1. Novelty and Inventive Step in the Field of CII
Torino, October 2011
Edoardo Pastore
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. Computer Patents in Europe
total
using IT
„D.Closa et.al. Patent Law for Computer Scientists © Springer-Verlag Berlin Heidelberg 2010“
Keywords to detect use of computers:
CPU, processor unit, data carrier, data structure, software, computer, mirco-processing, Internet, 3 3

4. Computer Patents in the USA
total
using IT
„D.Closa et.al. Patent Law for Computer Scientists © Springer-Verlag Berlin Heidelberg 2010“ 4 4

5. Development of business methods in Europe
applications
negative
grants
State Street Bank Decision, USA
Classification tree G06Q:
G06 Computing, calculating, counting G06Q Data processing systems or methods, specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes
G06Q10 Administration G06Q20 Payment schemes G06Q30 Commerce G06Q40 Finance
„D.Closa et.al. Patent Law for Computer Scientists © Springer-Verlag Berlin Heidelberg 2010“
decision taken by United States Court of Appeals for the Federal Circuit in July 1998.
'State Street' Decision:
The Court affirmed the patentability of business method-related software in State Street Bank & Trust Co. v. Signature Financial Group ("State Street").
The lower court in the State Street case had held the software patent involved (U.S. Patent No. 5,193,056) to be invalid on the grounds that (i) it was directed to an unpatentable "mathematical algorithm" and, in the alternative, (ii) it was directed to an unpatentable "method of doing business."
The patent at issue pertains a data processing system for managing mutual funds. It concerns the administration of financial portfolios and describes how to allow an administrator to monitor and record financial transactions and how to determine a share price.
The system facilitates a structure whereby mutual funds pool (Spokes) their assets in an investment portfolio (Hub) organized as a partnership. This investment configuration provided, among other things, certain tax advantages.
In affirming the patentability of software-related patents, the Federal Circuit rejected both (i) the mathematical algorithm, and (ii) the business method exceptions to patentability. The Federal Circuit held that since the claims of the patent-at-issue were directed to a machine programmed with the HUB AND SPOKES® software, and such a machine produced a useful, concrete, and tangible result, the software constituted patentable subject matter.
-> no legal obstacles to obtaining valid U.S. patents for computerized business methods. 5 5

6. Problem solution approach
Three main criteria for patentability: novelty inventive step industrial application
An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. 6

7. Inventive Step "Problem and solution approach" (Guidelines C-IV 9.4):
What is the technical contribution?
Determine the closest prior art
What is the difference in claimed features between the invention and the closest prior art?
Identify the technical effects of said difference.
Which objective technical problem is solved by these effects?
Is the technical contribution obvious?
Would the solution of the technical problem be obvious to the skilled person given the state of the art? 7

8. Example - 1
An application is filed: 8

9. Example - 2 9

10. Example – 3 Problem solution approch
The problem solution approach is the way to assess the inventive step:
Identify the closest prior art and the differences with the application
how to browse the information when the telephone is closed, in a way that a user can only with an hand, both carry the telephone and browse the information
Formulate the objective technical problem

11. Example of a Procedure – 4 Problem solution approch
The person skilled would combine: + =

12. Example: business methods
Agenda
Definition: CII
Example: business methods 12

13. "Computer-implemented invention" - CII
- 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
Guidelines C-IV, 2.3.6
Examples:
a program-controlled ...
- washing machine cycle;
- car braking system.
In other words, an invention whose implementation involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realized wholly or partly by means of a computer program is termed a computer-implemented invention.
Definition is used by the proposed EU Directive:
Directive of the European Parliament and the Council on the patentability of computer-implemented inventions, 24 May 2004, 9713/04 PI 46 CODEC 56
Here are some examples of computer-implemented inventions:
a program-controlled ...
fault tolerance scheme; washing machine cycle; car braking system. 13 13

