated by the high-tech community. Amicus curiae briefs were filed by many well-known companies, including Apple, IBM, and Philips, as well as by groups such as the Foundation for a Free Information Infrastructure and the Pirate Party.

US

The US Supreme Court is presently considering a case concerning a 1997 patent application filed by Bernard Bilski on a business method for hedging financial trades (known generally as “Bilski”). The application was rejected by the U.S. Patent Office and this decision was upheld by the Federal Circuit Court. As in Europe, the case has ignited fierce debate; amicus curiae briefs have been filed on behalf of, for example, Microsoft, Google, and Bank of America, as well as associations both for and against patents for software.

Case Law Review – T 1227/05

Case:

T_1227/05

Claimed Subject Matter:

The purpose of the application is to simulate or model the performance of a circuit under the influence of a 1/f noise, i.e. a stochastic process with a frequency spectrum whose intensity is inversely proportional to a power beta of the frequency. The process describes the time dynamics of a physical variable, e.g. electric voltage.

The solution is based on the notion that 1/f noise can be simulated by feeding suitable random numbers into the circuit model. The application derives the numbers from a Gaussian stochastic process BFBM (fractional Brownian motion as a function of time) whose derivative is known to have a 1/f spectrum. The BFBM process and its derivative are characterised in particular by a covariance function and a covariance matrix.

The invention generates a covariance matrix which features the same simple elements as the covariance matrix (equation 2.7) of the derivative of the fractional Brownian motion. A triangular (Cholesky) decomposition of the generated covariance matrix is multiplied by a vector x of random numbers having a Gaussian distribution. Due to the design of the covariance matrix, the resultant random number sequence y forms a 1/f noise source.

Comments:

The board held that specific technical applications of computer-implemented simulation methods are themselves to be regarded as modern technical methods which can form an essential part of the fabrication process and precede actual production of a product. Such simulation methods cannot be denied a technical effect merely on the grounds that they do not yet incorporate the physical end product.

The take-away point is that if a simulation is clearly and specifically limited to a narrow technical field (and particular technical features within that field) it is more likely to be found to be technical it itself.

While the invention may be preceded by a mental or mathematical act, the claimed result must not be equated with this act. The present claims relate to a simulation method that cannot be performed by purely mental or mathematical means, not to the thought process that led to that simulation method.

Simulation performs technical functions typical of modern engineering work. It provides for realistic prediction of the performance of a designed circuit and thereby ideally allows it to be developed so accurately that a prototype’s chances of success can be assessed before it is built. The technical significance of this result increases with the speed of the simulation method, as this enables a wide range of designs to be virtually tested and examined for suitability before the expensive circuit fabrication process starts.

Without technical support, advance testing of a complex circuit and/or qualified selection from many designs would not be possible, or at least not in reasonable time. Thus computer-implemented simulation methods for virtual trials are a practical and practice-oriented part of the electrical engineer’s toolkit. What makes them so important is that as a rule there is no purely mathematical, theoretical or mental method that would provide complete and/or fast prediction of circuit performance under noise influences.

For example, specific technical applications of computer-implemented simulation methods are themselves to be regarded as modern technical methods which form an essential part of the fabrication process and precede actual production, mostly as an intermediate step. In view of this development it must be assumed that the outlay for implementing a technical product will increasingly shift to the numerical simulation phase, while final implementation of the simulation result in the actual manufacture of the product will entail no or only comparatively little extra innovation effort. In that light, such simulation methods cannot be denied a technical effect merely on the ground that they do not yet incorporate the physical end product.

A further fundamental change is to be found in the fact that development and production are increasingly separated, materially and geographically, in a globally distributed industry. In that light, too, the board considers specific patent protection to be appropriate for numerical development tools designed for a technical purpose.