Patentability of computer implemented inventions

1. Patentability of computer implemented inventions Rodolphe Bauer, Frédéric Dedek, Gareth Jenkins, Cristina Margarido Patent Examiners, EPO October 2013

2. Agenda Definition: CII Example: business methods 2

3. CII and Business Methods • A Computer Implemented Invention is an invention containing features realised wholly or partially by means of a computer program. • A business method has no clear definition, denotes commercial activities, marketing, financial strategies etc. • A business method can be a CII or not. • Method for selling toys in which toys are placed in low shelves easily accessible by young children.

4. - an invention whose implementation involves the use of a computer, computer network or other programmable apparatus - with features realised wholly or partly by means of a computer program "Computer-implemented invention" - CII Guidelines G-II, 3.6 • Examples: • a program-controlled ... • - washing machine cycle; • - car braking system. 4

5. FindArrayMax (t[ ], minI, maxI) { for (I = minI; I<=maxI; I++) if (max < t[ I ]) max = t [ I ]; return (max); } Computer-implemented Inventions computer program get inputs; compute maximum; return the result; underlying concept A l g o r i t h m software: diskette, CD, DVD, manuals 5

6. Computer-implemented Inventions Algorithm implementation implementation implementation Specific circuits Program for a standard computer Program for a standard computer with specific circuits 6

7. A further technical effect is the result produced, when the computer program is run on a computer, which goes beyond the normal physical interactions between the program and the computer. T1173/97 IBM Computer Program - Technical Character? 7

8. Computer Programs

9. Exclusion • Subject-matter isnot excluded from patentability • Subject-matter is excluded from patentability Subject-matter Technical character No technical character At least one feature has technical character => subject-matter has technical character. 10

10. Having technical character, is: • a general and absolute requirement • a requirement strictly separated from the other 3 • ... but a trivial requirement! T 154/04 (DUNS) T0258/03 Hitachi

11. Trivial requirement "A method of encouraging customers to be loyal buyers by giving a discount on future purchases." non-technical "A computer implemented method with a database of customers who have previously purchased goods for applying a discount to any subsequent purchase." technical

12. Example from Business Methods § § "A method of controlling payment and delivery of content" content provider user • Regulation: access to content is free • if user is from a country with GDP < limit value AND • if the requested content is scientific content 13

13. Example I: Exclusion A method of controlling payment and delivery of content, the method comprising: • a provider receiving a request for content from a user; • the provider accessing content information describing the requested content; • the provider accessing regulation information describing at least one regulation that is related to the payment and the content information of the requested content and to geographical information of the user; • determining the geographic location of the user; • the provider determining whether the requested content satisfies the at least one regulation; • if so, delivering the requested content to the user for free; • if not, transmitting a payment request to the user. Non-tecchnical process/ aspects Clearly Technical Aspects none 14

14. Rule 63 EPC: Declaration of No Search "The EPO also wishes to remind applicants that methods of doing business, as such, are excluded from patentability pursuant to Article 52(2)(c) and (3) EPC. Claims of European patent applications which relate to no more than such methods will not be searched." Official Journal of the EPO 11/2007 p. 592 15

15. No technical character The subject-matter of the example claim defines purely a business or administrative method and does not have a technical character. Search report:invitation under Rule 63(1)declaration under Rule 63(2) Search opinion:objection under Article 52(1) because the claim constitutes subject-matter in the sense of Article 52(2) & (3) 16

16. = + business process Example II: Computer-Implemented Business Method A computer-implemented method of controlling payment and delivery of content within a computer system comprising a user terminal, a provider server and a database which are connected via a communication network, the method comprising: • the provider server receiving a request for content from the user terminal; • the provider server accessing in the database content information describing the requested content; • the provider server accessing regulation information in the database describing at least one regulation that is related to the payment and the content information of the requested content and to geographical information of the user; • determining the geographic location of the user; • the provider server determining whether the requested content satisfies the at least one regulation; • if so, delivering the requested content to the user terminal • if not, transmitting a payment request to the user terminal. Does this merit a patent? 17

17. Example II: Computer-Implemented Business Method The subject matter of the claim defines technical and non-technical aspects and thus has technical character. Clearly Technical Aspects Non-Technical Aspects/ Process A computer implemented method comprising: - a server receiving data from a terminal over a communication network; - the server accessing data in a database; - the server processing the accessed and received data; - the server transmitting the processing result to the terminal; Same business process as in Example I no technical interaction => does not contribute to technical character assessment of novelty and inventive step 18

18. Inventive step: problem-and-solution approach Identify the closest prior art (CPA) Determine the differentiating features and their technical effects Formulate an objective technical problem in view of the CPA Decide whether there is an inventive step Guidelines in the EPO G-VII, 5 19

19. Inventive Step clearly technical aspects non-technical aspects/ process state of the art: - state of technology closest prior art: • always chosen from a field of technology • skilled person: - skilled in the field of information technology - aware of common general knowledge in information technology - no knowledge of non-technical fields T614/00 COMVIK 'requirements specification' = instructions given to a data processing expert summarising the requirements of the customer i.e. business or administrative process to be automated IS NOT state of the art T172/03 RICOH 20