14. Computer-implemented Inventions
computer program
get inputs; compute maximum; return the result;
FindArrayMax (t[ ], minI, maxI)
{ for (I = minI; I<=maxI; I++)
if (max < t[ I ]) max = t [ I ];
return (max); }
underlying
concept A l g o r i t h m
Let‘s start with the meaning of the terms computer program, software and algorithm used with respect to patentability of subject-matter in the field of information technology.
A computer program is a sequence of computational steps which may be effectively performed by a digital computer. The steps of a computer program are written in a systematic notation known as a programming language.
A computer program is often termed as "the code".
The term software is also often used as synonym for computer program. However, for some computer professionals the term software encompasses the media (e.g. diskette, CD or DVD) on which software is stored as well as all kinds of documentation such as books and manuals etc. that are delivered with the computer program.
The term 'algorithm' can be defined as a systematic procedure for accomplishing a task in a finite number of steps.
In the context of computers, the term algorithm is often used with respect to a set of ordered steps for solving a problem or providing an output from a specific set of inputs. In this context, an algorithm describes the concept underlying a computer program.
software: diskette, CD, DVD,
manuals 14

15. Computer-implemented Inventions
Algorithm
implementation
implementation
implementation
Program for
a standard computer
Program for
a standard computer
with specific circuits
Specific circuits
There are typically many different possible computer implementations of an algorithm.
Since it is an algorithm which defines the concept underlying a computer-implemented invention, the scope of protection sought ideally encompasses all computer implementations of an algorithm.
In practice, the physical implementation of an algorithm can be performed either through a computer program running on a standard computer, potentially in combination with specific circuits, or through specific circuits alone.
As we will see, when an algorithm, wholly or partly implemented in a computer program, defines the underlying concept of an invention, that invention is termed a 'computer-implemented invention'. 15

16. Computer Program - Technical Character?
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
Self evident really - if the only thing the program does is one of the other exclusions (e.g. a business method), there is no further technical effect and the program is a program 'as such' and then excluded.
A computer program has technical character if the method/ process it carries out has technical character.
It also applies to formulations such as
a computer running the program,
a digital medium storing the program 16 16

17. further technical effect no further technical effect
Computer Programs
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

18. Exclusion Subject-matter is not excluded from patentability
Subject-matter is excluded from patentability
Subject-matter
Technical character
No technical character
The exclusion check can be illustrated as follows:
As soon as there is at least one technical feature, the whole claim has technical character, and is therefore not excluded from patentability according to Article 52(2) and (3) EPC.
If there is no technical character then the claimed subject-matter is excluded from patentability.
If a claim has technical character, then, for the assessment of inventive step, there is a need to assess what aspects of the subject-matter claimed contribute to its technical character.
Now we will see the relevance of the technical content of a claim with respect to the application of the problem-solution approach during the examination of inventive step at the EPO.
At least one feature has technical character => subject-matter has technical character. 18

19. Example from Business Methods
"A method of controlling payment and delivery of content"
content provider
user
Gross domestic product (GDP) refers to the market value of all final goods and services produced in a country in a given period.
Regulation: access to content is free
if user is from a country with GDP < limit value AND
if the requested content is scientific content 19 19

20. 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 20

21. Example I: Exclusion
The subject matter of the claim defines purely a business or administrative method and does not have a technical character.
objection under Article 52(1) because the claim constitutes subject-matter in the sense of Article 52(2) & (3)
Search report:
Invitation under Rule 63(1) Declaration under Rule 63(2)
Rule 63: incomplete search considered as a search report 21

22. 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. = +
business process
Does this merit a patent? 22

23. Example II: Computer-Implemented Business Method
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
In this example, a method of ordering is implemented on a computer where the method comprises the following steps: …
The claim therefore comprises a clearly technical aspect as well as apparently non-technical aspects.
The clearly technical aspect of the claim lies in the following: firstly, the method is implemented in a computer, the adaptation of a computer system for carrying out a method is a technical function; secondly the basic functions of the computer including inputting, storing, and transmitting data have technical character.
The method steps however, when considered in isolation from their implementation in a computer system define a business method. Such subject-matter is excluded from patentability under Article52(2)(c). The parts of the claimed features which describe these steps therefore make up these apparently non-technical aspects.
On further analysis it is determined that the apparently non-technical aspects do not contribute to the technical character of the invention, since the data processed does not constitute the operating parameters of a computer nor does the data affect the physical/ technical functioning of a computer and the claimed process does not cause a further technical effect and are therefore purely non-technical aspects.
The subject matter of the claim defines technical and non-technical aspects and thus has technical character.
assessment of novelty and inventive step 23

