1. Patentability of Computer Implemented Inventions at the European Patent Office Daniel Closa Patent Examiner, 2.2.21, Cluster Computers European Patent Office 28 April, 2009 LYON

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

3. 3 Agenda 1.Computer-Implemented Inventions 2.Legal Background 3.Examination Practice and Case Law 4.Case Law for Computer Programs 5.PPN 03/06 - Types of Claims 6.PPN 08/08 - Referral G3/09 Annex I: Case Law Annex II: Classification - Business Methods Examples

4. 4 1.Computer Implemented Inventions

5. 5 FindArrayMax (t[ ], minI, maxI) for (max = t[minl], l = minl + 1; l<=maxl; l++) if (max < t[ I ]) max = t [ I ]; return (max); } underlying concept software: diskette, CD, DVD, manuals computer program get inputs; compute maximum; return the result; AlgorithmAlgorithm Computer-implemented Inventions

6. 6 Algorithm implementation Program for a standard computer with specific circuits Program for a standard computer Specific circuits

7. 7 "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 Examples: a program-controlled... - washing machine cycle; - car braking system. Guidelines C-IV, 2.3.6 – PPN 11/06

8. 8 2. Legal Background

9. 9 European Patent Convention Patentable Inventions European patents shall be granted for - any inventions, in all fields of technology, Art. 52(1) → A.57 → A.54 → A.56 → A.52(2)(3) - involve an inventive step and - are susceptible of industrial application - are new What is an Invention? provided that they

10. 10 European Patent Convention A.52(3) A.52(2) What is NOT an Invention? a)discoveries, scientific theories, mathematical methods; The following, in particular, shall not be regarded as inventions:...only to the extent to which a European patent application relates to such subject matter or activities as such. c)schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; b)aesthetic creations; d)presentations of information;

11. 11 What is an Invention? Guidelines for Examination in the EPO Case Law of the Boards of Appeal There is no positive definition of the term "invention" in the EPC. Interpretation EPC European Patent Convention

12. 12 Non-Inventions -Narrow Interpretation -Activities falling within the notion of a non-invention would typically represent purely abstract concepts devoid of any technical implication. -A non-invention has no technical character T 258/03 (HITACHI) What is an Invention?

13. 13 Technical Character -no general definition of „technical“ -interpret grey areas -series of individual Board's of Appeal decisions Further requirement for patentability implicitly contained in the EPC: the invention must be of "technical character" to the extent that it - must relate to a technical field → R.42(1)(a) EPC - must concern a technical problem → R.42(1)(c) EPC - must have technical features in terms of which the matter for which protection is sought can be defined in the claim → R.43(1) EPC Guidelines, C-IV 1.2

14. 14 Technical is...  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.  the physical features of an entity memory, port etc.

15. 15 Subject-matter is not excluded from patentability × Subject-matter is excluded from patentability Exclusion At least one feature has technical character => subject-matter has technical character. Technical character No technical character Subject-matter

16. 16 3. Examination Practice and Case Law

17. 17 Example from Business Methods "A method of controlling payment and delivery of content" Regulation: access to content is free - if user is from a country with GDP < limit value AND - if the requested content is scientific content content provider user

18. 18 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

19. 19 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: Declaration under Rule 63

20. 20 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?

21. 21 Example II: Computer-Implemented Business Method Non-Technical Aspects/ ProcessClearly Technical Aspects 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 The subject matter of the claim defines technical and non-technical aspects and thus has technical character. assessment of inventive step

22. 22 Inventive Step Problem Solution Approach Establish closest prior art Determine differentiating features and their technical effects Formulate an objective technical problem Decide whether the proposed solution is obvious for the skilled person

23. 23 Inventive Step 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; has general programming skills - aware of common general knowledge in information technology - no knowledge of non-technical fields T614/00 COMVIK Non-Technical Aspects/ Process Clearly Technical Aspects 'requirements specification' = instructions given to a programmer summarising the requirements of the customer i.e. business or administrative process to be automated ≠ state of the art T172/03 RICOH

24. 24 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)

25. 25 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

26. 26 Case Law 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: T0172/03 (27.11.2003)

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.  wherein the 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: Requirements specification: Closest prior art: Non-technical differences: Technical 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 communications network capable of determining the location of user. 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 use 1. automation is obvious 2. obvious?

