Patent Law for Computer Scientists: Steps to Protect Computer-Implemented Inventions

Patent Law for Computer Scientists

Daniel Closa Jo¨rg Machek

l

Alex Gardiner

l

Falk Giemsa

Patent Law for Computer Scientists Steps to Protect Computer-Implemented Inventions

Daniel Closa Alex Gardiner Falk Giemsa Jo¨rg Machek European Patent Office, Munich [email protected]

ACM Computing Classification (1998): K.5.1, K.4.1, J.1 ISBN: 978-3-642-05077-0 e-ISBN: 978-3-642-05078-7 DOI 10.1007/978-3-642-05078-7 Springer Heidelberg Dordrecht London New York Library of Congress Control Number: 2009940399 # Springer-Verlag Berlin Heidelberg 2010 This work is subject to copyright. All rights are reserved, whether the whole or part of the material is concerned, specifically the rights of translation, reprinting, reuse of illustrations, recitation, broadcasting, reproduction on microfilm or in any other way, and storage in data banks. Duplication of this publication or parts thereof is permitted only under the provisions of the German Copyright Law of September 9, 1965, in its current version, and permission for use must always be obtained from Springer. Violations are liable to prosecution under the German Copyright Law. The use of general descriptive names, registered names, trademarks, etc. in this publication does not imply, even in the absence of a specific statement, that such names are exempt from the relevant protective laws and regulations and therefore free for general use. Cover design: KuenkelLopka GmbH, Heidelberg, Germany Printed on acid-free paper Springer is part of Springer Science+Business Media (www.springer.com)

Preface

We work at the European Patent Office (EPO). Three of us are patent examiners and one is the director of a group of patent examiners. Patent examiners assess applications for patents which may be granted to inventors. A patent is a legal title giving its holder the right to prevent third parties from commercially using an invention without authorisation. Examiners check in particular that the invention is new and not some mere obvious alteration to something which already exists, by carrying out searches on all sorts of information which existed and could have been looked at by the applicant in the time up to the filing of their first application. Such information is collectively known as the “prior art” by those working in the patent world. Patent examiners work at the forefront of technology and deal every day with the latest and most challenging technical innovations. We will present an overview of the mindset of typical patent examiners. Although we aim to give general advice, a certain bias towards the procedures of the EPO is unavoidable. The idea underlying this book first came about when two of us participated in writing an article [1] in which we demonstrated, by way of one particular example, how much technical information had to be disclosed in an application in order to describe a technical contribution which would in turn be worthy of detailed examination of inventive step. This article was met with general enthusiasm and numerous remarks encouraging the authors to extend the exercise. Since then we have been repeatedly asked to consider extending the scope to other specific areas of interest. After one of us was approached by the current publishers to present a scheme for a more extensive treatment of such topics, we started to collect information and to discuss, with a view to “doing a proper job” of production of a more complete compilation, snippets of presentations we regularly give. As befits a European organisation, our countries of origin are spread across Europe. We come from Scotland, Luxemburg, France/Spain and Austria. We are thus truly European. The European Patent Office and its civil servants have created a culture of cultures both as an organisation and within the daily lives of all employees. This even in itself is remarkable – yet only shortly after the European Patent Organisation celebrated its 30th birthday it welcomed “The Former

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Yugoslav Republic of Macedonia” as its 35th member state, on 1 January 2009 (Fig. 1). These first few decades have been spectacular. The number of applications filed with the European Patent Office has risen steadily, confounding the humble expectations of its founding fathers, who would never have guessed at the current figures even in their wildest dreams. In the early years of its existence, the EPO was dealing with around 10,000 applications a year; this was already considered a success. In 2007 the EPO received well over 210,000 applications [2]. One basic reason for the success of the European patent system appears to lie in the high economic value which is attributed to patents granted under its auspices. This is a particularly strong motivation for getting patent applications to comply with the European Patent Convention (EPC) right from the beginning. In our daily work we have to deal with a variety of applications, some of which describe truly splendid innovations. A relatively high proportion of them, however, will not be granted a patent because they do not show all the important features

Fig. 1 The member states of the European Patent Organisation (EPO)

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necessary to satisfy our patent law. In many cases this sorry situation could have been avoided had some basic considerations been respected. This is particularly true for computer implemented inventions. Together, the four of us have a total experience of 70 years in the patent business. From our academic background we are physicists, electronic engineers and computer scientists. We are happy to tap our wealth of knowledge for this book. Our present common centre of professional interest lies within the area of Computer Implemented Inventions (CII). This also includes applications which are frequently termed “methods for doing business”, as these are typically implemented on computers. This book is based on our experience within the EPO and by way of some extension, Europe more generally, patent law in Europe being more or less harmonized. National Courts of Justice, when dealing with cases that had been examined in the light of the EPC and the EPO’s Boards of Appeal, attempt to interpret the law in accordance with the same values, and where differences do exist they tend to be relatively minor matters of emphases rather than fundamental differences. This book is a guide to examiner thinking. Despite differences in respective patent law, the basic rationale of patent examiners is globally rather similar. The principles developed in this book apply therefore also to other patent systems to a considerable degree, and reference will regularly be made to the USA and Japanese systems.

References 1. D. Closa, P. Corcoran, J. Machek, C. Neppel; epi information 2/2007; pp 65–69 2. Alison Brimelow: A Happy Anniversary for the European Patent System, iam magazine; http:// www.iam-magazine.com/issues/Article.ashx?g=5ad0be00-3952-4ee5-aefe-37d0f4e66653

Contents

Part I 1

Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.1 Patents and Software, Basics . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.1.1 Short History of Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.1.2 “Software” Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.1.3 Other Intellectual Property Rights . . . . . . . . . . . . . . . . . . . . . . . . . . 1.1.4 Some Spectacular Patent Cases in the Software Field . . . . . . 1.2 Overview of Patent Practices in the USA, Japan and Europe . . . . . . 1.2.1 Comparison of US Patent and Trademark Office, Japanese Patent Office and European Patent Office . . . . . . . . 1.3 Structure of the Book and Presentation of Case Methodology . . . . . References . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

3 3 4 8 15 17 20 22 29 30

Part II 2

Business Methods . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.1 Example 1: Method of Selling . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.1.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.1.2 Claim 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.1.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.2 Example 2: Method of Selling via a Network . . . . . . . . . . . . . . . . . . . . . . 2.2.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.2.2 Claim 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.2.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.3 Example 3: Automatic Method of Selling via a Network . . . . . . . . . . 2.3.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.3.2 Claim 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.3.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

35 38 38 38 39 40 40 41 42 43 43 44 45

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2.4

3

4

5

Example 4: Automatic Method of Selling via a Network with Management of Power Production . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.4.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.4.2 Claim 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2.4.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

Administrative Methods . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.1 Example 1: Method of Data Gathering . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.1.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.1.2 Claim 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.1.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.2 Example 2: Method for Assimilating Administrative Information for Setting up an Agreement . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.2.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.2.2 Claim 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.2.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.3 Example 3: Data Processing Device for Assimilating Administrative Information for Setting up an Agreement . . . . . . . . . . 3.3.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.3.2 Claim 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.3.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.4 Example 4: Method of Arranging an Agreement via Encrypted Communication Channels . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.4.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.4.2 Claim 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 3.4.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Digital Rights Management . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.1 Example 1: Digital Content Promotion Method . . . . . . . . . . . . . . . . . . . . 4.1.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.1.2 Claim 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.1.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.2 Example 2: Computer-Implemented Content Promotion Method Using Encryption . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.2.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.2.2 Claim 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.2.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.3 Example 3: Client–Server DRM System . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.3.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.3.2 Claim 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.3.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

46 46 47 48 51 52 52 52 53 54 54 55 55 57 57 58 58 59 59 61 61 63 63 63 64 65 66 66 67 68 69 69 71 72

Database and Database Management System . . . . . . . . . . . . . . . . . . . . . . . . . 75 5.1 Example 1: Simultaneous Access to a Database . . . . . . . . . . . . . . . . . . . . 77

Contents

5.2

5.3

5.4

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5.1.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.1.2 Claim 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.1.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Example 2: Simultaneous Database Access with Time Management . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.2.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.2.2 Claim 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.2.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Example 3: Simultaneous Database Access with Automatic Time Management . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.3.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.3.2 Claim 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 5.3.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Conclusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

77 79 79 80 80 82 82 83 83 85 86 86

6

Billing and Payment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 89 6.1 Example 1: Third-Party Based Billing and Payment Method . . . . . . 89 6.1.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 89 6.1.2 Claim 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 91 6.1.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 92 6.2 Example 2: Card-Less Billing and Payment Process . . . . . . . . . . . . . . . 93 6.2.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 93 6.2.2 Claim 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 95 6.2.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 95 6.3 Example 3: Colour Matrix Based Billing and Payment System . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97 6.3.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 97 6.3.2 Claim 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 98 6.3.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99 References . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 101

7

Graphical User Interfaces . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.1 Example 1: Spell-Checking System . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.1.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.1.2 Claim 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.1.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.2 Example 2: Dynamic Spell-Checking System . . . . . . . . . . . . . . . . . . . . 7.2.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.2.2 Claim 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.2.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.3 Example 3: Mixed Spell-Checking System . . . . . . . . . . . . . . . . . . . . . . . 7.3.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.3.2 Claim 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.3.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

103 105 105 105 105 106 106 107 107 108 108 110 110

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7.4

7.5

Example 4: Smart Spell-Checking System . . . . . . . . . . . . . . . . . . . . . . . 7.4.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.4.2 Claim 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 7.4.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Conclusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

111 111 113 114 114

8

Simulation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.1 Example 1: Method for Simulating a Flight Situation . . . . . . . . . . . . 8.1.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.1.2 Claim 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.1.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.2 Example 2: Computer-Implemented Aircraft Configuration . . . . . 8.2.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.2.2 Claim 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.2.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.3 Example 3: Computer-Implemented Flight Simulator . . . . . . . . . . . . 8.3.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.3.2 Claim 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.3.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.4 Example 4: Special Purpose Helicopter Simulator . . . . . . . . . . . . . . . 8.4.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.4.2 Claim 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.4.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.5 Special Topic – Non-unity . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.5.1 Claim 5 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 8.5.2 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . References . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

117 117 117 118 118 118 118 120 120 122 122 123 123 124 124 125 126 126 127 127 128

9

Games . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.1 Example 1: Multi-player Game . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.1.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.1.2 Claim 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.1.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.2 Example 2: Device for Multi-player Game . . . . . . . . . . . . . . . . . . . . . . . 9.2.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.2.2 Claim 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.2.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.3 Example 3: Hand-held Gaming Device . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.3.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.3.2 Claim 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.3.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.4 Example 4: RFID-Based Multi-player Gaming System . . . . . . . . . . 9.4.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.4.2 Claim 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9.4.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

129 130 130 130 131 131 131 133 133 134 134 136 136 137 137 139 140

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10

E-Learning . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.1 Example 1: Interactive Electronic Learning Tool . . . . . . . . . . . . . . . 10.1.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.1.2 Claim 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.1.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.2 Example 2: Internet-Based Interactive Learning System . . . . . . . 10.2.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.2.2 Claim 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.2.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.3 Example 3: Computer-Assisted Teaching System . . . . . . . . . . . . . . . 10.3.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.3.2 Claim 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.3.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.4 Example 4: Interactive Educational Globe System . . . . . . . . . . . . . . 10.4.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.4.2 Claim 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.4.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.5 Special Topic – Lack of Disclosure . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

143 143 143 144 144 145 145 147 147 148 148 149 150 150 150 152 153 153

11

Medical Informatics . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.1 Example 1: Computer-Implemented Method for Managing Medical Treatment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.1.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.1.2 Claim 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.1.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.2 Example 2: Computer-Implemented Medical Pre-diagnosis . . . . 11.2.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.2.2 Claim 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.2.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.3 Example 3: Computerized Method Supporting Medical Diagnosis . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.3.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.3.2 Claim 3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.3.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.4 Example 4: Computer-Controlled Surgery . . . . . . . . . . . . . . . . . . . . . . 11.4.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.4.2 Claim 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.4.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.5 Conclusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

155

12

156 156 157 157 158 158 159 159 160 160 161 161 162 162 162 163 164

Mathematical Methods . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 165 12.1 Example 1: Mathematical Method for Defining Points of a Graph . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 166 12.1.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 166

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12.1.2 Claim 1 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.1.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Example 2: Mathematical Method for Treating a Video Signal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.2.1 Description . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.2.2 Claim 2 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 12.2.3 Examiner Observations . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . Conclusion . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

166 166

Case Law . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.1 Chapter 1: Introduction, General Case Law . . . . . . . . . . . . . . . . . . . . . 13.1.1 T208/84 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.1.2 T26/86 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.1.3 T935/97 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.1.4 T1173/97 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.1.5 T163/85 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.1.6 T0769/92 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.1.7 T641/00 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.1.8 UK Court Decision: Astron Clinica et al., England and Wales High Court [2008] EWHC 85 (Pat) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.1.9 UK Court Decision: Autonomy Corp. Ltd., England and Wales High Court [2008] EWHC 146 (Pat) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.1.10 US Court Decision: KSR v. Teleflex, 550 US 398 (2007) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.2 Chapter 2: Business Methods . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.2.1 US Court Decision: State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. Jul. 23, 1998) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.2.2 US Court Decision: In re Bilski, 545 F.3s 943, 88 USPO 2d 1385 (Fed. Cir. 2008) . . . . . . . . . . . . . . . . . . . . . . . . 13.2.3 UK Court Decision: Shopalotto.com, Judgement of the England and Wales High Court [2005] EWHC 2416 (Pat) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.2.4 T931/95 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.2.5 T258/03 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.2.6 T959/03 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.3 Chapter 3: Administrative Methods . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.3.1 UK Court Decision: Aerotel/Macrossan, Judgement of the England and Wales Court of Appeal [2006], ECWA Civ 1371 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .

