M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 1 The patentability of business methods and software-related inventions according to the EPC May 2007 © Korbinian Kopf, Maiwald Patentanwalts GmbH, Elisenstrasse 3, D München, Germany, ,

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 2 Theory The first approach The second approach Strategy EPO vs USPTO

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 3 European patents shall be granted: Article 52 (1) EPC –for any inventions which are susceptible of industrial application, which are new, which involve an inventive step.

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 4 Exclusion from patent protection: Article 52 (2) EPC -discoveries, scientific theories and mathematical methods; -aesthetic creations; -schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; -presentations of information

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 5 Limitation of exclusion: Article 52 (3) EPC -the exclusion applies only to the extent to which a European patent application or a European patent relates to programs for computers “as such.” T 0935/97 comments the “as such” as follows: -“The combination of the two provisions (article 52(2) and (3) EPC) demonstrates that the legislators did not want to exclude from patentability all programs for computers. In other words the fact that only patent applications relating to programs for computers as such are excluded from patentability means that patentability may be allowed for patent applications relating to programs for computers where the latter are not considered to be programs for computers “as such.” => Up to now, software patents were primarily rejected on the basis of an Art. 52(2) rejection

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 6 Theory The first approach The second approach Strategy EPO vs USPTO

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 7 T 1177/97 (‘SYSTRAN’): -“Implementing a function on a computer system always involves, at least implicitly, technical considerations and means in substance that the functionality of a technical system is increased.” => Any function implemented on a computer system is not an invention “as such” and thus patentable … as long as it is new and inventive …

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 8 T 641/00 (‘COMVIK’): -“An invention consisting of a mixture of technical and non- technical features and having technical character as a whole 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.”

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 9 "A system to allow interactive selection for presentation to a user of supplemental broadcast information pertaining to a primary broadcast, the system comprising a recording device (30), broadcast receiver (60), a data processor (5) connected to said recording device (30) and to said broadcast receiver (60), characterized in that the system is to allow interactive selection for presentation to a user of supplemental broadcast information pertaining to a primary broadcast in which a cue is broadcast at a first time with, and in addition to, a program comprising the primary broadcast, the system being characterized by said data processor including means responsive to the cue for presenting the cue on the broadcast receiver (60) during and simultaneous with presenting the primary broadcast on the receiver (60), the cue indicating the availability at a second time later than the first time of the supplemental broadcast information; means (20) connected to the data processor for receiving a user response to the cue and means (6,5,32) responsive to the received cue response for causing data in the broadcast to be used by means for controlling said recording device (30) to record the supplemental broadcast information automatically at the second time". T 0124/01 (‘STARSIGHT’) “The Board considers that claim 1 encompasses: A systems which comprise only the following technical features: - a recording device, - a broadcast receiver, - a data processor, - means for receiving a signal from a remote controller, - means responsive to this signal for causing data in the broadcast to be used by means for controlling the recording device to record a program automatically.”

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 10 Theory The first approach The second approach Strategy EPO vs USPTO

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 11 T 1001/99 (GEODYNAMIK) -“In fact, there is no basis for distinguishing between the subject- matter of a claim to be examined as to whether it is an invention and another subject-matter of the same clam to be examined for the other substantive requirements of Article 52(1) EPC, i.e. novelty, inventive step and susceptibility for industrial application.”  claim has to be considered as a whole  THIS IN CONFIRMED IN G 01/03

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 12 Theory The first approach The second approach Strategy EPO vs USPTO

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 13 Strategy for filing with the EPO –Since there is no single clear and straight forward approach by the EPO, the only sensible strategy is to continue to file even borderline cases with the EPO. –US description usually sufficient. However, try to emphasize a linkage between the individual claim features to avoid the ‘feature stripping’ of the first approach. –Be prepared for refusals and to go to the Board of Appeal. –Use divisional applications in the same way you use continuation applications. –US claim format is suitable; however, only one independent claim per category allowed; exceptions for systems, ‘plug and socket’, intermediate products and alternative solutions for the same object only. –My personal recommendation: use the same considerations as you do for filing in the US.

