Posts Tagged ‘Software Patents’

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.

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.

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.

Well, to be precise, computer-implemented inventions under the European Patent Convention.

The Enlarged Board of Appeal has just issued a decision in referral G03/08 (for background see here). The Enlarged Board have decided that the referral is inadmissible. The accompanying opinion states that previous decisions of the Boards of Appeal are not sufficiently “different” (i.e. “conflicted”) to warrant clarification from the higher Enlarged Board.

Better men than I have summarised the decision here:

http://www.ipjur.com/blog2/index.php?/archives/150-EPO-EBoA-Opinion-in-re-G-0308-Patentability-Of-Computer-Implemented-Inventions.html

http://ipkitten.blogspot.com/2010/05/g-308-software-patents-decision-is-out.html

[Update] and here: http://www.iam-magazine.com/blog/Detail.aspx?g=cc296bce-5de8-484c-ac43-95d5b6ce68df featuring Gill Jennings & Every‘s Peter Finnie

To be honest, the decision was pretty much expected: the European Patent Office (EPO) has been taking a fairly consistent approach to computer-implemented inventions and has a growing body of learning materials on the subject. In fact, by no small coincidence, the book “Patent Law for Computer Scientists“, written by EPO Patent Examiners was released a few days ago. I have ordered a copy and will let you know if it is of any use. A review can be found here.

However, the opinion is not without merit. Its 60-odd pages set out the current state of the law on the issue and may provide a useful caselaw summary. I will attempt to read through the pages of dense courier font shortly.

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:

iPhone c/o Masaaki Komori from Tokyo, Japan

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.