Examination of CII and Business Methods Applications European Patent Office Examination of CII and Business Methods Applications Die Dienststelle Wien WWW2006 Edinburgh Dr. Clara Neppel Examiner EPO, München

Das Europäische Patentamt European Patent Office Das Europäische Patentamt The European Patent Office Service For Industry and Public

Locations Munich The Hague PschorrHöfe Headquarters Munich European Patent Office CII Requirements Examination Practice Headquarters Munich Isar building Brussels Bureau Vienna Berlin

Member states European Patent Office CII Requirements Examination Practice

Staff 2004 Munich 3 180 The Hague 2 349 Berlin 275 Vienna 114 European Patent Office CII Requirements Examination Practice Munich 3 180 The Hague 2 349 Berlin 275 Vienna 114 Total 5 918

Procedures before the EPO EXAMINATION European Patent Office European Patent Office CII Requirements Examination Practice grant of a European patent refusal OPPOSITION APPEAL maintenance revocation centralised procedure: examination opposition appeal after validation (translation) national patents; national law applies in infringement and nullity proceedings; important: national courts interpret national law on software protection; however, since the establishment of the EPC in 1973: national jurisdictions have mostly harmonised their patent legislation with EPC; 1. INSTANCE 2. INSTANCE national bodies validation in EPO member states national courts nullity infringement proceedings national patents national law

EPO procedure European Patent Office CII Requirements Examination Practice The examining division is responsible for the examination of European patent applications. => proceedings ex parte

EPO procedure European Patent Office CII Requirements Examination Practice An Opposition Division shall be responsible for the examination of oppositions against any European patent. => proceedings inter partes

Intellectual Property Rights The same bottle could be protected by industrial design for its novel and aesthetic features by trademark for its distinguishing features As much as this bottle can be protected by different Intellectual Property Rights, Programs for Computers can also be protected by Copyright, Trademarks and Patents. I will restrict myself to Copyright and Patents. Trademarks can give additional protection that goes beyond copyright and patents, however, will be limited to identification over products from other enterprises on the market. Take for example “Windows” with its name and logo and other conspicuous features. The other possibilities of IP rights do not seem to applicable for programs for computers. by patent for its technical features such as pressure resistance

Copyright & Patent Protection for Software European Patent Office CII Requirements Examination Practice right copyright patent subject-matter original works inventions with technical character software result program code documentation (graphical user interface) concept / method application of algorithms protection reproduction distribution communication modification (no private use) production use (private use exception) background info: As a summary Copyright protects original work, in software terms program code and documentation against copying, distribution and modification. Private use is not allowed, the EU copyright directive makes it clear however that reverse engineering (i.e. de-compilation) for interoperability purposes is possible. EU COUNCIL DIRECTIVE of 14 May 1991 on the legal protection of computer programs (91/250/EEC) 'Whereas, nevertheless, circumstances may exist when such a reproduction of the code and translation of its form within the meaning of Article 4 (a) and (b) are indispensable to obtain the necessary information to achieve the interoperability of an independently created program with other programs; 'Whereas the provisions of this Directive are without prejudice to the application of the competition rules under Articles 85 and 86 of the Treaty if a dominant supplier refuses to make information available which is necessary for interoperability as defined in this Directive; Article 6 De-compilation 1. The authorization of the right-holder shall not be required where reproduction of the code and translation of its form within the meaning of Article 4 (a) and (b) are indispensable to obtain the information necessary to achieve the interoperability of an independently created computer program with other programs, provided that the following conditions are met: (a) these acts are performed by the licensee or by another person having a right to use a copy of a program, or on their behalf by a person authorized to do so; (b) the information necessary to achieve interoperability has not previously been readily available to the persons referred to in subparagraph (a); and (c) these acts are confined to the parts of the original program which are necessary to achieve interoperability.

IP for Software? Software patent Computer-implemented invention European Patent Office CII Requirements Examination Practice Software patent is a colloquial expression might mislead to the assumption that source/object code is patentable Computer-implemented invention - Claims which involve computers, computer networks or other conventional programmable apparatus whereby features of the claimed invention are realised by means of a program or programs Examples: mobile phone, ABS system

Claim Example Example: European Patent Office CII Requirements Examination Practice Example: Method for purchasing and payment of goods and services, preferably audio and/or video data provided on a provider's platform in a computer network, like the Internet, comprising the steps: - taking a customer's order for goods and services, preferably an order for audio and/or video data files; - providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and - debiting a mobile telephone account of the customer.