173 174 174 175 175 175 175 176 176

12.2

12.3

167 167 168 168 169

Part III 13

177

177 177 177

177 177

178 178 178 179 179

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Contents

13.3.2 T154/04 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.3.3 T172/03 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.3.4 T368/05 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.3.5 T845/05 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.4 Chapter 4: Digital Rights Management . . . . . . . . . . . . . . . . . . . . . . . . . . 13.4.1 T0953/04 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.4.2 T0860/05 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.4.3 T0043/06 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.5 Chapter 5: Database and Database Management System . . . . . . . 13.5.1 T701/06 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.5.2 T787/06 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.6 Chapter 6: Billing and Payment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.6.1 T1108/06 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.7 Chapter 7: Graphical User Interfaces . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.7.1 T928/03 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.7.2 T1188/04 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.7.3 T125/04 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.7.4 T769/92 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.7.5 T643/00 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.8 Chapter 8: Simulation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.8.1 T1227/05 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.8.2 T0421/06 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.9 Chapter 9: Games . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.9.1 T1543/06 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.9.2 T1023/06 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.9.3 T336/07 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.10 Chapter 10: E-Learning . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.10.1 T0856/05 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.11 Chapter 11: Medical Informatics . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.11.1 G1/04 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.11.2 T542/06 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.11.3 T1814/07 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.12 Chapter 12: Mathematical Methods . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13.12.1 T1824/07 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 14

xv

179 179 180 180 180 180 180 180 181 181 181 181 181 181 181 181 182 182 183 183 183 183 184 184 184 184 184 184 185 185 185 185 186 186

Conclusion and What Comes Next . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 187

Index . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 191

Part I

Chapter 1

Introduction

Abstract More than five centuries ago the first patent statute was passed by the Venetian senate. It already had most of the features of modern patent law, recognizing the public interest in innovation and granting exclusive right in exchange for a full disclosure. Some 350 years later the industrial revolution led to globalisation. The wish to protect intellectual property on a more international level evolved and supranational treaties were negotiated. Patent laws are still different in many countries, however, and inventors are sometimes at a loss to understand which basic requirements should be satisfied if an invention is to be granted a patent. This is particularly true for inventions implemented on a computer. While roughly a third of all applications (and granted patents) relate, in one way or another, to a computer, applications where the innovation mainly resides in software or in a business method are treated differently by the major patent offices. The procedures at the USPTO, JPO and EPO and, in particular, the differences in the treatment of applications centring on software are briefly explained. In later sections of this book, a wealth of examples will be presented. The methodology behind the treatment of these examples is explained.

1.1

Patents and Software, Basics

Before a patent can be granted, you have to have had an idea. Not any old idea will do, of course. Which ideas qualify for patentability is one of the topics of this book. After you have developed your idea and pondered it for a while, you might decide that it would be wise to try to get some protection for it. You will then need to transfer your idea into a patent application, file it with a patent office and convince the examiner that your idea, as expressed in this application, deserves a patent. In this book we will set out some basic rules which you can follow in order to allow a little more confidence when playing the Patent Game. Early in the process of obtaining a patent, the inventor needs to supply information to the attorney. This book is written to aid your understanding of the kind of D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_1, # Springer-Verlag Berlin Heidelberg 2010

3

4

1 Introduction

information the attorney will need in order to be able to file a (your) potentially successful patent application. If this book, by aiding the understanding of what and where to file, increases, be it only by a fraction, the probability of the end result being a granted patent, rather than a waste of time, effort and money, then it was worth your time and money buying and reading it and our effort in writing it. It is to be understood, however, that this book does not replace sound legal counsel, nor is it intended to do so. It is rather to be seen as a guide for the interested inventor or applicant to prepare, and to think through his or her invention in such a manner as to ease the interaction with a patent attorney, and to assess the chances of success (i.e. of getting a patent granted) realistically. Improving the risk management of such an undertaking can only be in everyone’s interests. Back to the basics; you may or may not already know that a patent is a right given by the government of a country to the inventor of a product or process in order to protect his rights in selling it in that region, without worrying about others simply copying it and setting up in competition without barrier, for a specified period of time. It provides the patent owner with the right to exclude others from making, using, or selling a claimed invention, i.e. an invention as described in the claims. To own a patent does not automatically provide ownership of the device or apparatus which it protects, nor is it a blessing by the state or a permission to do something.

1.1.1

Short History of Patents

Five hundred years ago the history of patents began. Their introduction was a means to encourage (especially foreign) entrepreneurs to start up industries based on technological progress in the state issuing the patent. The Venetian senate passed the first known written law directed to the grant of patents and their enforcement as a means of protection on 19 March 1474 (Fig. 1.1). The hope was that this would act to attract foreign innovators to improve the glass-blowing trades for which Venice was famous. The law was very modern in many aspects. It recognized the public interest in innovation, and formulated the philosophical foundation of patent law as an incentive for innovation, with exclusive rights being granted for a limited period in exchange for full disclosure of the invention. It treated foreigners and citizens on equal terms and, within its included means for enforcement, gave the state the right to exploit the invention. This is however only the oldest written law – we are patent examiners and as such do not stop there but look for the earliest exhibition of the idea in any form! As early as 1331 special security was granted to a certain John Kemp of Flanders and indeed to any other cloth worker who came to England upon invitation of the king. In the reign of Edward III it had become evident that there was something going wrong with the competitiveness of the English cloth trade. To remedy defects in the native cloth production methods, foreign experts were actively encouraged to settle in the country and develop these methods using their skills.

1.1 Patents and Software, Basics

5

Fig. 1.1 Facsimile of Venetian patent of 1474 [11]

Incidentally, similar to Venice and England, also in Japan the patent system that evolved in the twentieth century had the aim of fostering the introduction of foreign technology into the country [17].

6

1 Introduction

Until the middle of the nineteenth century, the patent laws of different countries evolved in parallel, sometimes through individual copying of features from other laws (imitation being a form of flattery). The second Industrial Revolution led to the development of steam-powered ships and to technological and economic progress through a first wave of globalisation. The wish, even the need, to protect intellectual property on a more international level became more pronounced and expressed itself in an international treaty, the Paris Convention for the Protection of Industrial Property, signed in 1883. It provided a simple procedural mechanism to make intellectual property systems, including patents, of any contracting state accessible to the nationals of other states party to the Convention. The “Paris Convention priority right”, in short – priority right, was also established by this treaty. This provided that an applicant from one contracting state would be able to use its first filing date (in one of the contracting State) as the effective filing date in another contracting State, provided that the applicant files another patent application within 12 months of the first filing. In short, it gave some breathing room against the horrible prospect of sprinting round the planet in order to file applications everywhere of interest. By the 1950s a uniform patent classification system was created at the instigation of the Council of Europe. This proved to be so successful that it was incorporated into the Paris Convention in 1971.1 At last, the breakdown of the technical world had an index under which a (reasonably) common idea of what constituted a corkscrew could be referenced. The desire to unify patent procedures in Europe as part of a greater integration of economies and industry led, eventually, to the European Patent Convention (EPC). This was to be the substantive law of the European Patent Office (EPO), and every state which is member of the European Patent Organisation must introduce the EPC into their national patent law as a pre-condition for joining the EPO. The wish to streamline patent procedures is of course not confined to Europe. The Patent Cooperation Treaty (PCT), which is an international patent law treaty, even predates the EPC. It was concluded in 1970 and entered into force in 1978. It provides a unified procedure for filing patent applications to protect inventions in each of the Contracting States of the PCT. An application is made with a Receiving Office (RO) in one language. The search is performed by an International Searching Authority (ISA), and the resultant search report is accompanied by a written opinion regarding the compliance of the application, and thus the invention, with the articles and regulations of the PCT. This earlier procedure, known as “Chapter I” due to the division of the Treaty into such chapters, is optionally followed by “Chapter II”, which is a preliminary examination performed by an International Preliminary Examining Authority (IPEA). The outcome may be a positive or negative report by the IPEA on the application. The PCT route itself does not lead to the grant of an “international patent”. Such a patent does not exist. Rather, any legally binding examination which might result

1

The Strasbourg Agreement was negotiated in 1971 and entered into force in 1975.

1.1 Patents and Software, Basics

7

in grant or refusal is performed by a relevant national or regional authority which was designated or elected at the time of filing the application. This is commonly referred to as “going Regional”. Only a limited number of national authorities take the outcome of the PCT, without national substantive examination of any form, as determining their national grant. Parallel to the construction of the PCT, the World Intellectual Property Organisation (WIPO) was created. It is a specialised agency of the United Nations, with its headquarters in Geneva. WIPO acts as the central office, the “International Bureau”, for the PCT procedure and is active in the development of intellectual property rights on an international level. The desire for global harmonisation of patent law is also based on the fact that, more so today than ever before, the concept for a product or process may originate in one place, but it is executed somewhere else and the final customer probably uses it in a third place. In many cases the consumer does not know the origins either of production or conception of the bought object. The inventor might therefore want protection in more than one country in order to cover these varying aspects of the life span of an idea. Examination procedures are different in each country outside Europe, because these different countries have different patent laws. There is no universal rule which would allow somebody to classify one patent office as more stringent and another lax; rather, it can only really be said that it appears that there are patents which are more readily granted by one patent office, and others which are more readily granted by a different office. The EPO has the reputation of being stricter than some with patents with aspects relating to software. It is the clear intention of this book to highlight some of these differences and at the same time give wider-ranging advice on the issues of patentability. Patent offices are not in the business of promoting themselves. There are many good reasons why applications are refused (even though the reasons might be regionally different) and many good reasons for which they may not be refused. We have a pretty good understanding of the mechanisms of refusals and rejections, not only at the EPO but in general. Although this book will attempt to highlight differences in national patent law and procedure of the more important granting authorities, its aim is not to analyze the precise reasons for different treatment of an identical application in different countries; that lies deep in the sociology and history of regions and their resultant legal systems. It will also not try to provide tips and tricks how to circumvent a negative outcome in any one patent authority. The purpose of this book is more general: What goes on in the mind of a patent examiner? Are there universal considerations to be respected when seeking to protect an invention? This is what we offer to share. We cannot and will not replace attorneys – it’s just not how the system is built. Without a patent, anyone can imitate someone else’s invention. With a patent, inventors enjoy a period during which they own the idea behind their invention, and can prevent others from imitating it. They can also allow others to use their ideas for a fee. With a patent issued to them, they may also feel safe against others

8

1 Introduction

attempting, in the future, to charge them a fee to do what they themselves thought of first (a particularly bitter experience). This also, of course, applies to patents and patent applications relating to software and computers. Yet strong opinions concerning the acceptance of patent protection for software divide the world of intellectual property protection, and even stronger opinions are voiced from those opposed to such protection rights in general. Some think that allowing protection on any form of software will make software development an exclusive utility for big industrial players who could use their considerable clout and large patent portfolios to choke competition. Others are of the opinion that to allow small and medium size enterprises to survive there must be a means to protect their innovative ideas and developments from well-heeled competitors. Somewhere within the static of these individually voiced opinions lie clean tones of good arguments based on logic and common sense and constantly undergoing self criticism, rather than closed to consideration through absolute belief, bias or self interest.

1.1.2

“Software” Patents

Mainly we will be speaking about software and computers. Computers are part of almost every area of modern life, and they are becoming more advanced every day, with increasingly small gadgets performing ever more complicated tasks. Consequently, the number of new inventions seeking patent status in the field has been rising steadily. In fact, patent applications for computer-based inventions are amongst those with the highest growth rate across all patent categories arriving at the European Patent Office (EPO). A thorough examination process awaits all new applications in this field. The main aim is to distinguish true technological innovations – which contribute to the overall level of progress of technology – from straightforward variations on existing methods. In technical terms, this means ensuring the novelty and inventiveness of computer-implemented inventions. Let’s first consider, in order to get some perspective and idea of scale, how many patents exist that have something to do with Information Technology in general.

1.1.2.1

How Many Software Patents Are There?

