Demonstrating Technical Effect in Software Cases

1. Demonstrating Technical Effect in Software Cases By Keith Beresford

2. Today’s Discussion • Why technical effect? • Software inventions cases in general • Software implemented business methods • The Draft EC Directive

3. Purpose “All I want to know is what was in God’s mind when he created the world. The rest is detail.” (Einstein)

4. Purpose of Patent System • To encourage new technologies • To encourage improvements in technology • To encourage dissemination of knowledge

5. Achieving the Purpose • A bargain between inventor and public • For the inventor: • A monopoly for limited time • Covering all ways of implementing the invention • For the public: • Invention enters public domain

6. Creating the Bargain • “Letters Patent” = Open Letter • Statute of Monopolies 1623 • outlawed most monopolies • permitted monopolies for new technology • Present Law • European Patent Convention • Patents Act 1977

7. The Essentials of a Modern Patent Law • Defines what may be patented • Sets out how to obtain a patent • Requires a (published) specification • describing invention and implementation • defining the apparatus or process monopolised (the claims) • Defines the rights of the patent owner

8. The Nature of the Monopoly • The right to prevent others from defined activities • Making, selling or using the product or machine • Importing the product or machine • Performing the process • Supplying items for use in infringement

9. Patentable Inventions Are Technical • This applies to all fields • It equally applies to software • A software patent specification must therefore explain the technical character of the invention • Technical problem and solution analysis

10. The Patentable Daisy Diesel engines are patentable Novelty: a daisy embossed on the engine casing Aesthetic effect only unpatentable Technical effect (e.g. improved cooling) patentable Technical effect must be disclosed

11. Summary • Specification describes invention and implementation • Claims define the apparatus or process monopolised • in Europe a combination of “technical features” • The law defines activities prohibited • Technology described enters public domain when monopoly ends

12. Computers and Software • Three Entities: • Hardware • Data • Software • control signals determining processes performed on data

13. The Essential Components of a Computer • Central processing unit (CPU) • processes electrical signals representing data • Mass storage (e.g. hard disk) • stores data and software (programs) • Random access memory (RAM) • stores data signals for processing by CPU • stores control signals (program) for controlling CPU • Input and output units

14. Technical Features in GeneralStructures and Functions • In the mechanical or electrical fields • the components of the apparatus • the functional interaction between them • In the computer field • the components of the apparatus • the components of the program • the functional interaction between them • processes within the computer

15. Technical Structures in Software Cases • The hardware? The network? • Functional program modules and their location on the network • Tables, pre-stored data, their structure and location on network • Structure of user interface • Data structures received, stored, processed and output

16. Technical Functions in Software Cases • The receipt of data • Processes within the computer • the generation and flow of commands (control signals) • the flow and transformation of data • the functional modules called into play and their responses to events • The output of data

17. Non-technical Features • Human beings • Human activities • mental activity • manual activity (as distinct from technical processes taking place as a result of manual activity) • Human institutions e.g. • a bank • pension fund

18. Contents of the Software Patent • The hardware • The pre-stored data, tables etc. • The functional modules of the program • The data input for processing • The steps performed by the functional modules • The processed data output • The benefits achieved

19. Claims in a Software Patent • An “apparatus” or “system” claim • computer containing the novel software • A “process” claim • the process which the program performs • A “program” claim • storage medium or signal carrying program

20. Examples Of Patented Software • Image Processing - improved image • Computer Graphics - easier image manipulation • Natural Language Processing - generating internal data structures or commands in response to natural language input • Business Management System - improved screen interface

21. More examples • Speech recognition software • Trading network • file distribution to minimise network traffic • Expert systems for process control • Neural networks • Word processors • Data base management

22. A Few General Examples of Technical Effect • Higher speed • More economical use of memory • More efficient database search strategy • More effective data compression algorithm • Improved user interface

23. An Example of a Good Disclosure EP 068,093 B (IBM) Word Processor Network

27. Another Good ExampleBusiness Management System - Improved User Interface Giving User Convenience When Entering Data into Different Kinds of File EP 209,907B (Sohei) Decision T 92/0769

31. The Sohei Claim (abbreviated) • A computer system for plural types of independent management …… comprising…… a digital processing unit …… and memory unit…… • the memory unit includes five different kinds of file…… • means for performing five different specified functions on the files…… • means for causing display of user interface…

32. Sohei Reasoning • The technical contribution • “to provide, in the memory, the aforementioned five files and to cause the processing unit to perform the aforementioned five functions would clearly require technical considerations” • The description necessary • Structure of the program • Functions within the computer

33. A Non-technical ExamplePension Scheme per se EP 332,770 (Halley) Decision T 95/0931 (Application Refused)

35. The Pension Scheme Specification No disclosure of computer system or structure and functionality of software for managing the scheme One reference to computer for making certain calculations. No technical features disclosed, no basis for claims reciting technical features No technical effect disclosed

36. The Draft EC Directive • Probably no significant change in what can be patented • Will only permit claims to the programmed computer or the process • No claims to program on a carrier (e.g. disc) • Proposal not properly thought out • practical effects irrational

37. Dealings with the Programmed Computer under Draft Directive • Infringement in • manufacture and sale of computer containing program • import and export of computer containing program • performance of the program (use of the program)

38. Dealings with the Program on a Carrier under Draft Directive • “Indirect” infringement by selling disc for use in the country in which there is a patent • Export of disc not “direct” or “indirect” infringement • no royalty collectable on exported discs • royalty collectable on discs for use in country with patent • Irrational situation

39. THAT’S IT