European Patent Convention Office CII Requirements Examination Practice What is an Invention? Art. 52(1) Patentable Inventions European patents shall be granted for - any inventions which → A.52(2)(3) - are susceptible of industrial application → A.57, A.52(4) We have three additional conditions to be satisfied before we grant a patent industrial applicability novelty inventiveness The Article uses the term “invention” and these conditions are only to be applied to inventions. The EPC does not define “invention” but it tells us something about non-inventions: background info: US This is formulated in Article 52, EPC. The corresponding part is found in the US Patent Act which is incorporated in title 35 of the US Code, and there in section 101 which reads: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.” - are new → A.54 - and which involve an inventive step. → A.56

European Patent Convention Office CII Requirements Examination Practice What is NOT an Invention? A.52(2) The following, in particular, shall not be regarded as inventions: a) discoveries, scientific theories, mathematical methods; b) aesthetic creations; c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; d) presentations of information; In Article 52 paragraphs 2 and 3 it is made clear what is not regarded as being an invention. The question, of course, that still needs to be answered is: What is an invention? a lot of controversy about interpretation of "as such": could be interpreted as: "any computer programs with implement abstract ideas are excluded from patent protection; computer programs which solve technical problems may be protected by patents, if they fulfil the other criteria of the EPC. background info: In the US patent act these issues are explained as statutory subject matter, where 35 U.S.C. 101 defines statutory subject matter as “any new and useful process, machine, manufacture or composition of matter, or any new and useful improvement thereto.” A.52(3) ...only to the extent to which a European patent application relates to such subject matter or activities as such.

European Patent Law Legal Principle: Office CII Requirements Examination Practice Legal Principle: the patent monopoly must be justified by the technical contribution to the art.

European Patent Law - What is an Invention? Office CII Requirements Examination Practice Guidelines of the EPO An invention must be of "technical character" to the extent that it - must relate to a technical field - must concern a technical problem - must have technical features in terms of which the matter for which protection is sought can be defined in the claim Guidelines: focus on the term "technical" background: C-IV, 2.1 items listed as non-inventions are either abstract (e.g. discoveries, scientific theories, etc.) and/ or non-technical (e.g. aesthetic creations or presentations of information)

European Patent Law - What is an Invention? Office CII Requirements Examination Practice Case Law Technical character or technical effect are assessed without the knowledge of prior art, i.e. it is not a contribution approach (Computer Program Product T 1173/97; Pension benefit scheme T 931/95) these decisions from the basis for the approach as we use it for the examination of CII; which will be explained later; Decisive is the technical effect of the invention as defined in the claim when considered as a whole (Koch & Sterzel T26/86).

European Patent Law – Case Law Office CII Requirements Examination Practice What is technical? Rather than attempting a general definition of the term “technical“, the Board‘s present approach is to stake out, through a series of individual decisions, the grey area requiring interpretation. no fixed definition; technology advances over time -> therefore difficult to find an absolute definition which will be valid for a long time; individual decisions by BoA; only binding for specific case (relevant first or second instance proceedings); not binding for other cases: first instance is free to apply/ interpret EPC for themselves; however, guiding character;

Technical is... Technicality processing physical data European Patent Office CII Requirements Examination Practice processing physical data parameters or control values of an industrial process processing which affects the way a computer operates saving memory, increasing speed security of a process, rate of data transfer etc. technical character may be implied by the physical features of an entity memory, port etc.

Technicality European Patent Office CII Requirements Examination Practice Features relating to non-inventions within the meaning of Art. 52 (2) EPC are non technical features. abstract ideas selling, trading, insurance choosing amongst candidates for a job order placement and management

European Patent Law – Case Law Office CII Requirements Examination Practice Computer Programs The computer program, when carried out has to provide a "further technical effect“. The normal technical effects like flow of electrical current is not sufficient. use electronic auction example again; explain further technical effect; not achieved by el. auction, since merely business rules; innovation lies only in the field of business; patent not available for this; T 1173/97; T 0935/97

European Patent Law – EPO Practice Office CII Requirements Examination Practice further technical effect control of a brake in a car faster communication between mobile phones secure data transmission (encryption of data) resource allocation in an operating system no further technical effect aesthetical effects of music or a video new rules for an auction scheme selling and booking sailing cruise packages calculation of a pension contributions examples

EPO Practice Example: non technical European Patent Office CII Requirements Examination Practice Example: non technical A method for evaluating leadership effectiveness, comprising the steps of: gathering target information quantifying at least one domain selected from the group consisting of having personal convictions, being visionary, building emotional bonds, being inspirational, being team oriented, being a risk taker and having a drive to excel; comparing the target information with a standard, the standard including standard values of the domain; and identifying non-standard responses of the target.

EPO Practice European Patent Office CII Requirements Examination Practice 1. If the subject matter of the claims does not comprise a technical character object under Article 52(2) and (3) No prior art search necessary!