As a first step all patents were scrutinized for the presence of a list of keywords (see Fig. 1.2) by searching the appropriate full-text patent databases. This serves to indicate whether a patent had anything at all to do with software or computers. The result is an upper limit to all patents that are broadly related to computer-based automation (see Fig. 1.3). The total number of patents granted by the EPO in all fields of technology was 40,000 in 1995. In 2007 the number was close to 60,000. The count of patents with some IT context amounts to about 17,000 in 2007. This is a little more than a

1.1 Patents and Software, Basics

9

Fig. 1.2 List of keywords

Fig. 1.3 Computer patents in Europe

quarter of all granted patents, which is not particularly surprising since IT is used in most technical fields. The keyword search was performed on all granted patents. The result reflects the fact that computers and software are being used in almost every technical field. The trend is the same both in Japan and in the USA (Fig. 1.4), with a computer being used in some manner or other in a quarter or more of all patents being issued. To gain more detailed information on how these computers are utilised and where software may play rather the central role, one has to use a different approach. Patents can be assigned to an industry or technological field using the International Patent Classification (IPC) system – as we noted earlier; so that all corkscrews are put in the same folder. The International Patent Classification (IPC), established by the Strasbourg Agreement 1971, provides for a hierarchical system of language independent symbols for the classification of patents and utility models according to the different areas of technology to which they pertain [21]. The classification represents the whole body of knowledge which may be regarded as

10

1 Introduction

Fig. 1.4 Computer patents in the USA

Fig. 1.5 The eight classification sections of the IPC

proper to the field of patents for inventions. It is divided into eight sections, A–H, the section titles being a very broad indication of the contents of the section (Fig. 1.5). Each section is further divided into classes, subclasses, groups and subgroups. Patent applications relating to “Computing, calculation, counting” are classified in the IPC class G06. Therein the most pertinent subclass is G06F (“electrical digital data processing”). This subclass contains patents where the main focus of attention is hardware and documents which concentrate on software solutions. It is impossible to reliably indicate classes which in combination would encompass all patents that centre on software. It is however possible to probe the general patenting behaviour for application relating mainly on software. The main group G06F9 refers to “arrangements for program control”. Subgroup G06F9/40 is titled “Arrangements for executing subprograms” (Fig. 1.6). It is thus particularly suitable for a statistical probe into the EPO’s treatment of “pure” software. It can be seen very clearly (see Fig. 1.7) that the number of applications being received by the EPO in subgroup G06F9/40 has been rising steadily for the last

1.1 Patents and Software, Basics

11

Fig. 1.6 Classification tree of G06F9/40

Fig. 1.7 Patenting in G06F9/40 at the EPO

decade. However, the number of grants issued by the EPO stayed low; it even dropped in 2004. The number of cases with a negative outcome on the other hand has increased steadily. In the US Patent and Trademark Office (USPTO) the classification which comes closest to G06F9/40 is probably that of the art unit number 717, which is defined as dealing with data processing, software development, installation and management (Fig. 1.8). Only granted patents can be shown because until very recently the USPTO did not publish all applications, but only granted patents. The curve shows the typical decline that followed the dot.com crash at the start of the century. Incidentally this hump can also be found in the applications filed with the EPO and the Japanese Patent Office (JPO), but it did not translate to granted patents in these two patent offices. At the JPO about a third of all applications in this field are granted (Fig. 1.9). The numbers available for the JPO can include some distortion because a deferred examination is possible. The time delay because of some cases being put on ice could be up to 7 years until 2001 and up to 3 years since. The relationship between filed applications and granted patents has thus to be interpreted with caution. The field of business methods and applications filed with these as their primary content deserve particular attention. In this field the technical content is sometimes

12

1 Introduction

Fig. 1.8 Patenting in art unit 717 at the USPTO

Fig. 1.9 Patenting in G06F9/40 at the JPO

very low, only consisting of the implementation of a business idea on a general purpose computer or network. Subclass G06Q refers to “Data processing systems or methods, specially adapted for administrative, commercial, financial, managerial, supervisory or forecasting purposes”. It is a good indicator of the EPO’s handling of methods for doing business (Fig. 1.10). In this field the grant rate is extremely low, only approximately 7% of all applications actually make it through the system and are granted. The level of negative outcome is very high and follows the curve of the applications in this field, with a shift of about 3 years; these 3 years simply represent the current pendency for processing applications in the field. Although directly comparable statistics for the USA are, again, not available, one can see from the curve of granted patents from art unit 705, which is the US-classification equivalent to the IPC G06Q, that the general trend towards an

1.1 Patents and Software, Basics

13

Fig. 1.10 Development of business methods in Europe

Fig. 1.11 Business method patents in USA; patents

ever-increasing number of applications in this field is unbroken (Fig. 1.11). At the JPO, attitude and behaviour towards such applications is similar to the EPO. The ratio of granted patents to patent applications is however higher in Japan (Fig. 1.12). So, to summarise, a little more than a quarter of all grants at the EPO have something to do with computing. Such patents can be found in all technical areas. For all fields where software plays a central role, on the other hand, the number of grants is very low, with the rate of negative outcome increasing over the last years. For files that have been classified in the IPC subgroup G06F9/40, which is most closely related to software innovation, the number of cases with a negative outcome has been steadily increasing while the number of grants stays low. Business method cases, which are classified in G06Q, are a peculiarity since there the technical

14

1 Introduction

Fig. 1.12 Development of business methods in Japan

content is abnormally low. Here only approximately 7% of all applications proceed towards grant. Why is the grant rate so low? What can be done to increase the chances of a particular application to proceed towards grant?

1.1.2.2

What Can Be Protected?

To get a patent, an inventor must describe his or her invention and in doing so demonstrate that: l

l l

l

The invention has to fall within the scope of patentable subject matter as defined by national law. This is different from country to country. At the EPO technical character is required, meaning that it is not merely an abstract representation of an idea. It is new. It involves an inventive step – meaning that it makes a (technical) contribution over the state of the art that is not obvious to anyone with a reasonably decent knowledge of the field. It can be used as part of an industrial process – meaning any practical application outside the spheres of purely intellectual or artistic endeavour.

If the invention meets all these criteria (and doesn’t fall foul of any of the other requirements of the patent law), then the inventor can receive a patent in exchange for a yearly fee. As a result of the patent being granted, the disclosure of the invention is made public. Each year a renewal fee will have to be paid, increasing with the duration of the patent protection. The patent right will lapse after 20 years or before that if the patentee stops paying the fees. Once a patent has lapsed, anyone

1.1 Patents and Software, Basics

15

can employ the technical teaching without entering into special agreements due to that patent. To safeguard the interest of a patent applicant who wants protection in more than one country, the Paris Convention on Priority (see Sect. 1.1.1 “History of Patents”) governs the so-called priority right. This avoids the necessity which would otherwise exist for an applicant to rush around the world, or to organise filing in all areas on the same day. The priority right belongs to the applicant and allows him to file a subsequent application in another country for the same invention within the priority period, which is 1 year for patent applications. When a priority is validly claimed, the date of filing of the first application, called the “priority date”, is considered to be the “effective date of filing” for the subsequent application. There are a number of possible pitfalls that could have an impact in different countries on the filing by an applicant of applications which somehow relate to software. They will be discussed in later sections of this book.

1.1.3

Other Intellectual Property Rights

An innovative idea or the result of intellectual effort can be protected by differing means, of which a patent is only one possibility. There are trademarks, copyright, design, etc. The underlying concepts of these rights, and thus the legal requirements and the protection granted, are different. When the World Intellectual Property Organisation (WIPO) was established in 1967 it produced a list of the subject matter protected by intellectual property rights (Fig. 1.13). The most common forms of industrial property rights (apart from patents) will be briefly explained below: A trademark in business is any sign which serves to distinguish the goods and services of one undertaking from those of other undertakings and over which the owner has an exclusive right. The trademark of a product or service can be synonymous with the branding and image of a company and may become an asset with monetary value in its own right. The main function of a trademark

Fig. 1.13 List of subject matter protected by intellectual property rights (WIPO)

16

1 Introduction

however is to identify a particular trade origin in connection with specific goods and/or services. Take, for example, a graphical user interface. If it shows a particular proprietary branding, it can be protected by trademark. Copyright, on the other hand, is a form of intellectual property protection which gives exclusive rights for a period of time in relation to an original work, including its publication, distribution and adaptation, after which time the work is said to enter the public domain. Copyright protection lasts, in general, 70 years after the death of the last surviving author. Copyright does not cover ideas and information as these exist in themselves, but only the form or manner in which they are expressed. This becomes somewhat crucial in the realm of programs for computers, as it means that it is not the general idea, i.e. the solution of a (technical) problem that is protected by Copyright, but rather the expression and implementation by this particular program code. In this sense it is similar to a poem or the script for a theatrical play. Writing a different program that has the same result as a pre-existing one does not offend or affect the copyright of the original program. Neither the look nor the function of a graphical user interface (GUI) would be protected by copyright, but only the code that was written in the computer language it was written in. The 1886 Berne Convention first established recognition of copyrights among sovereign nations. Under the Berne Convention, copyrights for creative works do not have to be asserted or declared; they are to be understood as automatically in force at the time of creation of such works. As soon as a work is written or recorded on some physical medium, its author is automatically entitled to all copyright in the work. A utility model is used to protect an invention, and is in some respects similar to a patent. Utility models are used more often for inventions that have a short commercial life or which relate to less technically complex innovations. The procedure to obtain a utility model is shorter and simpler than for a patent. The requirements for getting a utility model are usually less stringent than for a patent. In many countries only the “novelty” requirement has to be met, while the “inventive step”/“obviousness” requirement is not examined. The maximum term of protection is usually shorter than for a patent. An industrial design may be defined as “the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”, and so the look and feel of a GUI could possibly be protected as a design. The European Designs Directive (Directive 98/71/EC of the European Parliament and of the Council 13 October 1998) harmonised the requirements for registered design protection in EC Member States. Article 10 of the Designs Directive stipulates that designs should be given protection in blocks of 5 years, starting at their filing date and lasting a maximum of 25 years. The layout design or topography of integrated circuits can be protected by a specific intellectual property right. Integrated circuits are used in a vast range of products, from mobile phones to watches, cars and computers. Creating a new layout with all the associated problems of manufacturing the device is in general very expensive. These high costs are the main reason why layout designs were felt

1.1 Patents and Software, Basics

17

to need a particular form of protection. The Treaty on Intellectual Property in Respect of Integrated Circuits was adopted under the auspices of WIPO in 1989. Although the Treaty has never entered into force, its major substantive provisions have nevertheless been incorporated by way of reference into the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) treaty which was concluded in 1994. The sui generis database right is an intellectual property right which was specifically developed in order to accord the authors of database a form of protection complementary to copyright. The aim of this right, specific to databases is to protect any substantial investment, understood in either qualitative and/or quantitative terms, in any of the obtaining, verification or presentation of the contents of a database. In the European community, this right has been defined by directive No. 96/9/EC of 11 March 1996.

1.1.4

Some Spectacular Patent Cases in the Software Field

Patents in the software field are not hidden treasure. Since the topic of the patentability of inventions relating to computers has become a source of wide ranging and controversial discussion, many patents in this field have aroused public interest. A few exemplary cases may be taken in order to demonstrate the public interest. Amazon One Click The so-called “1-click patent”[18] became famous when Amazon used it against a competitor’s website during the Christmas shopping period in 1999. The US patent was granted on 28 September 1999, having been filed in autumn 1997. It covers an internet-based customer referral system, or what is commonly called an “affiliate program”. Amazon’s “One-Click” idea was directed towards the ability to keep a credit card on file with Amazon and make purchases by simply clicking a button on an item you want to purchase, rather than having to re-enter the payment details each time. On 12 May 2006, the USPTO ordered a re-examination of the “One-Click” patent, based on a request where an earlier e-commerce patent and an electronic cash system was cited as prior art. The United States Patent Office invalidated the broadest claims in a decision announced on 9 October 2007. The Patent Office found that the “prior art” (amounting to the pre-existing use of the technology involved) denied Amazon their claims of originality to their One-Click technology, and thus its patentable nature. The same application was also filed at the EPO [19]. The application EP98117261 is in fact a combination of two applications used to indicate priority filings in the United States, only one of which is the 1-Click patent. It was published as application EP-A-0 902 381. This first application was withdrawn before a final decision could be taken by an examining division. Before it was withdrawn however, two divisional applications were filed using the first application as a “parent”, and one of these divisional applications was granted as EP-B-0 927 945. The granted patent, which was concerned with claims directed towards a method

18

1 Introduction

and a program product for finding the postal address of the receiver of a gift, was then the subject of an opposition. The patent was then revoked in May 2008. This decision of the Opposition Division has been appealed and a decision of the Board of Appeal is pending. The second divisional application which arose from the original parent application was published as EP-A-1 134 680. It was refused in January 2007. This decision has also been appealed and a decision of the Board of Appeal of the European Patent Office is pending on that as well. BlackBerry NTP is a patent holding company, which license the patents they own, even though they do not, themselves, practice their patents through manufacture [31]. In 2000, NTP sent notice of their ownership of patents relating to wireless email technology and which they felt were relevant, to Research In Motion (RIM), the makers of the Blackberry telecommunications device, and offered to license the patents to them. RIM decided against entering into a license agreement and NTP brought a patent infringement lawsuit against RIM. RIM demonstrated a similar wireless email system before the court, alleging that this had already been known prior to the NTP invention. This would of course have invalidated the NTP patents. It turned out, however, that at the demonstration RIM was using a more modern version of the software that in fact did not pre-date NTP’s inventions, and this accordingly rather back-fired. The jury finally decided that the NTP patents were valid. Damages were set to $53 million and RIM was instructed to pay NTP’s legal fees, with an injunction being issued on RIM against infringing the patent. This injunction would effectively have shut down the BlackBerry system in the USA. RIM appealed and the injunction and other punitive measures were stayed. In arguing against the injunction, RIM’s attorneys stressed the public interest in keeping its service running. The US Supreme Court initially refused to hear RIM’s appeal, and there seemed to be good chance that the injunction, with its far reaching effects, would be enforced. The situation naturally then became quite awkward, because there were rather a lot of BlackBerry users in the US-government, with the US Department of Defense even airing their concern, stating that the BlackBerry was crucial for national security. Several attempts to negotiate a settlement between RIM and NTP failed, before RIM and NTP eventually announced in March 2006 that they had settled their dispute. RIM paid NTP hundreds of millions of Dollars in a “full and final settlement” of all claims. The settlement ended a period of anxiety for many of the more than 3 million BlackBerry users in the United States of America. This case was not an issue in Europe (other than by way of potential fallout with respect to the damage to the companies which may result) because none of the NTP patents had been filed, either at the EPO or at any national patent office in Europe.2

2

The US patents concerned were US6317592, US6272190, US6198783, US6067451, US5819172, US5751773, US5745532, US5631946, US5625670, US5438611 [31].

