Case Law - Decisions by the EPO Board of Appeal in the Field of Computer Implemented Inventions

1. Case Law - Decisions by the EPO Board of Appeal in the Field of Computer Implemented Inventions Conference on Patentability of CII Ankara, 1 - 2 June 2010 Eva Hopper and Edoardo Pastore Patent Examiners, Cluster Computers European Patent Office

2. Disclaimer: The presentation and in particular the treatment of the examples reflects the personal opinion of the authors and does in no means prejudice any Examination Division or Opposition Division working on related applications. 2

3. Agenda • Introduction: Case Law and Board of Appeal • Business and Administration • Gaming • Database Management • Digital Rights Management • Modelling & Simulation 3

4. 1. Introduction: Case Law & Board of Appeal 4

5. EPO: Examination - Opposition - Appeal EXAMINATION refusal grant of a European patent OPPOSITION APPEAL maintenance revocation 1. Instance 2. InstanceBoard of Appeal European Patent Office Guidelines Case Law validation in EPO member states 5

6. What is an Invention? There is no positive definition of the term "invention" in the EPC. EPC - The European Patent Convention Interpretation Guidelines for Examination in the EPO Case Law of the Boards of Appeal 6

7. 2. Business & Administration T641/00: two identities/ COMVIK (26.09.2002) T172/03: order management/ RICOH (27.11.2003) T258/03: auction method/ HITACHI (21.04.2004) 7

8. The COMVIK approach (T641/00 26.09.2002) • Prior art:Standard GSM system The same GSM subscription can be used: • for both service and private calls • or by different people • Problem (according to appellant):"distribution of costs for service and private calls or among different people may cause problems or involve extra work". 8

9. The COMVIK approach - T641/00 • Solution:two identities • Difference over state of the art (standard GSM system): (i) the SIM is allocated at least two identities, (ii) said at least two identities being selectively usable, and (iii) the selective activation being used for distributing the costs for service and private calls or among different users. 9

10. The COMVIK approach - T641/00 • Original problem:Distributing costs is not disclosed as a technical function of the system and the inconveniences to be eliminated are not located in any technical aspect of the GSM system. • Reformulation of the technical problem: How to implement the GSM system in order to allow the user-selectable discrimination between calls for different purposes or by different users. • Skilled person: An expert (programmer) in GSM systems that receives the concept of the cost distribution as part of the instructions for implementing the services to be provided to the customers. 10

11. T641/00 - Solution in three steps ... • The skilled person knows that discriminating requires the allocation of different IMSI numbers, i.e. the implementation of a corresponding numbers of GSM applications on the SIM card [feature (i)]. • Faced with this requirement, she finds a solution in the GSM standard (D8), which discloses the use of a multi-application smart card where commands are provided to select the desired application [feature (ii)]. • The distribution of costs [feature (iii)] derives from the prior art in straightforward way, as costs are charged in the same way. ... but none of them is an inventive one 11

12. Lessons learned from COMVIK (T641/00) • An invention consisting of a mixture of technical and non-technical features is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character, whereas features making no such contribution cannot support the presence of inventive step. • An aim to be achieved in a non-technical field may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met. 12

13. The RICOH approach (T172/03 27.11.2003) • Topic: the ordering of expendable office supplies (copy paper, toner cartridge) by multiple departments within an organisation is to be centralised • Problem (according to appellant): improved office system suitable to select supplies. 13

14. The RICOH approach (T172/03) • Solution: order processing by a central unit • Effects (according to appellant):- choice of supplier acc. to best price priority and supplier priority- automatic processing of orders - minimal load of data processing 14

15. The RICOH approach (T172/03) • Closest prior art: distributed information system comprising multiple general purpose computers at different locations and connected by a communication network = common general knowledge in 1995 (priority year) • Difference:functional features and data structures for implementing the essentially business-related aspects and features of the order management method • Objective technical problem: providing an implementation of the business related featuresof the order management method • Skilled person: an expert in a technical fieldAn expert in data processing who receives the concept of order management as part of the "requirements specification". 15

16. anything which is not related to any technological field ≠ state of the art Lessons learned from RICOH STATE OF THE ART = State of the art in a technical field • The term "state of the art" in Article 54 EPC should, in compliance with the French and German text, be understood as "state of technology", which in the context of the EPC does not include the state of the art in commerce and business methods. • The term "everything" in Article 54(2) EPC is to be understood as concerning such kind of information which is relevant to some field of technology. System, unit or meansdo per se not have any technical connotation.They may simply define business unit or methods, but they may nevertheless, at the same time, refer to corresponding technical components of the system. 16

