Posts Tagged ‘UK Patent Office’

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.
There are a number of dedicated email addresses used by the UK IPO in their day-to-day activities. As I get older, my already over-loaded brain refuses to remember anything with an “@” (which either the Dutch or Germans allegedly call a “monkey’s tail”) . I will therefore set them out below.
[The @ signs below have all been replaced with [at] to prevent crawling by automated spam-bots.]
In general, all emails should be a plain text email message (RFC822-compliant). The UKIPO will not accept MS-TNEF/RTF format messages or HTML format messages. Nor will they accept messages that are encrypted or digitally signed. Make sure you change your email settings appropriately.
The UKIPO will send a return email message confirming receipt of the any sent email – do not assume your email has been received until you receive this.

Extensions

Extensions of time under Section 117B (e.g. for examination reports): pateot[at]ipo.gov.uk
Form of email required
  • Example subject line: “Extension of time under s.117B for patent application number GBYYXXXXX.X”. For requests under section 117B(4)  add the word “DISCRETIONARY” in capital letters.
  • Example body text: “We hereby request a [2 month] extension to the period [for replying to the Examination Report dated DD/MM/YY].”
  • Further extensions under s.117B(4) require reasons.

Withdrawal

For withdrawing a UK patent application: withdraw[at]ipo.gov.uk
Form of email required
  • Example subject line: “Withdrawal of patent application number GBYYXXXXX.X”.
  • The body text of the email message should contain a statement of withdrawal that is not ambiguous or conditional. Such a statement could read:”I withdraw patent application number GBYYXXXXX.X”.
  • If you wish to file a subsequent application, and use this as a basis for a priority claim, then, inter alia, the withdrawal of the application should be made without leaving any rights outstanding. This can achieved using a statement such as “I withdraw patent application number GBYYXXXXX.X without leaving any rights outstanding”. Please note that making this statement rules out the possibility of later making a request to correct the withdrawal of a withdrawn application (resuscitation) or to request reinstatement of an abandoned application (i.e. leave any withdrawals to a professional).
  • The email message should also contain some indication that the person withdrawing the application is authorised to do so, eg. “I am the applicant / the applicant’s agent for the application”.
  • The email message should contain no attachments and the request to withdraw the application should not be contained in an attachment. The request should be made in the body of the message.
  • Also see here.

Third Party Observations

For submitting third party observations under Section 21: section21[at]ipo.gov.uk

Form of email required
  • Example subject line: “Third Party Observations under s.21 for patent application number GBYYXXXXX.X”.
  • Observations can either be provided in the body text of the email or in an attachment. The attachment should preferably be in one of the following formats: MS Word, WordPerfect, PDF or plain text (.txt/.rtf).

Amendments

Filing amendments to a patent under Sections 27 or 75: litigationamend[at]ipo.gov.uk

Form of email required
  • Example subject lines: “Proposal to amend patent number GBXXXXXXX under s75 before the courts [or the comptroller]” or “Proposal to amend patent number GBXXXXXXX under s27” as appropriate.
  • The text may be provided as an attachment to the email.
  • Use of “Track Changes” is encouraged.
  • Accepted formats, inter alia, MS Word, WordPerfect, and PDF.

Observations on Patent Office Opinions

Filing observations for a UKIPO Opinion: opinions[at]ipo.gov.uk

Form of email required
  • Example subject line: “Observations relating to Opinion No. [NN/YY]”.
  • Observations can either be provided in the body text of the email or in an attachment. The attachment should preferably be in one of the following formats: MS Word, WordPerfect, PDF or plain text (.txt/.rtf).
  • An acknowledgement may not be provided immediately.
[ Image: Modern lamp letter box at Abbey Mill, Tintern (Roy Parkhouse) / CC BY-SA 2.0 ]