1.1 Patents and Software, Basics

19

Refac Refac Int’l v. Lotus Development Corp [20] illustrates the problems which may occur when filing incomplete or misleading evidence at a patent office (in this case it was the USPTO). The patent in suit, US Patent 4,398,249, concerns a method of converting a software source code program to object code. The patent examiner had originally rejected the patent application, stating that it lacked information sufficient to enable one of ordinary skill in the art to make and use the invention (a little like having too many missing steps in the instruction manual when assembling furniture). One of the applicants filed an affidavit that the application did contain sufficient disclosure to enable the invention. The examiner stuck with his rejection, indicating that the affidavit was filed by one of the inventors and that it was selfserving. The attorney of the inventors filed three more affidavits from people other than the inventors to the effect that the disclosed invention was enabling. As a consequence the examiner withdrew his rejection and granted a patent. Following grant, the patent proprietor then sued six software publishers, including Lotus Development Corporation, alleging that their spreadsheet computer software programs infringed the patent. During the course of subsequent litigation, however, Lotus showed that each of the individuals who had signed the affidavits was related to the inventors or to their company in some manner, and that these relationships had not been appropriately disclosed to the examiner. The district court found that this omitted information would have been significant in the examiner’s evaluation of the affidavits. It further found that the inventors submitted the affidavits to the PTO with an intention to mislead. Therefore, these affidavits were entitled to no more weight than the affidavit originally submitted by one of the inventors. The Court of Appeal for the Federal Circuit (CAFC) later affirmed the district court’s decision that the patent was unenforceable for inequitable conduct. Universal Shopping Centre for International Operation DE Technologies, a small Virginia firm, was awarded a patent in the USA (US6460020) for its “Borderless Order Entry System” in 2002, 5 years after it originally filed its application. A second patent (US6845364) followed in 2005. In view of its possible economic consequences for internet trading, the grant of the patent aroused considerable public interest and controversy in the USA. The invention can best be described as a “transaction system for facilitating computer-to-computer commercial transactions by integrating certain functions to enable international purchases of goods over Internet”. The system handles all aspects of international e-commerce. It translates prices into multiple currencies, and product descriptions into any number of languages. It calculates the necessary shipping, taxes and duties and creates all the necessary electronic documents for these formalities. DE Technologies accused the company Dell of infringing their patented invention in 2004. Losing a case such as this could pose a devastating financial blow to a computer maker with a business model such as Dell’s, which was on track towards doing about a third of its business via the Web during the year it was sued. In 2007

20

1 Introduction

the case was settled, when a federal district court judge in Virginia concluded that parts of the patent were too “indefinite” and granted part of Dell’s request to declare the patent invalid [25]. A patent application originating from the same US priority was also filed at the EPO (EP 98963827.5). The application was refused by an EPO Examining Division in November 2002, partly on the grounds that the invention related to a nontechnical business method and therefore non-patentable subject matter. In March 2003, the applicants filed an appeal against the Examining Division’s decision. In September 2006, a Technical Board of Appeal at the European Patent Office endorsed the refusal of this European patent application, filed by US company Ed Pool et al. (DE Technologies).

1.2

Overview of Patent Practices in the USA, Japan and Europe

Computer-Implemented Inventions (CII) is a hot topic in the patent world. The term “software patent” is usually avoided by those discussing the applications implicated because “software” does not have a universally accepted definition. John Tukey (Fig. 1.14),3 a Princeton University statistician came up with the word “software” to describe the programs on which electronic calculators ran, first using it in a 1958 article he wrote for American Mathematical Monthly [5]. Software is frequently understood to be a set of computer programs, procedures, and associated documentation concerned with the operation of a data processing system or to be information that may provide instructions for computers [2]. In this context “software” would rather lend itself to copyright protection. To avoid the wrong perception, namely that in general computer code can be patented, the term “software” is used with caution in the context of this book. There is an intense and continuing debate as to the extent to which patents relating to CII should be granted, or refused, and in either case, how this should be done. Important issues concerning software patents include: l

l l

l

3

Where the boundary between patentable and non-patentable subject matter should lie? How much and what kind of enabling disclosure is necessary? Whether an assessment of inventive step should follow the same principles as in all other technical areas, or some different ones? What are the major differences between JP, USA and EP?

Tukey is also credited in the “Annals of the History of Computers” as the person who, in 1946, coined the word “bit”, a contraction of “binary digit”, the term describing the 1s and 0s that are the basis of computer programs. Tukey suggested the shorter “bit” to computer experts at AT&T Bell Laboratories, where he was a researcher. “Bit” was easier on the tongue than the other possibilities they were considering, such as “binit” and “bigit”, so it stuck. Twelve years later, Tukey came up with the word “software” to describe the programs on which electronic calculators ran, first using it in a 1958 article he wrote for American Mathematical Monthly.

1.2 Overview of Patent Practices in the USA, Japan and Europe

21

Fig. 1.14 John Wilder Tukey (Princeton University Library) [32]

These are also the questions on which this book will focus. The big patent offices strive for improved quality [3, 4]. This includes co-operation with applicants to aid in their drafting high-quality patent applications which may better meet the requirements of the respective patent law, so that the likelihood of a refusal of the application may be reduced. In this book we are not so much concerned with the more formal reasons of why patent applications are refused, we are more interested in the technical and inventive content of a prospective patent. The Public does not benefit from meaningless and pointless applications, neither does a patent office and nor should an applicant. We want to address engineers who would like to know whether their idea has a chance to become patented. We however feel the need to emphasise again, and will do so repeatedly in this book, that for real case specific detail and help with filing an application at the patent office of your choice you will very likely need a patent attorney. We are not going to tell you to file an application, nor do we want to deter you from filing. What we aim to do is to show you which major things you need to do and where to exercise caution if you want to protect an idea. After all, patent offices will simply apply the law and their rules. One thing that we can say for certain is that you will definitely not get a patent if you do not file an application. If you do decide to file one, however, the information in this book might allow you to better assess the likelihood of success as well as the risk of failure and to affect these by steering the content you put in. The first patent ever granted which related to software, in the modern sense, was probably in fact granted in Europe. On 21 May 1962, a British patent application entitled “A Computer Arranged for the Automatic Solution of Linear Programming Problems” was filed. The invention was concerned with efficient memory management for the simplex algorithm, and could be implemented by purely software

22

1 Introduction

means. The patent, GB1039141, was granted on 17 August 1966. In the USA, patentability of software was not allowed by the Patent and Trademark Office throughout the 1970s, until the Supreme Court intervened and ruled in 1981 in Diamond v. Diehr [14] that a computer program may be granted a patent as long as it is used to represent real-world realities (e.g. a program that monitors and analyzes earthquakes). In the wake of the US Federal Circuit’s later decision, State Street Bank & Trust Co. v Signature Financial Group, Inc. [6], patent offices worldwide were flooded with applications for patents covering every sort of software and business method.4 Whilst this one decision cannot carry the full responsibility for this (any more than the dot.com bubble alone can), it played a part. Awareness of patents for business methods has been raised even further by some high-profile patent disputes – such as that involving Amazon.com’s patent for the 1-Click Internet ordering method [7] and the astronomical sums involved in claims and counterclaims.

1.2.1

Comparison of US Patent and Trademark Office, Japanese Patent Office and European Patent Office

All three patent offices test whether the subject matter is considered an invention in the sense of their respective patent law. For the EPO this boils down to the question of whether or not the subject matter of a claim shows a technical character. Questions concerning the limits of patentability of computer implemented inventions have been referred to the Enlarged Board of Appeal (EBoA) by the President of the EPO where it is pending as case G03/08 [12]. The EBoA is the highest instance of the EP-system. The USPTO and the JPO speak of statutory subject matter. In Japan, Article 2, paragraph 1, of the Patent Act of Japan defines an invention as “the highly advanced creation of technical ideas utilizing laws of nature”. In the USA, section 101 of the patent statute (35 U.S.C. 101) considers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof as eligible for protection. This has lately been qualified by a decision of the CAFC where it has been decided that a test concerning the presence of a machine or transformation is to be applied. This case is currently being reviewed by the US Supreme Court [1]. Although these approaches are not completely harmonized, they apply a similar concept, namely that patenting is limited to the measurable universe. This allows us in this book to come up with general advice on what information it would be advisable to include in one’s patent application. 4

Although State Street Bank paved the way, it only dealt with “a data processing system for managing financial services . . .”. The first case where indeed a method was examined by the Court of Appeal was CAFC 98-1338 AT&T vs. EXCEL [13].

1.2 Overview of Patent Practices in the USA, Japan and Europe

23

The three patent offices consider inventive step or obviousness as a further vital substantive point which is instrumental in the examination procedure. There are differences between Europe, the USA and Japan. In Europe there is the requirement that a technical problem needs to be solved by an invention in order for it to be granted a patent. This implies that the contribution which is being examined in order to determine its inventiveness (or lack of it) also has to be technical. In Japan and the USA, however, an inventive step may well lie in a non-technical field. In this book, the final decision as to inventiveness will be left open. The examples will be developed to a point where the only open issue should be the existence of an inventive step. There the presented cases will rest. The subsequent fate of such subject matter would then depend of course on the available state of the art and on the examination procedure of the respective patent office; but you would be in the ball-park. Let us have a more detailed look.

1.2.1.1

Patenting Practice at the USPTO

In the US patent law the patentability criteria are positively defined by the term as statutory subject matter in the patent law 35 U.S.C. 101.5 After its original institution by Thomas Jefferson, the US patent law has been rewritten twice, in 1870 and in 1952. During this latest re-codification it became clear that Congress was including an intention that statutory subject matter was considered to “include anything under the sun that is made by man”. This phrase is limited by the text of 35 U.S.C. 101, meaning that one may only patent something that is a process, machine, manufacture, composition of matter. Abstract ideas, laws of nature and natural phenomena have been found to be outside the four statutory categories of invention. “Manifestations of laws of nature” have been found to be “part of the storehouse of knowledge”, and should remain “free to all men and reserved exclusively to none”. Mathematical formulae (abstract ideas) have likewise been found to lie outside that which may be patented. A new mineral discovered in the earth or a new plant found in the wild is not considered statutory (patentable) subject matter. Similarly, Einstein would not have been afforded patent protection for his celebrated law that E = mc2; nor Newton one for the law of gravity. In fact, a novel and useful mathematical formula [26] is not going to have much success before the USPTO. In 1998 a decision by the Court of Appeal for the Federal Circuit (CAFC), State Street Bank vs. Signature [27], established the principle that a claimed invention was eligible for protection by a patent in the United States if it involved some

5 35 USC 101: “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”.

24

1 Introduction

practical application and, in the words of the State Street opinion, “produces a useful, concrete and tangible result”. Although apportioned considerable importance at the time, the principle turned out to be only temporary. The test was found to be inadequate by a later decision, issued in 2008. The CAFC’s decision in that case, In re Bilski [28], was that the “machine-or-transformation” test set out by the Supreme Court would be the proper test to apply. That decision has been used in order to clarify the guidelines for the handling of business method patents. Now, patent examiners and others evaluating whether a particular business method or other process is patentable must ask if the process (1) is tied to a particular machine or apparatus or (2) transforms a particular article into a different state or thing. The validity of the “machine-or-transformation” test is in the process of being reviewed by the US Supreme Court [1]. Limiting the claimed subject matter to a field of use is in general not sufficient to make an otherwise ineligible method claim satisfy 35 U.S.C. 101. This means the machine or transformation should impose meaningful limits on the method claim’s scope to pass the test. An example of a method claim that would not qualify as a statutory process would be a claim that lists purely mental steps. To then qualify as a statutory process, the claim would have to positively recite the particular machine to which it is tied, for example by identifying the apparatus that accomplishes the method steps, or positively indicate the article that is being transformed, for example by identifying the material that is being changed to a different state. Insignificant extra-solution activity will not transform an unpatentable principle into a patentable process, according to In re Bilski. This means reciting a specific machine or a particular transformation of a specific article in an insignificant step, such a data gathering or outputting, is not sufficient to pass the test [29].

1.2.1.2

Software Patents at the JPO [30]

Eligibility According to Article 2 of the Japanese Patent Law [23] a “statutory invention” shall be “a creative technical idea utilizing laws of nature”. The concept of linking the eligibility of subject matter to laws of nature can also be found in the definition of the term “Technizita¨t” used by the German Patent and Trademark Office [15]. To determine whether a software-related invention constitutes “a creation of technical ideas utilizing a law of nature”, the following points are relevant: Where information processing by software is actually realised by using hardware resources, the subject matter is eligible. In particular, subject matter is regarded eligible if it is defined by specific means which: – Link software and hardware – Are adapted to process data according to the intended purpose – Constitute an information processing apparatus or process of operating such an apparatus specific to the intended purpose

1.2 Overview of Patent Practices in the USA, Japan and Europe

25

A claim must therefore contain: – Input data (to the processing means) – A detailed description of the processing steps (performed by the processing means on the input data) – Output data (from the processing means) – Specific description of hardware resources (used by the processing means) [16] Where information processing done by software is realised using hardware resources (e.g. a CPU or storage) in the claimed invention it constitutes “a creation of technical ideas utilizing a law of nature”. When information processing equipment (machine) or the operational method particularly suitable for the purpose is constructed by concrete means in which software and hardware resources are cooperatively working so as to include arithmetic operation or manipulation of information depending on the said use purpose, the subject matter of the ensuing claim would be considered a statutory invention. Where information processing by software is not concretely realized by using hardware resources, the claimed invention is not considered to constitute “a creation of technical ideas utilizing a law of nature”. Inventive Step (Non-obviousness) [30] Having checked whether the subject matter of the claim(s) is new over the available prior art, the next requirement which has to be satisfied is of course that of an inventive step. Whether or not a claimed invention involves an inventive step is determined according to a judgement of a person skilled in the art could have easily arrived at a claimed invention based on cited art. This is done by considering what a person skilled in the art would do starting from the knowledge of the state of the art in the field to which the invention pertains. The examiner in the Japanese Patent Office has to: – – – –

Identify the subject matter of the claim Identify the prior art Identify the differences Determine whether an inventive step exists

It is interesting, and important to note as this forms a break from the European standpoint, that features which do not contribute to a technical effect are also considered. Such non-technical effects could be of economical or administrative nature. If an advantageous effect of the claimed invention over a cited invention can be clearly found in the description of the specification, etc., it will be taken into consideration in support of an affirmation of the involvement of an inventive step. Attempts are usually made in the field of software technology to combine methods or means already utilised in differing fields, applying them to other fields in order to achieve a particular objective. This is usually considered in Japan to be within the exercise of ordinary creative activity by a person skilled in the art. Inventive step is thus not considered to be

26

1 Introduction

present unless special circumstances exist (such as the existence of some remarkably advantageous effect or the removal of a considerable technical blocking factor). Effectively the first hurdle, i.e. the question whether the subject matter is statutory, is rather high, but for inventive step a non-obvious improvement in a non-technical area may well be accepted.