17. Lessons learned from RICOH CLOSEST PRIOR ART:can be common general knowledge. SKILLED PERSON is an expert in a field of technology. He receives the details of the business method in the form of a requirements specification about the business method. AUTOMATION:Where the claim differs from the closest prior art only in a mere automation of constraints imposed by the purely non-technical aspects, such automation using conventional hardware and programming methods is considered to be obvious to a skilled person. 17

18. The HITACHI approach (T258/03 21.04.2004) • Topic: automation of an auction method • Prior art (according to appellant): - auction method where bidders participate online and in real time in front of terminals; - "Dutch auction": = gradually lowering the price • Problem (according to appellant): - to provide an automatic auction method which makes it unnecessary for the bidders to be strained before terminals at the time of the execution of an auction 18

19. The HITACHI approach SOLUTION: automatic auction method • CLIENT TERMINAL: a user provides two prices when submitting a bid, specifying his personal purchasing rules,- a "desired price" and - a "maximum allowed price in competition"; after this initial stage, the auction is automatic=> hence the user's presence before the terminal is not required; ELECTRONIC MARKETPLACE SERVER:- gradually lowering the price- gradually raising the price at a competitive state 19

20. The HITACHI approach (T258/03) CLOSEST PRIOR ART: • Document D6 - Dutch auction:- The auction price, as monitored by an auction clock, sinks with time.- A bidder may stop the clock remotely using a pushbutton on his desk. The first bidder to stop the clock is successful. - Since the real- time behaviour is of great importance at Dutch auctions, time information is transmitted with the messages to determine the order of stop commands. • Document D2 (similar to D6): The transmission delay problem is solved by a software phase-lock loop which achieves synchronisation of the auction clock at the bidders' terminals. 20

21. The HITACHI approach (T258/03) • Overall aim: - to identify the successful bidder for a product offered for sale at an auction.- This is not regarded as having technical character. • Closest prior art: data processing system: technical means for data transmission and storage are commonplace and for instance known from D6 • Difference:business aspects of the auction method • Effects (according to appellant):Delays in propagation of information between the bidders and the server are overcome. If the auction is performed online, as proposed in the prior art (D6 or D2), these delays will influence the outcome of the auction. 21

22. The HITACHI approach (T258/03) • Solution (according to appellant):Adaptation of the known auction method such that it can be performed automatically. In this way, any data transmission delays become irrelevant. • The Board ruled:This solution does not contribute to a technical character and cannot therefore be taken into account for assessing inventive step since it concerns the rules of the auction, i.e. it is not a technical solution to the delay problem described and it is not solved by technical means.The solution is entirely based on modifications to the auction method. Method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed. 22

23. Lessons learned from HITACHI • An apparatus comprising clearly technical features such as a "server computer", "client computers" and a "network" is an invention within the meaning of Article 52(1) EPC even if it is merely used to execute a business method. • A method involving technical means is an invention within the meaning of Article 52(1) EPC. • Circumvention of a Technical Problem • Circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed. • Adapting the business scheme is not considered as a technical solution as it does not require technical means. 23

24. 3. Gaming Recent decisions: • T859/07: multi-player bet auxiliary game (27.11.2007) • T1023/06: computer implemented game process (07.12.2006) • T928/03: video game / Konami (02.06.2006) 24

25. Multi-player bet auxiliary game (T 0859/07) • The invention: System for playing an auxiliary game, wherein players have an interface (10) which allows them to place bets in relation to a main casino game. According to the applicant, the invention provides a single interface, to which all bet data is communicated. → simpler architecture in relation to the state of the art, in which separate interfaces where needed for player and dealer. 25

26. The mere fact that excluded subject-matter is technically implemented cannot per se be the basis for inventive step. • Technical features include: - receivers for receiving the bet data, - a display, - means for identifying a winning bet, - all in communication with a central controller. • The non-technical features consist: • in the game itself, which involves playing side bets on events associated with a casino game. • In relation to the state of the art, the board added that "computer implemented gaming systems were manifestly known at the priority date". A document (D1) was cited to illustrate such prior art. 26

27. Problem posed to the skilled person (software engineer) is to "computer implement the auxiliary side betting game". • According to the Board it is necessary to ask how the per se excluded subject-matter is implemented, In other words, does the particular manner of implementation provide a further advantage or effect which is • over and above the advantages and effects inherent in the game rules? • beyond the effects typically associated with automation? • The Board answered in the negative, as the implementation is phrased in mainly functional terms. Effects such as relieving the effort of the dealer or increased speed (of game play) result from the gaming scheme itself. 27

28. Computer implemented game process (T1023/06) • The invention: Electronic video poker machine in which two hands of cards are dealt to the player; The player makes a wager for each row; The player may hold some cards of the visible row and discard the rest; A duplicate of certain cards is displayed into the other poker hand; 28