20. Inventive Step Objective technical problem: • derived by the technicaldifferences between the closest prior art and the claimed subject-matter, • it must be a technical problem, • no pointers to the technical solution • a (non-technical) aim may appear as a constraint that has to be met: "Where a claim refers to an aim to be achieved in a non-technical field, this aim 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." T614/00 COMVIK 21

21. Example II: Inventive Step Technical character: Non-technical aspects: Requirements specification: Closest prior art: Differences: Skilled person: Objective technical problem: Solution: yes yes = business method:"ordering content and calculating its price" computer system comprising a server, database, and a terminal which are connected via a communication network said business method data processing expert automate said business method on said computer system implementation/ automation is considered obvious 22

22. Case Law RICOH: T172/03 (27.11.2003) 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. 23

23. Inventive Step TEST YOUR HYPOTHESIS! Does any non-technical aspect combine with the clearly technical aspects to cause a technical effect? Example Questions: Cognitive content directed to an observer or to a technical function? Description of model entities only at the logical level or at a specific technical implementation? Circumvention of a technical hurdle or assistance in overcoming it? Where any (alleged) non-technical aspect contributes to technical character  include it in the assessment of inventive step

24. Case Law HITACHI: T258/03 (21.04.2004) • Circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed. • Technical Problem: delays in propagation of information between bidders and a server • Solution: • adapt auction method such that any data transmission delaysbecome irrelevant • => this is not a technical solution since it only concerns modification to the rules of the auction. 25

25. Summary: How to decide on Technical Character Example: A method of encouraging customers to be loyal buyers by giving a discount on future purchases. => business method => excluded Consider whether each feature or their combination lends any technical character to the claim. If the claim has notechnical character at all then it is excluded from patentability under Art. 52(2)&(3). Guidelines G-II; Official Journal 11/2007, p.594 26

26. Summary: technical: yes – but: inventive? Example: A computerwith- a database of customers who have previously purchased and - means for applying a discount to any subsequent purchase. = + business method Does this merit a patent? technical difference: inventive?Art. 56 technical character: yes NO! technical character: noArt. 52(2)(3) Guidelines G-VII, 5.4Official Journal 11/2007, p.594 27

27. Example III: Computer-Implemented Business Method • A computer-implemented method of controlling payment and delivery of content within a computer system comprising a user terminal, a provider server and a database which are connected via a communication network, the method comprising: • the provider server receiving a request for content from the user terminal; • the provider server accessing in the database content information describing the requested content; • the provider server accessing regulation information in the database describing at least one regulation that is related to the payment and the content information of the requested content and to geographical information of the user; • determining the geographic location of the user; • the provider server determining whether the requested content satisfies the at least one regulation; • if so, delivering the requested content to the user terminal • if not, transmitting a payment request to the user terminal. • whereinthe geographic location of the user is determined by the IP address of the user terminal using method steps x, y, z. 28

28. Example III: Inventive Step Technical character:Non-technical aspects: Requirementsspecification: Closest prior art: Non-technical differences:Technical differences: Skilled person: Objective technical problem: Solution: yesyes = business method:ordering content and calculating its price computer system comprising a server, database, and a terminal which are connected via a communications network capable of determining the location of the terminal. said business methodmethod steps x, y, z data processing expert 1. automate said business method2. find alternative method for determining geographic location of user 1. automation is obvious2. obvious? 29

29. A method of modelling a system using lots of very novel mathematics. A program to do the method of claim 1. A computer running the program of claim 2. A method of designing a power system using modelling and the mathematics of claim 1. A power system designed using the method of claim 4. Examples – Computer Implemented Inventions A52(2)&(3) A52(2)&(3) A54/56 A52(2)&(3) A54/56 30

30. A computer-implemented method of controlling a physical process by analysing a functional relationship between two parameters, the method comprising [... a series of mathematical steps follow] wherein the range of one of said parameters is extended in accordance with data generated for use in the control of said physical process. clearly technical aspect A computer implemented method of controlling a physical process contributes to technical character Example IV: Computer-implemented method of controlling a physical process (alleged) non-technical aspects A method of analysing a functional relationship between two parameters comprising: a series of mathematical steps... wherein the range of one of said parameters is extended in accordance with data generated for use in Test your hypothesis!!! 31 31

31. Summary inv. step technical character Art. 52 (2)(3) Art. 56 further EPC requirements novelty Art. 54 Basic components for the grant of an invention 32

32. Any Questions? Thank you for your attention! 33

33. Further Information Brochure by the EPO: Patents for software? European Law and Practice WIPO: Experts' Study on Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights - 2010 http://www.wipo.int/meetings/en/doc_details.jsp?doc_id=141352 34

34. Teach yourself! Modules I & II:Patentability of computer-implemented inventions at the EPO free of charge EPO: e-learning centre https://e-courses.epo.org/course/view.php?id=30 This module examines the patentability requirements, legal basis and other criteria in the field of information technology. The first module deals with patentability and exclusions from patentability in Europe and includes examples of patentable and non-patentable subject-matter. The second module discusses the examination of computer-implemented inventions with respect to the requirements of Art. 52 EPC (exclusion, industrial application, novelty and inventive step). Examples of case law and potential wording for claims are also provided.