1.2.1.3

Patenting Practice at the EPO

The four key patentability requirements are summarised in Article 52(1) EPC.6 There are four “hurdles” which have to be overcome before a patent can be granted: l l l l

There must be an invention in a field of technology. The invention must be new. The inventions must involve an inventive step. The invention must be industrially applicable.

Is There an Invention in a Field of Technology? The term invention is not defined in the EPC, but Article 52(2) and (3), EPC gives a list of examples that are not considered to be inventions. These items are said to be excluded from patentability. Methods for doing business as such and programs for computers as such are included in the list. The qualifying expression “as such” clearly limits the scope of the exclusions. It demonstrates that the legislators did not want to exclude from patentability all inventions which include some program for computers aspects, or which involve methods for doing business. The term invention in conjunction with the so-called “exclusion provisions” is understood within the case law of the EPO as implying a “requirement of technical character” or “technicality” (translated from “Technizita¨t” in German), which should be fulfilled in order for the invention as claimed to be patentable [9]. Thus, “having technical character is an implicit requirement of the EPC to be met by an invention in order to be an invention within the meaning of Article 52(1) EPC” [8]. A method involving “technical means” is an invention within the meaning of Article 52(1) EPC [10]. This rather broad interpretation of the term “invention” then includes activities which are so familiar that their technical character tends to be overlooked, such as the act of writing using pen and paper. Needless to say, however, this does not imply that all methods involving the use of technical means will be patented. They still have to be new, represent a non-obvious solution to a technical problem, and be susceptible of industrial application [10]. The test whether subject matter exhibits a “technical effect” or has “technical character” is performed without any knowledge of the prior art. The technical character of an invention need not even be new. Many jokes revolve (sic) around 6

“European patents shall be granted for any inventions in all fields of technology which are susceptible of industrial application, which are new and which involve an inventive step”.

1.2 Overview of Patent Practices in the USA, Japan and Europe

27

patenting the wheel, yet no-one would doubt that it has technical character just because it is rather well known. Is the Subject Matter Novel and Inventive? The next important test is whether the subject matter of the claims is novel. This means that all features in combination must not have been disclosed together in a single document. After having examined whether the subject matter of the claim(s) is novel, the final condition of Article 52(1), EPC is that of the presence of inventive step. The test most commonly accepted and widely used in Europe for the evaluation of inventive step is the “problem and solution approach”. It was initially developed to ensure objective assessment of inventive step and avoid ex post facto analysis of the prior art where differing standpoints existed on how this should be carried out. In the context of this book, the “problem and solution approach” is useful because it clearly lays out the perception that the existence of an objective technical problem is a requirement, this being derived from Rule 42, EPC. The classical “problem and solution approach” was slightly adapted by Boards of Appeal for the examination of computer implemented inventions: (i) In a first step it is examined whether the invention shows a ‘technical character’. This is done without knowledge of any prior art. (ii) If there is a mix of technical and non-technical features (mixed type claim): (a) The non-technical aspects in the claim(s) are identified; (b) A requirements specification is derived from the non-technical aspects set out in the claims and the description so that the person skilled in the art of a technical field (e.g. an expert in computer science) is informed about the non-technical concept. (iii) The closest technical prior art is selected based on the technical aspects of the claimed subject matter and the related description. (a) If the closest prior art is so widely known as to be considered as common-place (e.g. computer network or general purpose computer), then no written evidence is necessary to prove its existence; (b) Otherwise: The closest documents describing the technical features are searched for. (iv) The differences from the closest prior art7 are identified. (a) If there are none, an objection under Article 54 is raised; (b) If the differences are not technical, there is no technical problem. An objection under Article 56 is raised; (c) If the differences include technical aspects: (I) the objective technical problem is formulated taking into account the requirements specification;8 the solution of the objective technical problem must comprise the technical aspects of the above identified differences; (II) If the solution of the technical problem is obvious to the person skilled in the art, an objection under Article 56 is raised; 7

Which is not necessarily a document, see (iii)(a). Where the 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 (Cf. T641/00 COMVIK [22]).

8

28

1 Introduction

It is notable that in this examination approach the non-technical aspects of the claims, in particular an aim to be achieved in a non-technical field, are used in the formulation of the technical problem [22]. One has to be careful however when posing the objective problem to be solved. The mere statement that “technical means for performing a mental act” are used, does not normally address any problem of a technical implementation, as it does not specify how the technical means really implement the mental act. A classic formulation which examiners are confronted with may be exemplified by “Determining the average age by average age computing means”. In such a case, provided the technical means per se are known (any computing means), the objection would probably be raised that no technical problem exists and that therefore Article 56 is not satisfied. If, on the other hand, it is specified in the claim how the mental act is to be implemented, the technical problem could then well reside somewhere in the implementation itself. What will then have to be investigated is whether the technical implementation of such a method is obvious to a person skilled in the technical art [24]. The Question of Technicality / Technical Character There is a variety of occasions when the examiner, in the process of examination, has to establish whether some features are technical. The term “technical” is not defined in the EPC. For the EPO, the following broad indications of what is accepted by the Boards of Appeal as technical in the context of software, and therefore also accepted in examination, may be given: Processing physical data is technical. Physical data may be, for example, data representing an image or data that represent parameters and control values of an industrial process. Processing which affects the way in which a computer operates (for example changes the operating system or the method of operation of a graphical user interface, saves memory, increases speed or improves security) is technical.

It is important to note that, e.g. the mere fact that a first program for a computer may be executed faster than a second program does not make it technical. Only processing which affects the way a computer operates in general (i.e. that which makes it faster for all similar applications) lends technical character to this kind of subject matter. As a later twist, in November 2008 the President of the EPO referred to the Enlarged Board of Appeal, a series of questions concerning the exclusion from patentability of programs for computers. The referral is pending under case number G 3/08 [12]. The referral is intended as an invitation to clarify not only when a claim as a whole falls under the exclusion, but also the circumstances under which individual features relating to computer programs can contribute to the technical character of a claim (in which case they are relevant for assessing novelty and inventive step).

1.3 Structure of the Book and Presentation of Case Methodology

29

Industrial Applicability An invention is, in general, held to be susceptible of industrial application if it can be made or used in some kind of industry. The term “industry” may be attributed a very broad meaning in this context., and in practice almost every human activity which is not directly related to the personal sphere of a human being is considered to be industrial.

1.3

Structure of the Book and Presentation of Case Methodology

We will look at a variety of different areas associated with software and computer implementation. All will be presented following the same methodology: For each area, examples will be given which increase in complexity. Each example represents a patent application. It begins with a description in which information is given which may be imagined to be part of the description of the fictitious patent application. It contains enough detail so that the whole case can be understood. This means that the technical and non-technical features are explained which are relevant for the version of the example being discussed at that point. The content of the description is then used in the examiners’ observations as fallback material, such as that which an applicant may call on, for discussion. It has to be assumed that no more information is available in the originally filed application. Then a claim (and sometimes varieties of claim) is listed where an attempt is made to formulate, in claim language, the content of the application as outlined in the description. The claims are the basis for the following observations by the authors and would be the primary point of discussion by an examiner. In the final section of each example, the manner in which examiners would look at such definition is summarised in examiner observations. Possible objections which might be raised by examiners, also in varying jurisdictions, are put forward. The chances of a patent being granted are discussed. If necessary, a supposed closest state of the art may be introduced and used in discussion of how the argumentation of inventive step (obviousness) may play out. The claims are always the basis for the discussion; the description is taken as a source of additional information. The fictitious patent applications in any one area are all based on a thread of a particular innovation type. From example to example more information is added or changed in order to affect the chances of getting a patent or to illustrate particular problems you may face. The areas considered in the following sections are: l l l

Business methods Administrative methods Digital rights management (DRM)

30 l l l l l l l l

1 Introduction

Database and database management system (DBMS) Payment/billing Graphical user interfaces (GUI) Simulation Games E-learning Medical Informatics Mathematical methods

References 1. See http://www.supremecourtus.gov/docket/08-946.htm; last visited 18 August 2009 2. Institute for Telecommunication Services; Glossary of Telecommunication Terms. http:// www.its.bldrdoc.gov/fs-1037/dir-034/_4956.htm. Accessed 07 January 2009 3. Recommendations for Consideration by the Incoming Administration Regarding THE U.S. PATENT AND TRADEMARK OFFICE, sponsored by the U.S. Chamber of Commerce, http://www.theglobalipcenter.com/NR/rdonlyres/e5txnmjhsn5mjbtvtazna33y3dimpz5cuxtgjeix4wix3dqpiy5domrryniqsbo6rr7xbe64tcijitq6hxnlts7u3xb/USPTOPatentProjectFINAL. pdf; last accessed 13 January 2009 4. Raising the Bar on Patent Quality, http://www.epo.org/about-us/office/annual-reports/2007/ focus.html; last visited 13 January 2009. 5. John Tukey; Coined the Words “software” and “bit”. LA Times, July 29, 2000, http://articles. latimes.com/2000/jul/29/local/me-61253, last accessed 6 March 2009 6. CAFC 96-1327 State Street Bank vs. Signature, http://www.law.emory.edu/fedcircuit/july98/ 96-1327.wpd.html, last accessed 6 March 2009 7. US5960411; EP published application EP0902381 8. Decision of the Board of Appeal T1173/97 & T935/97 Computer program product Reasons 4.1, http://legal.european-patent-office.org/dg3/pdf/t971173ep1.pdf 9. Decision of the Board of Appeal T931/95 Pension benefit scheme /PBS, http://legal.europeanpatent-office.org/dg3/pdf/t950931ep1.pdf 10. T258/03 Auction method/HITACHI; Reasons 4.6. http://legal.european-patent-office.org/ dg3/pdf/t030258ep1.pdf 11. Venetian Statute on Industrial Brevets (1474), Primary Sources on Copyright (1450–1900), eds. L. Bentley & M. Kretschmer, http://www.copyrighthistory.org; last visited 18 August 2009 12. Referral G3/08 to the Enlarged Board of Appeal of the European Patent Office; http://www. epo.org/topics/issues/computer-implemented-inventions/referral.html, last accessed 17 March 2009 13. CAFC 98-1338; see http://www.law.emory.edu/fedcircuit/apr99/98-1338.wp.html, last visited 26 May 2009 14. Diamond v. Diehr, 450 U.S. 175 (1981), http://supreme.justia.com/us/450/175/, last visited 26 May 2009 15. Decision by the German Federal Court of Justice Logikverifikation: BGH ref X ZB 11/98: “A process that involves – prior to the physical production – an intermediate step performed substantially with the aid of computers cannot be excluded from patentability on the grounds that it refrains from making direct use of controllable forces of nature if the solution seeks to promote the possibility of manufacturing technically workable products in a different manner by technical knowledge”

References

31

16. Presentation by Keiko KAWAKAMI and Yutaka OSAWA at the European Patent Office on May 16, 2008 “Obtaining Patents on Computer Implemented Inventions in Japan”: http:// www.miplc.de/cii/information/schedule/2008-05_MIPLC_CII-Kawakami_revised.pdf, last accessed on 26 March 2009 17. Harold C.Wegner: “Patent Harmonization on the pacific rim”, 1995, http://apli.org/ftp/pacificrim.pdf, last accessed 7 March 2009 18. US5,960,411 Hartman; Peri (Seattle, WA), Bezos; Jeffrey P. (Seattle, WA), Kaphan; Shel (Seattle, WA), Spiegel; Joel (Seattle, WA), Method and system for placing a purchase order via a communications network 19. EP Amazon application 20. http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=66704c14-1799-4bf295b1-11fb3b810c2d; last accessed 22 March 2009; see also http://altlaw.org/v1/cases/409473; last accessed 22 March 2009 21. http://www.wipo.int/classifications/ipc/en/;L last accessed 23 March 2009 22. T641/00 Two identities/COMVIK; headnote 23. Japanese Patent Law (English translation): http://www.wipo.int/clea/en/text_html.jsp?lang= en&id=2652, last accessed 26 March 2009 24. T38/86 Text Processing/IBM, Head note 25. http://www.vawd.uscourts.gov/OPINIONS/CONRAD/DEDELLMSJ2.PDF, last accessed 25 March 2009 26. Guidelines of the USPTO, last accessed 14 March 2009 http://www.uspto.gov/web/offices/ pac/mpep/documents/2100.htm 27. 149 F.3d 1368 (Fed. Cir. 1998), last accessed 14 March 2009, http://bulk.resource.org/courts. gov/c/F3/149/149.F3d.1368.96-1327.html 28. In re Bilski, 545 F.3d 943, 88 U.S.P.Q.2d 1385 (2008), http://www.cafc.uscourts.gov/opinions/07-1130.pdf, last accessed 14 March 2009 29. Guidance for examining process claims in view of In Re Bilski: http://www.uspto.gov/web/ offices/pac/dapp/opla/documents/bilski_guidance_memo.pdf, last accesses 24 March 2009 30. Examination Guidelines for Patent and Utility Model in Japan; Computer Software Related Invention: http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/1312-002_e.htm; last accessed 24 March 2009 31. http://en.wikipedia.org/wiki/NTP, _Inc., last accessed 24 March 2009 32. Princeton University Archives. Department of Rare Books and Special Collections. Princeton University Library

Part II

Chapter 2

Business Methods

Abstract One of the most evocative and negatively perceived areas in which patents have been granted in some regions is that of “methods of doing business”. While treatment of applications in some jurisdictions, notably the USA, has been positive towards applicants, this has varied over time. In Europe the atmosphere has remained largely sceptical towards the desirability and appropriateness of patent protection being given. At the EPO, case law in related areas has progressed through three main stages, namely the formative years, stretching from the late 1970s to the mid 1980s, through the years where data processing device implemented inventions were first noticeable as a sizable field, i.e. 1985–2000, and finally the period in which there was a rapid increase in numbers, in the late 1990s. This increase was linked to a clearly perceived decrease in quality of content of incoming applications. In the area of business methods, the ignition spark to the explosion in numbers was the State Street Bank decision in the USA. The interpretation given to that decision by many patent professionals and hopeful entrepreneurs was that absolutely anything could now be patented. This was linked to any idea to do with making money, and the common view seemed to be that Europe would have to follow the US lead. The fuel to the explosion was the belief that “doing business” had absolute priority, and the oxygen was greed. Normally this is not so unusual; greed is the engine of capitalism, when subject to reasonable controls it serves the Public rather well. In this case it would appear however that the control was wobbly. However, in Europe the patent system is less agile/temperamental than some might desire and others might fear. It is sometimes seen as slow-moving or oldfashioned and stability is rarely appreciated until the negative consequences of rash movement and counter-movement become apparent. In Europe there appears to be a general consensus, exhibited in a variety of ways, that an invention for which a patent may be granted, should be a technical invention. Slightly differing social programming then seems to make the British system prefer a somewhat helicopter view and “you can’t pull the wool over our