EPO Practice Example: mix of technical and non-technical European Patent Office CII Requirements Examination Practice Example: mix of technical and non-technical A method for on-line evaluating leadership effectiveness, comprising the steps of: - providing an interface for gathering target information quantifying at least one domain selected from the group consisting of ....; sending this target information to a central server comparing the target information with a standard stored in the central server, the standard including standard values of the domain; and the central server identifying non-standard responses of the target.

prior art in a field of technology EPO Practice European Patent Office CII Requirements Examination Practice 2. If there is a mix of non-technical and technical features: prior art in a field of technology "requirement specification" = instructions given to the programmer summarising the requirements of the customer e.g. a business or administrative process to be automated skilled person is aware of it normally found in description & (in summarised form) in claims

identify closest prior art in the field of technology EPO Practice based on the technical implementation set out in the claims and description: European Patent Office CII Requirements Examination Practice identify closest prior art in the field of technology IF: so widely known as to be considered as common-place e.g. computer network or general purpose computer OTHERWISE: search for the closest document describing the technical features. THEN: no written evidence is necessary to prove its existence [possible no-search]

EPO Practice European Patent Office CII Requirements Examination Practice 4. Identify all the differences between the subject matter of the claim and the closest prior art b) a) if the differences are not technical if there are none no objective technical problem Not novel! Not inventive!

EPO Practice 4. Identify all the differences between the subject matter of the claim and the closest prior art European Patent Office CII Requirements Examination Practice c) if differences contain also technical features i) formulate the objective technical problem taking into account the requirements specification e.g. "how to adapt system of CPA in order to implement the business concept" Solution of the objective technical problem must require the technical features of the above identified differences. ii) if the solution of the technical problem is obvious Not inventive!

EPO Practice Only if also other requirements of the EPC fulfilled European Patent Office CII Requirements Examination Practice Only if also other requirements of the EPC fulfilled -> GRANT

EPO Practice European Patent Office CII Requirements Examination Practice Example: Method for purchasing and payment of goods and services, preferably audio and/or video data provided on a provider's platform in a computer network, like the Internet, comprising the steps: - taking a customer's order for goods and services, preferably an order for audio and/or video data files; - providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and - debiting a mobile telephone account of the customer.

EPO Practice Technical Mixed type claim Requirement specs European Patent Office CII Requirements Examination Practice Technical Mixed type claim Requirement specs Closest prior art ¦ Differences Technical problem Yes Ordering and paying for goods Platform for downloading audio files from the Internet Debiting mobile phone account None no inventive step involved

Requirement Specifications ...return EPO Practice European Patent Office CII Requirements Examination Practice Requirement Specifications Method for selling/purchasing audio and/or video data provided on the Internet, where - a customer's order is taken, - ordered audio and/or video data files are delivered; and - a mobile telephone account of the customer is debited. Method for purchasing and payment of goods and services, preferably audio and/or video data provided on a provider's platform in a computer network, like the Internet, comprising the steps: - taking a customer's order for goods and services, preferably an order for audio and/or video data files; - providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and - debiting a mobile telephone account of the customer.

EPO Practice Differences ...return European Patent Office CII Requirements Examination Practice Differences Method for purchasing and payment of goods and services, preferably audio and/or video data provided on a provider's platform in a computer network, like the Internet, comprising the steps: - taking a customer's order for goods and services, preferably an order for audio and/or video data files; - providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and - debiting a mobile telephone account of the customer.

Objective technical problem ...return EPO Practice European Patent Office CII Requirements Examination Practice Objective technical problem no objective technical problem can be identified There is no inventive step involved.

EPO Practice European Patent Office CII Requirements Examination Practice Example: Method for purchasing and payment of goods and services, preferably audio and/or video data provided on a provider's platform in a computer network, like the Internet, comprising the steps: - taking a customer's order for goods and services, preferably an order for audio and/or video data files; - providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and - debiting a mobile telephone account of the customer, whereby the purchase data are at least partially encrypted by a password.

EPO Practice Technical Mixed type claim Requirement specs European Patent Office CII Requirements Examination Practice Technical Mixed type claim Requirement specs Closest prior art ¦ Differences | Technical problem Solution obvious Yes Ordering and paying for goods Platform for downloading audio files from the Internet Debiting mobile phone account and encrypting purchase data Enhance data security Was encryption known?

The outcome - Applications ending with a refusal or a withdrawal: European Patent Office CII Requirements Examination Practice - Applications ending with a refusal or a withdrawal: in the cluster "computers": over 50% in the field "electronic commerce": over 70%

conclusion Basic components for the grant of a computer implemented invention European Patent Office CII Requirements Examination Practice Technical character Technical contribution New further EPC requirements Art. 52 (2)(3) Art. 56 Art. 54

European Patent Office http://www.european-patent-office.org/ http://www.european-patent-office.org/legal/guiapp1/pdf/g1de_net.pdf Guide for applicants Dr. Clara Neppel Examiner, Dir. 2.2.21, cneppel@epo.org