29. 29 Example: Computer-Implemented Control 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 a series of mathematical steps... wherein the range of one of said parameters is extended in accordance with data generated for use in A method of analysing a functional relationship between two parameters comprising: Clearly Technical Aspect(alleged) Non-Technical Aspects Contributes to technical character

30. 30 4.Computer Programs

31. 31 C-II, 4.15 Computer programs program listings in programming languages cannot be relied on as the sole disclosure of the invention description: - to be written substantially in normal language, possibly by flow diagrams -to be understood by a skilled person having general programming skills short excerpts from programs written in commonly used programming languages can be accepted if they serve to illustrate an embodiment of the invention Guidelines

32. 32 Guidelines C-IV, 2.3.6 Programs for Computers – PPN 11/06 Basic patentability considerations in respect of claims for computer programs are in principle the same as for other subject-matter. If the claimed subject-matter has a technical character it is not excluded from patentability by provision of Art. 52(2).

33. 33 Computer Programs -With regard to Art. 52(2) & (3), it does not make a difference whether a computer program is claimed by itself or as a record carrier. -The combination of Art. 52(2) & (3) demonstrates that the legislators did not want to exclude from patentability all programs for computers. -Interpretation of “as such”: programs for computer must be considered as patentable inventions when they have a technical character. -Physical modifications of the hardware, causing e.g. the flow of electrical currents, cannot per se constitute the technical character. -If computer program produces a “further technical effect” or solves a technical problem, it is considered as an invention in the sense of Art. 52(1). IBM: T1173/97 (01.07.1998) & T935/97 (04.02.1999)

34. 34 Computer Programs -The hardware on which the program is intended to run is outside the invention, i.e. the hardware is not part of the invention. -The effect only shows in physical reality when the program is being run. Thus, it only possesses the “potential” to produce said effect. -A computer program product may therefore possess a technical character because it has the potential to cause a further effect. IBM: T1173/97 (01.07.1998) & T935/97 (04.02.1999) – cont. -Computer program products are not excluded from patentability under all circumstances. -A computer program product which (implicitly) comprises all the features of a patentable method is therefore in principle considered as not being excluded from patentability under Art. 52(2) and (3).

35. 35 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

36. 36 5.Types of Claims

37. 37 Guidelines C-III, 3.1 - Claim Categories There are only two basic kinds of claim: 1. claims to a physical entity (product, apparatus) -> "product claim" 2. claims to an activity (process, use) -> "process claim” For many inventions, claims in more than one category are needed for full protection.

38. 38 Types of Claims - PPN 03/06 1. A method of operating a data processing system comprising steps A, B.... 2. a) A data processing apparatus/ system comprising means for carrying out the method of claim 1. b)A data processing apparatus/ system comprising means for carrying out steps A, means for carrying out step B.... 3. a) A computer program [product] adapted to perform the method of claim 1. b)A computer program comprising software code adapted to perform steps A, B... 4. a) A computer readable storage medium comprising the program of claim 3. b)A computer readable storage medium comprising instructions to cause a data processing apparatus to carry out steps A, B.... 5. Data structures, signals, etc (see e.g. T 1194/97)

39. 39 Types of Claims - PPN 03/06 1.Claim types 3 (program) and 4 (storage medium) are of the same nature, and both are a consequence of T1173/97. Independent claims of these two types may nevertheless exist together without infringing Rule 43(2). 2.Claims types 2, 3 and 4 can be allowed as additional independent claims if the method claim (type 1) is allowable (T1173/97). 3.Apparatus/ system claims (type 2) are not excluded under Art. 52(2) and (3) (T931/95). 4.Method claims involving technical means are not excluded under Art. 52(2) and (3) (T258/03). 5.Non-technical activities (performing mental act or doing business) do not avoid exclusion merely through their routine implementation as a computer program (T1173/97). 6.Claims of type 5 can be allowed in specific cases (T1194/97).