D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_2, # Springer-Verlag Berlin Heidelberg 2010

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eyes” mentality, while the German system takes the route of systematic serious consideration and evaluation of all parts at face value. These will be discussed in light of the examples, but may be summarised as follows; the helicopter view is, “so what if there is a computer there? The basic idea is simply a business method, so it’s excluded”, whereas the systematic view is, “there is a computer there . . . what it is doing is of no consequence, but it is there, so the total matter is not excluded, yet to use a computer to do stuff like that is obvious”. The former route has the value of being pragmatic and within the grasp of the layperson; it usually appears brutally sensible. In the early and middle stages of case law development it was generally followed, as it lay within the “contribution approach” methodology of the Boards of Appeal and so was readily taken up thereafter by the national courts. The latter, systematic, way however, has the value of carrying less risk of the baby being thrown out with the bathwater. It is to this “technical character” approach that the Boards of Appeal turned when analysing increasing numbers of cases, much to the distress of those national courts which may have less flexibility in amending their manner of working. Applications in the business method area range from vaguely worded desires to please customers to highly mathematical stock price estimating crystal balls. Following the US court decision “State Street Bank”, (in)famous for its “anything goes” nature, they frequently included absolutely no technical content at all. This set off an avalanche of refusals by the EPO and some national offices, due to what was considered an immediately evident lack of patentability. In light of the turbulence within stock markets starting in 2008, examples of patents and patent applications by investment houses for “better estimation of the risks and benefits of loans” and “leveraging stock values” do little to enhance the perceived value of a patent system. Such applications still regularly arrive on patent examiners’ desks and with these the question of level of an application as a whole, and how applications may be better structured, is of particular interest. A related matter should also be mentioned and clarified, namely the initial content of an application and how one should consider filing in regions with varying requirements. This leads to the need for information about how an applicant may or may not amend an application to add information. Within the context of this book, we are adding, from one level to the next, subject matter which changes, in our view, the probability of success of an application. It may not render it allowable against all ammunition and objections that an office may throw at such an application, but should reveal the levels of risk in shades of grey. Frequently, applications appear to have been drafted with no knowledge of, or regard for, the requirements of regions other than the applicant’s own. At times not even that. The classical example of this is when an application is drafted to US standards, in ignorance of protests which should be voiced by a European attorney, or perhaps simply over these. If you are an applicant or an attorney and you recognise this scenario, ask yourself; however much you trust your doctor and your car mechanic, would you ignore one’s advice over the other, no matter how good they are at their own jobs?

2 Business Methods

37

Do you really want to bear the costs of the car crash when the brakes fail or the possible side effects of taking the wrong medicine? If you are self-medicating or have decided to change the brake pads yourself, good luck; we hope this book is helping! In the US system it is often regarded as unnecessary or even detrimental to include technical detail which underlies the idea most sought after. In the present examples we will consider the idea of auctioning a commodity through varying information levels in order to arrive at the best overall price/throughput balance for the seller. A European attorney may be jumping up and down clicking his fingers, pleading for technical detail to be added to the application, in order to allow him some room for manoeuvre when later confronted with the objections he expects to receive from the EPO or other offices. If these details are not in the application (at least in the description) then the attorney will be facing some considerable problems later. It is somewhat difficult to argue that there is a technical invention involving how all the bits of a data processing device system handle the data in a very clever and inventive way when the author of the application thought the technical detail so self evident, uninteresting and inconsequential that it wasn’t worth writing in. This impression is compounded where the sales advantages, the philosophy behind the marketing idea and the names of the organisational units of the business plan conspicuously take up that space. These details are not a hindrance to the existence of a technical invention. That is an argument that an attorney at worst need only briefly present before the EPO, and perhaps at slightly more length before, e.g. the UK office. However an absence of the technical bits and pieces to allow an adequate specification of the implementation and the explanation of the technical invention felt to be necessary in the European system will constitute just such a hindrance. US applicants in particular frequently do not seem to appreciate a key EPC requirement linked to the first to file system, namely that the applicant cannot simply add later technical matter which goes beyond the content of the application as originally filed. Although an equivalent restriction exists in their own law (35 U. S.C 112, MPEP 2163.06, and indeed in Japanese law, though linked to unity of invention) it is perhaps less rigidly applied due to differences of emphases, however in Europe it is a cornerstone of the system. Although traditionally the application system in Europe has been more bilateral than in Japan, these two first-to-file systems have slowly aligned over the years, including the revision in Japan of the possibility of filing divisional applications in 2007. The possibility of adding content to an application must necessarily be quite narrow in a first to file system (if you think about it for a moment, it would render the whole idea sort of pointless otherwise). Somewhat obviously, and of great irritation when this is not understood – the more an applicant wants or needs to add something, the less likely it is to be a change which should be allowed! Accordingly, when drafting an initial application the applicant really should consider (a) accepting the professional advice that he is paying for (b) agreeing to such an application including not only the matter which is primarily interesting for one jurisdiction but also that which is interesting for others. This can be removed

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when entering purely regional proceedings, or simply “de-emphasised” though claim amendment and the direction of argumentation taken. To not do so is to semi-automatically condemn the application in some regions to irrelevance, uselessness or refusal. It is at least going to render the application and its processing more expensive and less effective in the medium- and long-term. To the examples; initially with wording quite typical in a large percentage of applications in the last ten years and which may at last become less frequent in the wake of consistent handling in Europe and Japan and the latest case law in the USA (which has attempted to tone down expectations that absolutely everything may get a patent).

2.1

Example 1: Method of Selling

2.1.1

Description

When a business wishes to sell a certain commodity, it can be problematic that customers with differing expenditure limits and levels of necessity of purchasing may be in the marketplace at the same time. The selling business is then in a position in which they are in doubt as to what price should be set. Too high and they may never find a buyer, too low and they may not make adequate profits over time. In order to overcome this they may employ an auction, perhaps with a “reserve” (a price below which they will no longer sell). This however may in turn result in competing buyers considering purchase at a price acceptable to the seller, but wishing to place differing “fringe” conditions (such as the purchase volume in parts or in total, insurance, legal “get out” clauses, delivery conditions, etc.) on the prospective purchase (Fig. 2.1). It is proposed in such a situation to hold a second level of auction in order to find the best set of conditions, including the basic price, such that the seller and a single remaining buyer arrive at the best possible set of conditions at which the buyer is prepared to enter into an agreement with the single buyer, thus reflecting the true market value and conditions of the commodity for sale.

2.1.2

Claim 1

A method of selling commodities comprising the steps of: (a) (b) (c) (d) (e) (f)

making available information about the commodities to potential buyers receiving offers from the potential buyers including conditions of purchase considering the received offers and conditions setting a final price and any acceptable conditions if a single potential buyer satisfies step (d), selling the commodity to that buyer if step (e) is not satisfied, reviewing the final price and conditions of step (d) and repeating step (e).

2.1 Example 1: Method of Selling

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Fig. 2.1 Method of selling commodities

2.1.3

Examiner Observations

It is to be hoped that only a few readers will not share the conclusion of the authors that there is little scope for hope in the European system for such a claim. Disingenuous suggestions that commodities are things, and associated arguments suggesting that, as things are being managed, there is a “real world” effect, are unlikely to bear fruit before most European authorities, including the EPO. A patent examiner is always at pains to look for what is actually being done. Here he will allege, with little danger of being incorrect, that all that is being done is a simple human trading transaction. That is then a business method with no alibi of technical character. Although in some national offices in Europe, such as the UK and perhaps Denmark or Poland for example, the logic may follow a slightly different path due to an alternative outlook on how to approach such subject matter, the outcome will probably be a communication which is quite brusque. Such differences in Europe are not of great consequence in practical terms to the applicant as the outcome of the examination is quite reliably similar. It may be that there is an objection as to base patentability “as such”, owing to there being no features at all considered to possess technical character, it may be that an authority “plays safe” and prefers to note that there is considered to be a lack of inventive step due to no technical problem or solution being present (the ultimate in negative problemsolution logic) or it may even be that the application is considered insufficiently disclosed for any technically skilled person to carry out (as there is nothing technical to carry out).

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The bottom line however, is that in Europe such a claim stands virtually no chance of grant and may even be refused for base lack of patentability. With regard to the specific example, the examiner in Europe may consider it impossible to carry out a meaningful search of prior art. If so, the applicant will receive a declaration of no search which takes the place of the search report (no, there is not a mechanism for a refund!). The decision to proceed in this way lies with the competent search examiner; it comes prior to substantive discussion with the applicant and is not, in itself, a matter for appeal. It does not imply that there will never be a search carried out. If it is considered later that a refusal with a high presumption of validity cannot reliably be written without reference to documentary evidence, it is incumbent upon the examiner to redress this in due time. If the applicant and his representative turn out to be magicians and turn the situation around, a search would, of course, also be necessary prior to any possibly contemplated grant. It should perhaps be noted that although no refund is foreseen when the applicant receives a declaration of no search in place of a search report, it is also the case that no fee is charged for this later (it is termed an “additional”) search, even when that which gave rise to this delay in the normal procedure may be considered unnecessary and outwith the control of the EPO. In the USA, although the applicant is unlikely to succeed, the application may be treated with a gravitas that some may find either surprising or alarming. It may be with some dismay that a common or garden member of the public reads apparently quite complex reasoning on the philosophical possibility of the physical nature of data during the analysis of the patentability of such defined matter, arriving at either acceptance or rejection of this, while wondering why the emperor is wearing no clothes. So let’s move the level of technical definition up a little. Following consistent and rather blunt refusals in Europe of such applications and a relatively negative stance in Japan, as well as some variation between the “anything under the sun” position taken initially by the USPTO and a later hardening of attitude following considerable criticism, most applicants realised that it would be a good idea to have at least some technical features. In the case of business methods there is almost always a computer involved, or the ubiquitous “data over the internet”. This at least provides a slightly lighter shade of grey.

2.2 2.2.1

Example 2: Method of Selling via a Network Description

Where a seller is negotiating with buyers for the sale/purchase of a commodity up for auction, it is disadvantageous that the parties must be in one place at one time in order for iterative transfer of information pertinent to complex negotiations to be transferred between them.

2.2 Example 2: Method of Selling via a Network

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Fig. 2.2 Method of selling commodities via a network

In order to remove this requirement, it is desirable that the parties may be in communication, despite geographically or logistically isolated locations. To allow this it is proposed to set up a network to allow the transfer of information between the parties, to store the information in a manner allowing retrieval and use of such data and to allow responses to be transferred over the network (Fig. 2.2). The network may be implemented utilising any data transfer protocol or telecommunications infrastructure. In this way an efficient flow of information, overcoming the traditional disadvantages and allowing removal of restriction in accessibility to markets and therefore higher movement of goods and profit levels is attained.

2.2.2

Claim 2

A method of selling commodities via a network comprising the steps of: (a) transmitting, via a network, information on a commodity to be sold to a plurality of potential buyers (b) receiving, via the network, a plurality of commodity information pieces, each commodity information piece including a preferred cost and a highest acceptable cost, from the potential buyers (c) storing the received information pieces for respective potential buyers (d) setting a cost (e) determining, using the received information pieces stored in step (c), whether there is any potential buyer who proposes a preferred cost equal to or higher than the cost set in (d) (f) if there is no acceptable buyer determined in step (e), lowering the cost set, and repeating step (e)

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2 Business Methods

(g) if there is more than one potential buyer found in step (e), determining whether there is more than one potential buyer for whom the cost set is less than or equal to the preferred cost such that a competitive state occurs using the auction ordering information pieces stored (h) if the competitive state occurs, increasing the auction price by a predetermined value (i) excluding the potential buyer who proposes an acceptable price lower than the increased auction price and specifying the other potential buyer or potential buyers using the auction ordering information (j) judging whether the competitive state occurs between the potential buyer or potential buyers specified in the step (i) (k) repeating the steps (h), (i) and (j) and determining the remaining potential buyer as a successful potential buyer when there is no competitive state at step (j) (l) if no competitive state occurs in step (g), determining the remaining potential buyer as the successful potential buyer.

2.2.3

Examiner Observations

The immediate tendency of the reader is to start “filling in the blanks” in such claim wording. The complete technical novice will read certain “technical sounding” terms and assume that there is something complicated going on. As there is some form of network and protocols are mentioned in the description it is quite natural that an initially imagined structure involves many technical features, controlling software, hardware and I/O details. However, when one takes a step or two back from the imagined system and contemplates that which is actually defined, one notes that in fact the sole difference between our example 1 (business method) and this one is that in the second version there is some sort of ill-defined network present. Assuming however that this definition is interpreted by the examiner, in light of the description, as implying the utilisation of a technical telecommunications network of some fashion (as opposed to a human relationship type network, which would be a deliberate misinterpretation, and thus ill-suited to the function of neutral examination), the first hurdle of the European system has been overcome. This first requirement is that there is some quantum of technical definition in the claimed matter, and it is satisfied by the mere presence in this claim of the network for data communication. Following the logic applied by the Boards of Appeal that even pen and paper utilised in support of a non-technical scheme give technical character, even this vague indication of the involvement of some means possessing technical character is sufficient to progress from consideration of lack of patentability to the wonderful world of novelty and inventive step. It is like getting into a night club via a loosely

2.3 Example 3: Automatic Method of Selling via a Network

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swinging outer door only to find a very large and quite menacing doorman just inside. It is possible that this absolute, and directly noted as very trivial, threshold may be rendered relative through a rapprochement between the case law on both sides of the Atlantic through the medium of the words “adequate specification”, echoes of which are to be found in mathematical modelling case law in Europe and inventive step consideration in the USA, or some other mechanism. At that point there may be a minimum dress code politely but firmly required at the outer door of the nightclub. We can however for now move on to add exactly some of those “imagined” technical details that were missing above.