29. According to the applicant: • Problem: method of operating a video poker machine allowing an increase of the volume of poker games played per unit time while keeping both the number of user input operations to a minimum and the machine processing low. • The duplication of cards • is not a rule of a game, as it is automated and is practicable only on a video poker machine, • allows to reduce the number of inputs from the user, • and to use a single random number generator to play multiple hands, rather than more powerful random number generators. 29

30. The Board decided that: • It is not the duplication which is considered a rule of a game, but rather the concept of "shared" or "common" cards, which as such is excluded from patentability. • Assessment of inventive step must be based on any further advantages or effects associated with the particular manner of implementation, over and above the game's inherent effects and advantages. • The effect of reducing the number of inputs from the user is inherent in sharing cards as a game rule; → Therefore, the duplication step does not involve an inventive step. 30

31. T928/03 - Video game/ Konami (02.06.2006) Claim (summarised): soccer game A guide displaying method for use in a video game... identifying the player that keeps the ball with a guide mark .... characterised in that : a) shape and place of the guide mark (G1, G2) of the player (P1), b) a pass guide mark (G3) is displayed indicating another player (team mate P2), c) pass guide mark (G3) is displayed on the end of the display even when the other player (P2) and pass mark (G3) come out of the display area of the monitor screen so as to indicate the direction in which the game medium (ball B) has to be passed by the player (P1). A63F13/00BG06F19/00B 31

32. player with football guide mark T928/03 - KONAMI Even when the player character P2 has come out of the area of display so that the guide G3 has become invisible, a portion of the guide G3 is displayed on the end of the display area so as to properly indicate the direction in which the ball is to be passed by the player character P1. 32

33. place and shape do not contribute to technical character (design and game rule driven), but... enlarged size  avoids the mark being concealed  increases visibility this is a technical purpose technical problem: enlarging contributes to the technical function of the display: however, not inventive. Prior art player Konami player (mark in different place, different shape) Difference a)shape and place of the guide mark (G1, G2) of the player (P1): 33

34. Difference b) a pass guide mark (G3) indicating another player (team mate, P2), guide mark • The pass guide mark draws the attention of the player to a second point of interest (teammate) on the screen. This is a technical contribution to be considered in the inventive step discussion. • The fact that there are various points of interest is due to the game rules. • The technical contribution lies in the highlighting of the second point of interest. • However, highlighting is obvious as soon as the second point of interest arises. not inventive. 34

35. Difference c)pass guide mark (G3) is displayed on the end of the display even when the other player (P2) and pass mark (G3)come out of the display area of the monitor screen so as to indicate the direction in which the game medium (ball B) has to be passed by the player (P1). Prior art:Conventional video game GUIs normally do one of the following: - superimpose a down-scaled map of the zone of interest on the enlarged portion of the image, - zoom out (loosing detail), - shift the viewing perspective (loosing focus). The technical problem underlying feature c relates to conflicting technical requirements: (1) zoom in: a portion of an image is desired to be displayed as an enlarged portion of an image(2) overview of complete zone of interest: the display area may then be too small to show the complete zone 35

36. Difference c) • The Board ruled: • The fact that the team mates' locations should be known by the user may be regarded as a direct consequence of the game rules, ... • ... the technical realisation of how such locations are made known is not related to the game rules. • Effect:The solution offered by feature [c] expands the display functionality with the help of a simple guide mark on the end of the display area which • occupies minimum peripheral display surface and • still enables the user to maintain orientation when viewing an enlarged portion of an image. not obvious from the prior art (conventional GUIs, common knowledge and further documents). inventive 36

37. 4. Database Management • T 701/06 Grouping Images taken according to where they were taken / CASIO COMPUTER (06.06.2008) • T 787/06 A server with automatic document assembly / SONY (18.11.2008) 37

38. T 0701/06 Grouping Images taken according to where they were taken / CASIO COMPUTER Where I took this photo ?

39. T 0701/06 Grouping Images taken according to where they were taken / CASIO COMPUTERClaim A picked-up managing device comprising: picked-up image storing means for storing picked-up image data and image picked-up position data being associated with the picked-up image data; name storing means for storing name data and corresponding position data and area data on a map for group name candidates which are selected from names corresponding to different positions or areas on a map; grouping means for grouping the picked-up image data stored in said picked-up image storing means into a group, wherein a group is made by either an arbitrary user selection among a plurality of picked-up image data based on relationship; means for identifying position data or area data corresponding to the group by: a) selecting an image data which has the oldest data-and-time information from the image data included in the group, and a coordinate comparison for finding a shortest one of distances between the image position data corresponding to the selected image data and all of the position data stored in the name storing means, or alternatively, b) performing a coordinate comparison for determining whether or not image pick-up position data of all of the image data included in the group are included in areas corresponding to the area data stored in the name storing means; means for acquiring from the name storing means a name data corresponding to the position data or the area data identified by the identifying means, and control means for storing the acquired name data as a group name in association with picked-up image data included in the group