24. 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
11.5 Problem-and-solution approach  In order to assess inventive step in an objective and predictable manner, the so-called "problem-and-solution approach" should be applied. Thus deviation from this approach should be exceptional.   In the problem-and-solution approach, there are three main stages:   (i) determining the "closest prior art",  (ii) establishing the "objective technical problem" to be solved, and  (iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.
Decide whether there is an inventive step
Guidelines in the EPO C-IV, 11.5 24 24

25. 'requirements specification'
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
Once we have established what part of the claimed subject-matter contributes to its technical character and hence describes its technical content, the relevant prior art is established based on this technical content.
The Boards of Appeal have interpreted the term ”state of the art” (Article 54) in English text of the EPC to be understood as “state of technology” where it consists of prior art information relevant to some field of technology.
The Boards of Appeal therefore concluded that the closest prior art will be chosen from a field of technology and not from a field which belongs to the list of exclusions, like commerce and business methods.
A skilled person within the meaning of Article 56 EPC is skilled in a technical field. With respect to computer-implemented inventions typically he is an ordinary practitioner skilled in the field of information technology.
He is aware of common general knowledge in the field of information technology at the filing date of the application but has no knowledge whatsoever regarding non-technical fields.
Ricoh Headnotes 1 and 2
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.
From these considerations it follows that anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56, even if it had been made available to the general public before the relevant priority date (see points 8 to 10 of the reasons). 25

26. Inventive Step Objective technical problem:
derived by the technical differences 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
Once the closest prior art has been established and all the technical differences between the subject matter of the claim and the closest prior art are identified, the objective technical problem is formulated from these differences.
The problem must be a technical problem, it must actually be solved by the claimed subject-matter, and the problem must be one that the skilled person in the particular technical field might be asked to solve at the date the application was filed.
The objective technical problem must not contain pointers to the technical solution or partially anticipate it. However, where a non-technical aim is described in a claim, this aim does not contribute to the technical character, therefore it may appear in the formulation of the technical problem to be solved, in particular as a constraint that has to be met. 26

27. Example II: Inventive Step
Technical character:
Non-technical aspects:
Requirements specification:
Closest prior art:
Differences:
Skilled person:
Objective technical problem:
Solution:
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 27

28. Case Law
RICOH: T172/03 ( )
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.
RICOH provides an objective approach for the assessment of inventive step for computer-implemented inventions taking into account the principles developed in recent case law.
It teaches to identify first the aspects of the claimed features which define the non-technological part of the invention, in this case an order management process. Then to identify the clearly technical aspects of the claimed features, in this case a normal distributed office information system.
It considered that the claimed invention is distinguished from a normal distributed information system only in terms of functional features and data structures for implementing the essentially business-related aspects and features of the order management method. The claimed technical solution not going beyond the concept of a mere automation of constraints imposed by the business related aspects.
Such automation using conventional hardware and programming methods being considered obvious to a skilled person.
So we can say, 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.
Ricoh Headnotes 1 and 2
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.
From these considerations it follows that anything which is not related to any technological field or field from which, because of its informational character, a skilled person would expect to derive any technically relevant information, does not belong to the state of the art to be considered in the context of Articles 54 and 56, even if it had been made available to the general public before the relevant priority date (see points 8 to 10 of the reasons). 28

29. 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

30. Case Law
HITACHI: T258/03 ( )
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 delays become irrelevant
=> this is not a technical solution since it only concerns modification to the rules of the auction.
In the case of Hitachi the board concluded that 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.
The problem of delays in propagation of information between bidders and a server is a technical problem. However, solving this problem by adapting an auction method such that any data transmission delays become irrelevant is not a technical solution since it only concerns modification to the rules of the auction and not, for example, the delays in propagation of information. 30

31. 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 no technical character at all
then it is excluded from patentability under Art. 52(2)&(3).
As noted before, frequently features which are clearly technical interact with features which are either in the grey area or are in themselves purely non-technical in a way which renders the interaction itself of technical importance. This should not be ignored but any such interaction should be seriously considered as to whether it results in a technical character aspect.
Guidelines C-IV, 2; Official Journal 11/2007, p.594 31 31