2.3 2.3.1

Example 3: Automatic Method of Selling via a Network Description

Where on-line auctions of goods or services are undertaken, the necessity of participation of human operators results in considerable costs for participating businesses. The present application addresses the problem of presence of operators by introducing a hitherto unknown level of automation to multi-level auction processes, allowing the user to delegate the normal running of the auction to the data processing device system engaged (Fig. 2.3). The counterparts in the auction may or may not be aware of the automation level however they also may employ automated response means to arrive at systems which in mutual communication negotiate according to the rules preset to arrive at an outcome satisfactory to all parties.

Fig. 2.3 Automatic method of selling executed in a server data processing device

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2 Business Methods

It is furthermore of considerable advantage that the devices involved may follow a preset timing pattern in order to allow human intervention, or instead by choice or under preset circumstances may operate at their optimum efficiency to arrive at a solution to the technical problem of managing the information and processing of rules in a minimum of time and in a far more efficient manner than would be the case in a implementation without use of advanced technical means and knowledge.

2.3.2

Claim 3

An automatic method of selling executed in a server data processing device comprising the steps of: (a) transmitting information on a product to be sold to a plurality of client data processing devices via a network, said information including production pollution information, whereby each client data processing device represents a potential buyer (b) receiving a plurality of auction ordering information pieces, each including a preferred cost, a maximum price in competitive state, and preferred production pollution information for purchase of said product, from the plurality of client data processing devices via the network (c) storing the received auction ordering information pieces in the server data processing device for respective potential buyers (d) setting an auction price (e) determining whether there is any potential buyer who proposes a preferred cost equal to or higher than the auction price using the auction ordering information pieces stored in the server data processing device (f) if there is no potential buyer in step (e), lowering the auction price, and repeating the step (e) (g) if there is more than one potential buyer at step (e), judging whether there is more than one potential buyer for whom the auction price is less than or equal to the preferred cost such that a competitive state occurs using the auction ordering information pieces stored in the server data processing device (h) if the competitive state occurs, increasing the auction price by a predetermined value (i) excluding the potential buyer who proposes an acceptable price lower than the increased auction price and specifying the other potential buyer or potential buyers using the auction ordering information (j) judging whether the competitive state occurs among the potential buyer or potential buyers specified in step (i) (k) repeating the steps (h), (i) and (j) and determining the remaining potential buyer as a successful potential buyer when there is no competitive state at step (j) (l) if no competitive state occurs in step (g), determining the remaining potential buyer as a successful potential buyer.

2.3 Example 3: Automatic Method of Selling via a Network

2.3.3

45

Examiner Observations

The examiner is now faced with a more intricate set of considerations than before. He will seek to break these down to the business and technical but in this case it is not quite so easy. First he has the fact that although the data being handled is for a buying/selling/ negotiation system, which is essentially a business consideration, it is related to pollution related to production. This is of course then linked to many factors for the technically skilled person. If the pollution aspect has an effect in the real world then the business aspect may be linked to that. We live in a world where pollution “rights” are traded, taxed and penalised by some societies, yet these social and financial pressures are occasioned by the very real industries that produce the pollution and the very real technical apparatus that is required to scrub exhaust gases clean, reduce operating temperatures and develop alternative substances. To what extent does the disclosure affect the levels of pollution caused and how are they controlled? In the present example the answer is that there is little clue given. The examiner must therefore move on to the second possible area of interest to the technically skilled person and check how the data given to the system interacts with the computer network and processor units defined. As the dealing and processing of the data is still based on the business and administrative considerations involved, the answer is still negative. The system may have its component parts more systematically named, but the actual method performed is still essentially an auction. The final step of consideration is then to revisit the first aspect – namely data related to production pollution and check if there is any direct link between it and the data network and processing aspects. Here there is not. Having thoroughly checked not only the features defined and their interaction, but also the data being handled, the rules applied and the possible link to the purposive use of the system (that is, was there an adequately specified link to the aspect of pollution and any control of that pollution), and coming up blank, the probability is high that the examiner will form a negative opinion on the inventive step of the claimed matter, as there is no technical problem being addressed but rather an implementation of a business method with, at best, a passing concern about pollution as a business aspect. Whether the examiner will cite documentary evidence of such a network is neither certain nor, from a Patent Office’s point of view, material. Should a reference be considered necessary by the Office concerned in order to write a refusal of the application, then this may be done at any time by most authorities, assuming the applicant has had the right to reply to that refusal, as it does not alter the course already charted but merely adds resolution to the decision taken. Until this point the business method has looked decidedly negative. It is to be remembered however that the grey is getting slightly lighter. Just what does one

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have to do to move on to an in-depth discussion of inventive step with some opportunity of convincing the Office of the merits of the case?

2.4 2.4.1

Example 4: Automatic Method of Selling via a Network with Management of Power Production Description

In modern society, financial value has become multi-facetted, including the necessity of production not only according to monetary limits but also requiring producers and consumers to take responsibility for the environmental impact of their industry. Although in some cases legally enforced, pollution limits may change rapidly with developments in the level of impact knowledge, and carry other, less tangible costs than direct fines which may be imposed should pollution units contributed be exceeded. The “green credentials” of companies can be highly fragile and require constant supervision and care to ensure that they are not damaged through the purchase from third parties of products or commodities which contribute to an exceeding of targets, whether self imposed or regulatory. Accordingly producers of electrical power must respond to this need by recognising that information flow must be disseminated and made available to purchasing clients in order to allow not only those clients to reassure themselves that the power they purchase does not exceed their imposed limits, but also to allow the generators to operate at a maximum efficiency, in technical, production and economical terms, when accepting contracts to supply the commodity of power generation at any particular time. The technically skilled reader will appreciate that power loading and the associated pollution caused are interlinked and when considering multiple manners of generation ranging from fossil fuel and nuclear reactors on one end of the scale to wind generation and biomass usage on the other, the dynamic and interactive balancing of supply and demand characteristics and technical throughput of information has a considerable real world impact on the industrial landscape of how power is generated, distributed, its cost determined, sold and controlled in an iterative, integrated and interactive manner. Databases which were until now held on the control and behaviour of power plants must be seamlessly included not only in an archiving sense but the data streams utilised to allow constant management of these in cooperation with the customer and producers needs and restrictions. The effective control of the plant is therefore automated to within the constraints of the customer first, the producer second and ultimately the regulatory bodies. Naturally as the limits imposed are administrative they may, within the technical constraints of the plant and

2.4 Example 4: Automatic Method of Selling via a Network

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Fig. 2.4 Automatic method of selling

transmission infrastructure, be exceeded should this be in the interests of the controlling parties (Fig. 2.4)

2.4.2

Claim 4

An automatic method of selling for the commodity that is electrical power supply, and integrated with the management and production thereof, executed in a server data processing device, the method comprising the steps of: (a) transmitting information on a commodity, currently produced and for auction, to a plurality of client data processing devices via a network, said information including aggregated production pollution information related to the commodity, each client data processing device belonging to a potential buyer (b) receiving from the plurality of client data processing devices, via the network, a plurality of auction ordering information pieces, each including a preferred cost, a maximum price in competitive state, and preferred production pollution limit information, the plurality of auction ordering information pieces being for the intended purchase of the said commodity (c) storing the received auction ordering information pieces in a memory which is connected to the server data processing device, the storing being ordered for each of the respective potential buyers (d) setting an auction price based on historical price data based on previous auction outcomes; gathering in real-time current pollution production information from the electrical power production plants and projected pollution production information for those plants under projected increased loading

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2 Business Methods

(e) determining whether there is any potential buyer who proposes a preferred cost equal to or higher than the auction price using the auction ordering information pieces stored in the server data processing device and having preferred production pollution limit information at a level above that of both current and projected production levels (f) if there is no potential buyer in step (e), lowering the auction price, and repeating step (e) (g) if there is more than one potential buyer at step (e), judging whether there is more than one potential buyer for whom the auction price is less than or equal to the preferred cost such that a competitive state occurs using the auction ordering information pieces stored in the server data processing device (h) if the competitive state occurs, increasing the auction price by a predetermined value (i) excluding the potential buyer who proposes an acceptable price lower than the increased auction price and specifying the other potential buyer or potential buyers using the auction ordering information (j) judging whether the competitive state occurs among the potential buyer or potential buyers specified in step (i) (k) repeating steps (h), (i) and (j) and determining the remaining potential buyer as a successful buyer when there is no competitive state at step (j) (l) if no competitive state occurs in step (g), determining the remaining potential buyer as a successful buyer (m) altering the power production balance between the electrical power generating plant units at the lowest possible financial production cost while maintaining the pollution limit of the successful buyer.

2.4.3

Examiner Observations

Here the factor of pollution is now bound into the auctioning process. This in itself is not enough for some authorities, others may find it convincing. The gathering of such information is noted as real-time and the totality of cause and effect does require some thought from the person skilled in the art with a view towards how this would be done and the manner in which balancing of this type is achieved. The consideration of how production demand alters pollution levels is very clearly a technical issue, and the binding of the steering of demand for both a technical reason and a financial one is key to triggering some soul searching on which parts of the definition is of technical character and which not, and even whether such a division is appropriate. In the present case the examiner has little option but to consider all parts of the claim in depth, as they are so closely interrelated as to render any division contrived. Cost is not merely financial here; it is technical (in terms of exhaust, chemical, physical, etc.), social (quality of life surrounding production sites) and business-image-promotional (“green credential” advertising possibilities vs. being

2.4 Example 4: Automatic Method of Selling via a Network

49

slammed in the press as a “dirty company”). It may be that there are legal considerations whereby companies must remain within certain pollution limits or risk sanctions from government. This may even count against the hopeful applicant (after all, if there is a law to say you MUST take care of something, the seeking of the solution becomes obvious and should only standard technology be employed the “innovation” becomes self evident). It is here that variance in the analytical methods of varying jurisprudence in differing jurisdictions starts to risk differing outcomes. Were the reader to consider the main thrust of the invention to be marketing in financial terms of a commodity, it would be very easy to overlook the total load-balancing and pollution overhead control aspects of the total scheme. Decisions may claim that there is no difference in outcome and therefore differences in “tests” applied are inconsequential, however if there is no difference in outcome there would be no need for a difference in manner of arriving at it. In the US system this is unlikely to be a bone of contention for an application such as the one proposed, the system having long since passed the consideration of statutory subject matter and possibly having been granted at some earlier and less defined stage. At the EPO, full consideration would be considered appropriate due to the interplay of the clearly technical aspects and, due to the intimate relationship now created between these and those isolated earlier as so clearly only a selling idea, all the other bits too. The examiner will in all likelihood now go over to an in-depth search of the prior art in the areas of power production control, access in real-time to production data and control of this. The reader may note that in fact the area of concern has shifted in reality to plant control, the end effect of the technical considerations involved in the example. This is not uncommon in applications which start out with very woolly claims but more copious descriptions and which become more refined over the course of examination.

Chapter 3

Administrative Methods

Abstract Whilst the field of G06Q in the European system is frequently termed generically “business methods”, these are normally understood by the examiners mostly involved in this field, to relate to buying/selling type applications where auctions, marketing and trading are involved. A frequently intertwined application type is that of the administrative method. Such applications are, when “pure”, suggestions on how to organise paperwork, structure a business (in human terms and very much theoretically) or how to handle and process administrative data within a business flow.

In everyday terms one may consider the difference between a “business method” and an “administrative method” to be how to make money on one hand, and how to route the paperwork of tax forms on the other. More often than not there is a lot of disclosure and definition which relates to matters which are considered to be only of an administrative nature in the business method application (be it the control of inventory logging when selling something, or the specific order or format of communication between a buyer and a seller) however, occasionally, cases are directed only at administration. This area is where the possible limitations of the assertion that the merest presence of paper and pencil lends technical character to the totality of defined matter are most tested. The average reader will exhibit a certain level of scepticism about a logical engine that judges lack of patentability or not of an administrative method solely on whether a pen and paper are present. The reassuring safety net spread out, that human common sense is of course being retained, merely shifted to the consideration of inventive step, adds to this scepticism rather than alleviating it. If human judgement is to be trusted, then why not do this at the earlier point? The logic in defence of this way of proceeding can be explained as follows; there is an inherent danger in placing this common sense too early on in the procedure. First we should utilise formal logical tests and only at later stages reluctantly trust the vagaries of human intellect. In that way we are less likely to throw the baby out with the bathwater. D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_3, # Springer-Verlag Berlin Heidelberg 2010

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3.1 3.1.1

3 Administrative Methods

Example 1: Method of Data Gathering Description

When considering how information may be passed between authorities and individuals or companies, the applicant has realised the level of inefficiency occasioned by the duplication of effort in entering data which may be better either recorded in a different manner or taken from alternative sources. Conventional forms which have been hitherto provided have entry fields for the member of the Public to provide data related to themselves and the tax authority. Such (usually pre-printed) forms are frequently prepared with areas to fill in relating to the subject’s name, address and the reference number utilised by the tax authority for organising the processing of the returned form. This is highly inefficient for the user of the form and results in a form which is overly complicated and lengthy. When one considers that in order to send the form the data requested must have been known to the authority, the redundant entry of this is highly wasteful of paper, pencil and time of all concerned. The present application addresses this inefficiency through proposing that only the reference number utilised by the authority, entered once on the form, provides the sole necessary key to all of this information which is already known and obviates the need for wasteful and problematic repeated entry. A further problem realised by the applicant is that although correct data is necessarily held by the sending body (in order for the form to arrive) erroneous entry by the form recipient may cast doubt upon this and result in wasteful extra processing in order to clarify the issue (Fig. 3.1).