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 14 Theory The first approach The second approach Strategy EPO vs USPTO

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 15 Colbert Patent: US 5,485, In a database system for authorizing a credit/debit card (CDC) expenditure, a method for authorizing credit/debit for a purchase of goods or services comprises: receiving data in the database over a first telecommunications connection to the database from a CDC holder at a first location, the data identifying a specific CDC; determining whether the CDC is authorized to incur an expenditure; transmitting an authorization to incur the expenditure over a second telecommunications connection from the database to a vendor at a second location, wherein transmitting the authorization is responsive to a determination that the CDC is authorized to incur the expenditure and includes a limit of allowed expenditure generated by the database for a transaction; and wherein the data identifying the CDC is not provided to the vendor. EP B1 1. A method for authorizing a purchase of goods or services, comprising: responsive to receiving in a database for authorizing a credit/debit card (CDC) expenditure data from a holder identifying a specific CDC, determining whether the CDC is authorized to incur an expenditure; transmitting an authorization to incur the expenditure over a second telecommunications connection from the database to a vendor at a second location, wherein transmitting the authorization is responsive to a determination that the CDC is authorized to incur the expenditure and includes a limit of allowed expenditure generated by the database for a transaction; and wherein the data identifying the CDC is not provided to the vendor. Claims granted in by the USPTO vs. the corresponding claims granted by the EPO

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 16 Ginsberg Patent: US 5,857, A method for providing a real time index corresponding to a pre-select portfolio of fixed income securities spanning a specified term of maturity dates comprising the steps of: collecting market price data on a proper set of fixed income securities corresponding to the specified term of maturity dates from the close of trading including bid, ask and trade transaction data; collecting real time price data on current trades forming a subset of securities within said proper set; iteratively qualifying the data to insure individual price information reflects true market determined pricing; iteratively processing said proper set of qualified data calculating a term structure of spot interest rates spanning the maturities of said proper set of data; updating said term structure with real time price data wherein said term structure is shifted in accordance with market shifts as reflected in said real time price data; and determining a composite price of said portfolio of pre-select fixed income securities in accordance with said updated term structure wherein said portfolio is expressed in terms of an index having a price, yield to maturity and duration. EP B1 1. A method for operating a data processing system to provide an index corresponding to a pre-select portfolio of fixed income securities spanning a specified term of maturity dates comprising the steps of: collecting market price data on a proper set of fixed income securities corresponding to the specified term of maturity dates from the close of trading including bid, ask and trade transaction data; collecting incoming asynchronous price data within seconds of actual changes in a security price on current trades in terms of offer, bid and trade values forming a subset of securities within said proper set; qualifying the data to insure individual price information reflects true market determined pricing; processing said proper set of qualified data to calculate a term structure of spot interest rates spanning the maturities of said proper set of data; updating said term structure using said incoming asynchronous price data, wherein said term structure is shifted in accordance with market shifts as reflected in said incoming asynchronous price data; wherein said updating of said term structure includes taking a convex combination of said incoming asynchronous price data for updating said term structure of other price data that is not current; and determining a composite price of said portfolio of pre-select fixed income securities in accordance with said updated term structure wherein said portfolio is expressed in terms of an index having a price, yield to maturity and duration.

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 17 Amendments to claim 7 of the Ginsberg Patent to obtain claim 1 of EP B1 [ 7] 1. A method for operating a data processing system to [providing] provide an [real time] index corresponding to a pre-select portfolio of fixed income securities spanning a specified term of maturity dates comprising the steps of: collecting market price data on a proper set of fixed income securities corresponding to the specified term of maturity dates from the close of trading including bid, ask and trade transaction data; collecting [real time] incoming asynchronous price data within seconds of actual changes in a security price on current trades in terms of offer, bid and trade values forming a subset of securities within said proper set; [iteratively] qualifying the data to insure individual price information reflects true market determined pricing; [iteratively] processing said proper set of qualified data [calculating] to calculate a term structure of spot interest rates spanning the maturities of said proper set of data; updating said term structure [with real time] using said incoming asynchronous price data, wherein said term structure is shifted in accordance with market shifts as reflected in said [real time] incoming asynchronous price data; [and] wherein said updating of said term structure includes taking a convex combination of said incoming asynchronous price data for updating said term structure of other price data that is not current; and determining a composite price of said portfolio of pre-select fixed income securities in accordance with said updated term structure wherein said portfolio is expressed in terms of an index having a price, yield to maturity and duration.

M a i w a l d P a t e n t a n w a l t s G m b H München Düsseldorf Hamburg New York Page 18 Discussion