32. Summary: technical: yes – but: inventive?
Example:
A computer with - 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
Purely non technical features can be discounted as such (but never ignored) and concentration given to what those features which combine in technical character actually do.
Sometimes an application will attempt to circumvent a technical problem by defining a different non-technical route.
So for instance:
If it is very slow to get all 20 layers of administration in a company office to reply sequentially to a heavily encrypted requesting authorisation for paying the electricity bill (noticeable because it keeps going dark), then a non-technical change - say that only two persons must agree to the paying of the bill - does not solve the technical problem. It has been solved by an administrative change which has a knock-on to the technical reality.
If however the problem is solved by improving the speed of decryption/encryption and handling at each server, then we may have a patentable invention and must continue on to decide if it is novel/inventive, regardless of the administrative aspect.
NO!
technical character: no Art. 52(2)(3)
Guidelines C-IV, Official Journal 11/2007, p.594 32 32

33. 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.
wherein the geographic location of the user is determined by the IP address of the user terminal using method steps x, y, z. 33

34. Example III: Inventive Step
Technical character: Non-technical aspects:
Requirements specification:
Closest prior art:
Non-technical differences: Technical 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 communications network capable of determining the location of the terminal.
said business method method steps x, y, z
data processing expert
1. automate said business method 2. find alternative method for determining geographic location of user
1. automation is obvious 2. obvious? 34

35. Examples – Computer Implemented Inventions
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.
A52(2)&(3)
A54/56
A52(2)&(3)
Based on T49/99.
1. A mathematical method as such and/ or presentation of information. It is a normal initial step in the development of any system and has no technical character. As no feature other than the target of the modelling (which is itself not included as a feature) or the manner of implementation of the modelling in a technical system may have technical character, this matter is excluded.
2. A computer program which merely carries out processing of data referring to a non-invention can only be not 'as such' if something other than the normal technical effect is occurring (i.e. the 'further technical effect'. This is not the case in claim 2 so it is excluded. This is a program leading to no technical effect.
3. There is a computer. Computers are known - there is no problem with a technical solution here, so it is not inventive. The computer is leading to no technical effect.
4. A method of modelling or designing a technical thing is excluded (there is the guidelines section with the example of electrical filters on this). As it stands, the only characterising feature is excluded from patentability, thus excluded from patentability as claim 1.
5. The thing designed however, characterised by the system that produced it however does enjoy protection and in this situation the invention can lie in the modelling and design mathematics. Novelty/inventive step consideration will be necessary and this may be of some complexity.
A54/56 35 35

36. A computer implemented method of controlling a physical process
Example IV: Computer-implemented method of controlling a physical process
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.
A computer implemented method of
controlling a physical process
clearly technical aspect
(alleged) non-technical aspects
A method of analysing a functional relationship between two parameters comprising:
In this example, a computer-implemented method is used to control a physical process by analysing a functional relationship between two parameters. The method comprises a series of mathematical steps which are used to generate data to extend the range of one of said parameters. This range is then used in the control of the physical process. Therefore, the claim appears to be made up of a clearly technical aspect as well as apparently non-technical aspects.
The clearly technical aspect of the claim lies in the following two parts: firstly the method is implemented in a computer, the adaptation of a computer for carrying out a method being a clearly technical function; secondly, the method is used in the control of a physical process, the application of a method to control a physical entity having technical character.
The mathematical steps in the middle of the claim, when considered in isolation, are non-technical, since they belong to the field of mathematical methods, excluded under Article 52(2)(a), hence these steps form the apparently non-technical aspect of the claimed subject-matter.
However, on further analysis it is determined that these steps contribute to the technical character of the invention, since without them, the controlling of the physical process would be impossible.
Therefore, these mathematical steps are not purely non-technical and thus are to be considered in the assessment of inventive step.
a series of mathematical steps...
contributes to technical character
wherein the range of one of said parameters is extended in accordance with data generated for use in
Test your hypothesis!!! 36 36 36

37. Summary Basic components for the grant of an invention inv. step
technical character
inv. step
novelty
further EPC
requirements
Art. 52
(2)(3)
Art. 54
Art. 56
Basic components
for the grant of an invention 37 37

38. Any Questions?
Thank you
for your attention! 38 38

39. Further Information Brochure by the EPO: Patents for software?
European Law and Practice
EPO:
WIPO:
Experts' Study on Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights
WIPO: Experts' Study on Exclusions from Patentable Subject Matter and Exceptions and Limitations to the Rights 39 39