40. T 0701/06 Grouping Images taken according to where they were taken / CASIO COMPUTERClaim (condensed) • A picked-up managing device comprising: • picked-up image storing means for storing image data and image position data; • name storing means for storing name data and corresponding position data and area data on a map ... • grouping means for grouping the picked-up image... • means for identifying position data or area data corresponding to the group by: • selecting an image data which has the oldest data-and-time information from the image data included in the group, and a coordinate comparison for finding a shortest one of distances between the image position data corresponding to the selected image data and all of the position data stored in the name storing means, or alternatively, • b) performing a coordinate comparison for determining whether or not image pick-up position data of all of the image data included in the group are included in areas corresponding to the area data stored in the name storing means; • control means...

41. Appellant's argument it is difficult to associate the images in a group some time later from only the date they were taken the invention assigns a meaningful name, such as the are name none of the prior art document addresses the problem of how grouping and name a selection of images. T 0701/06 Grouping Images taken according to where they were taken / CASIO COMPUTER

42. The subject matter of claim 1 differs from the prior art on that: name storing means for storing name data and corresponding position data and area data on a map means for identifying position data or area data corresponding to the group by: selecting an image data which has the oldest data-and-time information from the image data included in the group, and a coordinate comparison for finding a shortest one of distances between the image position data corresponding to the selected image data and all of the position data stored in the name storing means, or alternatively, b) performing a coordinate comparison for determining whether or not image pick-up position data of all of the image data included in the group are included in areas corresponding to the area data stored in the name storing means; means for acquiring from the name storing means a name data corresponding to the position data or the area data identified by the identifying means. T 0701/06 Grouping Images taken according to where they were taken / CASIO COMPUTERDecision

43. Technical effect Identifying the group by : (a) either the name of the location of the oldest image in the group (b) or the name of the area covered by the group but the idea of identifying images according to subjective criteria (time, location, event) is not technical, so it does not involve a technical contribution Technical problem is: how to achieve the non technical effect as above. T 0701/06 Grouping Images taken according to where they were taken / CASIO COMPUTERDecision

44. T 0701/06 Grouping Images taken according to where they were taken / CASIO COMPUTERDecision • Naming the group/image by location where was taken is disclosed in the prior art. The use of the nearest point in the map is an obvious implementation. • Regarding the "coordinate comparison" is presented as a effect to be achieved (no details are given of how is actually implemented) • Both alternative are obvious and there is no surprising effects in combining both in the same device. • Lack of an inventive step (Art. 56 EPC)

45. T 787/06 A server with automatic document assembly Server user Internet Maintain a Web site

46. T 787/06 A server with automatic document assembly A server computer for a data communication system and adapted to transmit a document via network to a client computer in response to a request therefrom; said server comprising: article memory means (23) for storing a plurality of article documents and respective bibliographic data; selection rule storage means for receiving from a system administrator and storing an article document selection rule; automatic document assembly means (17) for retrieving from said article memory means a subset of said plurality of article documents and assembling a document from at least part of each of said subset of article documents, said subset of article documents being selected according to the respective bibliographic data using said article document selection rule; and transmission means responsive to said request for transmitting the assembled document onto said network for delivery to said client computer.

47. T 787/06 A server with automatic document assemblyClaim (condensed) • A server comprising: • article memory means (23) for storing a plurality of article documents and respective bibliographic data; • selection rule storage means and storing an article document selection rule; • automatic document assembly means (17) for retrieving from said article memory means a subset of article documents and assembling a document from at least part of each of said subset of article documents, • said subset of article documents being selected according to the respective bibliographic data;.....

48. T 787/06 A server with automatic document assembly Appellant's argument - problem addressed is the maintenance of website, to keep its content up to date (cumbersome as required a skilled input) - Solve the problem to automatically assemble a document e.g. a webpage - Automating a process so as to reduce or eliminate the need for technically skilled input from a user.

49. T 787/06 A server with automatic document assemblyDecision The subject matter of claim 1 differs from the prior art in that: selection rule storage means for receiving from a system administrator and storing an article document selection rule; a subset of article documents are retrieved, selected according to the respective bibliographic data using said article document selection rule

50. T 787/06 A server with automatic document assemblyDecision The problem to be solved is automating of the manual task of selecting the articles for the electronic newspaper according to simple criteria like relevance and topicality. It is self-evident that in order to solve this problem the rule must be expressed and stored electronically and that this involves no technical difficulties. No inventive step Art. 56 EPC.