40. 40 Druckexemplar: IBM 1173/97

41. 41 Druckexemplar: IBM 1173/97

42. 42 6.PPN 08/08 - Referral G3/08

43. 43 PPN 08/08 - Referral G3/08 - Patentability of programs for computers Requirements for staying the proceedings: Proceedings shall be stayed until the EBoA has issued its opinion only if: at least one of the parties to the proceedings explicitly requests staying of the proceedings, and the division is of the opinion that the outcome of the proceedings depends entirely on the opinion of the EBoA. request of the party should be sufficiently substantiated rejection of such a request should be substantiated as should be the granting if it has been objected by another party

44. 44 PPN 08/08 - Referral G3/08 - Patentability of programs for computers Question 1: Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program? Question 2a: Can a claim... avoid exclusion under Art. 52(2)(c) and (3) merely be explicitly mentioning the use of a computer or computer-readable storage medium? -> Art. 52(2)(3) EPC? -> Art. 52(2)(3) EPC or Art. 52(1)? The following questions have been referred to the EBoA:

45. 45 PPN 08/08 - Referral G3/08 - Patentability of programs for computers Question 4: Does the activity of programming a computer necessarily involve technical considerations? Question 3a: Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim? -> technical effect only possible on "hardware" or also "within software"? -> Art. 52(2)(3) or Art. 52(1) EPC?

46. 46 PPN 08/08 - Referral G3/08 - Patentability of programs for computers Which cases are affected? European patents and applications PCT and national applications are not concerned at search stage: requests made during the search stage should not be granted search report and ESOP should be drawn up request should not be addressed in ESOP procedure to follow (for details see PPN 08/08): granting the request: Form 2081A denying the request: reasoning to be included in the next communication

47. 47 Thank you for your attention!

48. 48 Annex I: Case Law

49. 49 Annex I: Case Law: Computer-Implemented Inventions T 769/92 General purpose management/ SOHEI (31.05.1994) T 1173/97 Computer program product/ IBM (01.07.1998) T 935/97Computer program product/ IBM (04.02.1999) T 931/95 Pension benefit system/ PBS (08.09.2000) T 641/00 Two identities/ COMVIK (26.09.2002) T 172/03 Order management/ RICOH (27.11.2003) T 258/03 Auction method/ HITACHI (21.04.2004) T 1242/04 Rule 45 EPC1973 / MAN (20.10.2006) T 154/04 Gathering of data / DUNS LICENSING (15.11.2006) T 717/04 non-technical features & novelty (28.02.2007) G2/88 non-technical features & novelty (11.12.1989)

50. 50 Annex I: Case Law -Features making no contribution to technical character cannot support the presence of inventive step (e.g. cost distribution). -Claimed subject-matter:identify the technical content -Closest prior art:related to a technical field -Person skilled in the art:expert in a technical field -Objective problem: realistic technical problem 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. COMVIK: T0641/00 (26.09.2002)

51. 51 Annex I: Case Law 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: T0172/03 (27.11.2003)

52. 52 Annex I: Case Law 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 Not a technical solution since it only concerns modification to the rules of the auction. HITACHI: T0258/03 (21.04.2004)

53. 53 Annex I: Case Law T 914/02 core loading arrangement/ GENERAL ELECTRIC (12.07.2005) Having technical character is an implicit requirement of the EPC to be met by an invention within the meaning of Article 52(1) EPC. The involvement of technical considerations, however, is not sufficient for a method which may exclusively be carried out mentally to have technical character. Technical character may be provided through the technical implementation of the method, resulting in the method providing a tangible, technical effect, such as the provision of a physical entity as the resulting product or a non-abstract activity, such as through the use of technical means.

54. 54 T0208/84 VICOM Image processing a claim directed to a technical process in which a mathematical method is used is not a mathematical method as such because the algorithm is not merely carried out on numbers but on physical entities. Mathe- matical Method T0026/86 KOCH&STERZEL X-ray apparatus X-ray apparatus incorporating a data processing unit; controls the X-ray tubes so that by establishing a certain parameter priority, optimum exposure is combined with adequate protection against overloading of the X-ray tubes. A mixture of technical and non-technical features is not excluded from patentability if the invention as a whole has a technical effect. Apparatus involving Software T0769/92 SOHEI Computer aided management system computer system for plural types of independent management including at least financial and inventory management comprising... a single transfer slip (entry form) having a format commonly used for at least financial and inventory management... various files... and various processing means. The single transfer slip is regarded as user interface, i.e. technical considerations have been made. Software is not merely a computer program as such, if technical considerations are to be made for implementing the solution. Computer System T1173/97 IBM Asynchronous resource recovery in a computer system T0935/97 IBM Windowing System A computer program only causing inherent technical effects, i.e. those caused by any computer program, is considered a computer program as such. A computer program product having the potential to cause a further technical effect is not excluded from patentability. A computer program product which (implicitly) comprises all the features of a patentable method (for operating a computer for instance) is therefore not excluded from patentability and it does not make any difference whether a computer program is claimed by itself or as a record on a carrier. Computer program product Annex I: Case Law