3.1.2

Claim 1

A method of data gathering by an entity which may be any of an authority, organisation or a company, whereby the data gathered is pertinent to a user who is already known to the entity and about whom data including first contact data including the user’s address, is already held under a user identifier, whereby: a paper form with multiple data entry fields for completion is sent by the authority, organisation or company to the user by way of conventional mail; the mail-piece enclosing the paper form, which may be integral with said form, is provided with the user address and a one use reference number; the form utilised has provided upon each page a unique identifier incorporating the one use reference number; the first data field on the form has recorded thereupon the reference number; the user identifier and reference number are held, related to one another, by the authority and allow retrieval of all fixed data held by the authority on the user, including any of name, address, previously returned data and notifications internal to the authority.

3.1 Example 1: Method of Data Gathering

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Fig. 3.1 Method of data gathering

3.1.3

Examiner Observations

What has been described and claimed is the use of an administrative index key, on a bit of paper. It is open largely to the sceptical reader to shake their heads at the manner of thinking that would propose that the fact that there is a piece of paper involved will suffice to render the matter of technical character overall. Strictly following the EPO Boards of Appeal approach however, it does. Although this may appear quite superfluous and overly trivialising to the reader, we are of course considering here the bottom end of the scale of technical definition. If we place the starting point for systematic, logical dissection of the claimed matter anywhere, it should be a recognisable point and not arbitrary; as there is no definable point on this scale other than the absolute end, then it is the one which has been taken. At least it is reliable. So let us say, for absolute security of reasoning, that the definition of the presence of paper is indeed of technical character, and that the provision of information on it is too (it must be rendered on the paper somehow). Going further, we may argue that the data on the paper has a particular function no less technical than a bar code of particular arrangement or a hologram on a bank card. Naturally all of these may be considered as presentations of information. We have at this point crossed the line to another “excluded matter”. This is quite common in administrative systems where the transfer, reorganisation and presentation of data is the ultimate motive, and provides a good opportunity to investigate briefly how this may be dealt with.

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The presentation of information in itself (i.e. “as such”) is excluded from patentability, just as computer programs or aesthetic creations are. That aesthetic creations may have a technical function attributable to them is however clear – the smooth curve of an aeroplane’s fuselage, the form of a ship’s hull or the flame front spreading through a combustion chamber, at the risk of becoming poetic, are perhaps rather good examples of where highly complex mathematics, engineering function and aesthetics meet. That there is a presentation of information involved in the creation of the form under discussion is therefore immaterial if some technical character can be attributed to it. As it is on a physical carrier then there must be some. That a logical consequence of this is that a presentation of information “as such” is pretty impossible may be taken to be reasonable. The provision of a key in order to ease data retrieval, where this is done in a very complicated, encrypted and technically clever way is of technical character. In dubio pro petitore; let us attribute some technical character to this more humble variety. So, through application of strict logic, we arrive back at the same simple argumentation as before but under a different Article, namely inventive step. As it is an administrative index key, written on a piece of paper, the technical advantages and disadvantages of this are very clearly obvious. The administrative advantages are readily evident as well, and the avoidance of further effort is a consequence of many things but any technical savings at that point are so far removed from the initial technical features as to be considered isolated from them. The manner in which the example would be treated by other authorities may vary. It has of course been abstracted and simplified to a considerable degree, yet many applications are filed each year around the world for such ideas. That they are all completely without success is hard to imagine, though it is to be hoped that such success is limited.

3.2 3.2.1

Example 2: Method for Assimilating Administrative Information for Setting up an Agreement Description

In communication between entities such as authorities, organisations or companies and individuals, there has existed great inefficiency in arriving at legally binding agreements. This is at least in part due to the fixed nature of pre-prepared standard forms and pre-printed standard paragraphs which are then presented to the individual, who then has little option but to trust in the entity and its legitimacy and honesty, and then sign without reading or understanding, or to engage their own capacity or hire someone else to analyse the agreement in full.

3.2 Example 2: Method for Assimilating Administrative Information

55

In the case of more complex undertakings such agreements may run to many hundreds of pages, though for a single individual even a quite simple contract may be overwhelming. Whilst the mass of text resultant from the use of such standard forms may appear comforting to the proposing entity, there remains a residual risk that by presenting unworkable, contradictory or overcomplicated conditions, any such agreement may be found unreliable by an investigating authority and, for instance in the case of financial agreements, damages may be assigned if loss has been suffered by the individual. In order to better manage the risk involved in arriving at such agreements, there is proposed a method of arriving, by way of mutual iterative consent, at a completed agreement (Fig. 3.2). The methodology of arriving at the agreement, as well as the non-redundant and pertinent structure of such an agreement, reduces the risk of such negative outcomes for the entity and may allow the individual a greater feeling of security and reduced costs in being able to sign the agreement without danger of misunderstanding. As further advantages, less paper will be necessary and less resources for printing the said agreement.

3.2.2

Claim 2

A method for assimilating administrative information to aid setting up an agreement including multiple sections: (a) asking questions about each section in turn (b) receiving answers about each section in turn (c) using said received answers to assess whether use of that section is appropriate in the agreement (d) for each section in turn, informing the answering party when it has been considered appropriate for inclusion and presenting it in isolation for consent before proceeding to the next section (e) when all sections have been considered, presenting the completed agreement to the answering party for authorisation.

3.2.3

Examiner Observations

Many longwinded and philosophical debates are held on which manner of analysis should be utilized when faced with a case such as this. It is argued that specific articles or paragraphs are more or less appropriate to be applied, definitions of terms are demanded and given or denied, however as engineers, it is quite clear that that which is defined is only a discussion. It is a discussion with some intention, but

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Fig. 3.2 Method for assimilating administrative information

nothing which is defined above would allow the reader to distinguish a field of technological implementation, let alone some adequate specification of the means employed in such an implementation. Even were the examiner to consult the description and pull it into the consideration of what the claim actually was seeking protection for, they would be at a loss to determine where any technical problem lay which would require an invention from the person skilled in their art, i.e. from any technical field. The supposition that “printing less paragraphs will save paper” is thin indeed to try to imply that there is a technical character of any kind to be considered implicit in the claim. Even when consulting the description, there is, furthermore, no technical definition of the means of communication between the parties. An examiner in any major office will probably be considered remiss were they to not object to the level of protection being sought in the above claim. In the USA it is (probably) not statutory subject matter as, following the logic of later case law the area of application of such definition would be overly broad due to the abstract nature of the claim and the paucity of definition of any specific parts needed.

3.3 Example 3: Data Processing Device for Assimilating Administrative Information

57

In this, some more recent US case law does seem to be building a bridge back to more solid ground for protection, having the counterpart of EPO case law decisions which require adequate specification and a lack of ambiguity where technical means may or may not be implied.

3.3 3.3.1

Example 3: Data Processing Device for Assimilating Administrative Information for Setting up an Agreement Description

When a large quantity of data must be collected, organised and be put in a form which is retrievable by an entity, difficulties arise through inefficient structuring of both the manner of gathering of this data, its storage and processing. The applicant has realised that by combining and selecting a specific structure to each step of the procedure, considerable savings can be achieved in processing overhead. This is then reflected in response times both on a human level and a technical one. When the data is stored in the same intuitive manner in which it was derived from the questioned subjects, no extraneous storage capacity is resultant, and the retrieval paths are simplified, resulting in a simplified retrieval query language (Fig. 3.3). The majority of fields in standard processing systems are often not populated, and upon finalisation of the recorded data they merely clog the system unnecessarily, which leads to less reliable retrieval results, as the user may erroneously believe that where a higher order field is blank there is no data recorded at a deeper level.

Fig. 3.3 Data processing device

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The rules utilised in the present invention result in the dynamic adjustment of the data structure in order to overcome these problems and provide a product which allows the user to quickly and efficiently arrive at a fully operational knowledge base.

3.3.2

Claim 3

A data processing device implemented method for assimilating administrative information to aid setting up an agreement including the steps of: (a) determining an appropriate agreement type from an initial query (b) based upon the agreement type, selecting an initial tree structure of questions to be asked (c) based upon the agreement type, selecting a template tree structure of database whereby the database structure has branches and data fields which are matched to the initial tree structure of questions to be asked and the possible answers (d) asking a first question (e) receiving a first answer or an indication of irrelevance (f) depending on the data input, populating the first level of data fields of the database or, if an indication of irrelevance is input, changing a flag associated with the appropriate branch of the database (g) completing the logical sequence of questions according to the initial tree structure of questions (h) a retrieval engine pruning step whereby the flags which were recorded in step (f) are applied to a set of rules for querying and retrieving data from the database to remove those where a flag is found (i) following completion of step (h) removing the data fields and branches of the database structure in accordance with the flags recorded in step (f) (j) performing automatically a plausibility check whereby all possible retrieval queries resultant from the application of the rules remaining are performed to confirm that no null returns occur and no data entry remains unaccessed.

3.3.3

Examiner Observations

Here we have the semi-automated gathering of data and the framing of an administrative idea in terms of its application in a computer environment. In technical teaching it actually does not differ considerably from the last example except suddenly, simply due to computers doing what computers are for and with no further computer scientist definition, we are firmly within the realms of a discussion about inventive step. The question which will constantly and consistently be asked is how this method operates at a technical level.

3.4 Example 4: Method of Arranging an Agreement

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Whereas the manager of a mid-sized company may well be quite impressed by the faux-technical terminology employed, it is however a definition with little basis in anything other than a transcription of an administrative idea to the equivalent parts of an electronic version. Few would be impressed by the foregoing method were it said that Bob from the tax office selected the correct questionnaire for asking people who all worked at a factory about their income. Where those questioned didn’t answer some of the questions, he removed the unused sheets from the booklet. When all of the questionnaires were returned he noticed that he had the same number of page 3s removed as booklets handed out. Clearly there would be little point in having a section in his office binder for page 3s, as there were none. Likewise, there would be no point in having that entry on his index. Unfortunately, many administrators are quite impressed by the fact that their way of gathering, storing and retrieving information has been carved in software and now runs on a computer. They are sometimes quite baffled by the terminology used to reflect the electronic versions of the acts that they carry out every day on paper and in their normal work processes. They may feel that there is some innovation simply in the fact that this system works in a way that they have not come across before in an automated system (it is why they got the programmer to create it for them after all). A feeling of if I needed it others must too may occur which then leads to the idea of applying for a patent. As the technical people involved may either be rather flattered and unwilling to explain that they have done nothing other than implement using a basic level of knowledge the administrative idea handed to them this is likely to go unchecked. Unfortunately at the latest when confronted by the repeated question “how?” the application will run into trouble. At that point the fact that money has been spent pursuing it may mean that there is a reluctance to admit that there was never much thought given to exactly what the technical problem addressed was, as this would lie, essentially, largely with the programmer. As a rule of thumb for seeking the real technical problem – if the prime driver for applying for the patent is someone with limited or no technical training, and outside a targeted and deliberate solutions provision environment, the innovation may well lie outside the technical domain. With that in mind, we can consider just such a solutions provision environment, namely that of mobile computing applications.

3.4 3.4.1

Example 4: Method of Arranging an Agreement via Encrypted Communication Channels Description

It has been known for some considerable time to arrange contracts and agreements via electronic communications networks. This has typically been done by a server providing to a client question and answer forms which are filled out at

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the client device and then returned in coded format, perhaps encrypted for security reasons, to the server, which then can either process this or return it to a further host device. Whilst this has always been quite acceptable for standard computer usage, modern users increasingly perform complex computing actions on their mobile devices, communicating with the internet over high speed downlink packet access links or similar. Most such modern devices can have running, at the same time, streaming music, multiple internet sessions, message checking applications and, in all cases, voice call capability. In turn this places considerable strain on the bandwidth availability of the mobile telecommunications data links and service degradation, especially in poor reception areas where connection may become sporadic. In response to this it would clearly be desirable, wherever possible, to minimise this strain and to reduce the high concentrated throughput that would be necessitated were the encrypted data transfer incurred by the utilisation of website download of agreement and form data in direct analogy to the traditional network usage, yet the applicant is unaware of any application which takes these technical constraints into account when proposing a way of allowing the user to access or be accessed by a system for arranging contracts and agreements in a secure fashion (Fig. 3.4).

Fig. 3.4 Method of arranging an agreement

3.4 Example 4: Method of Arranging an Agreement

3.4.2

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Claim 4

A method of arranging an agreement between an entity and an individual whereby: said method is performed between, on the side of the individual, a portable handheld device with telephonic capability and, on the side of the entity, a host computer and whereby the host computer and the portable device are communicating in part wirelessly over a high speed data network such as HSDPA and accessing the internet via a server connected to the cellular telephone network, the method including the steps of: (a) transmitting from the host to the server a full set of data fields necessary for data entry (b) at the server, sending a test signal to the mobile device in order to assess the data transfer rate applicable to and from the device, given the current network load conditions (c) at the server, dividing the set of data fields into logical blocks, encrypting these and sending the blocks one at a time to the mobile device, with a delay between the blocks which is variable (d) at the mobile device, decrypting and processing each block in turn, encrypting the data for return and sending it (e) at the server, assembling the encrypted responses by the mobile device and increasing or decreasing the delay between blocks sent according to the rate of return (f) whereby the server, upon return of the last block, returns the entire collection of still encrypted response data to the host.

3.4.3

Examiner Observations

The examiner is perhaps now thinking in technical terms. He is considering the manner in which HSDPA (High Speed Downlink Packet Access) organises packets anyway, how the servers which connect the mobile telecommunications network transfer data between the two systems and considering if what is said in the claim is really anything other than a reflection of any smart-phone browser accessing an email service. However that is just the point. The considerations being applied are technical ones and thus very firmly rooted in inventive step. It is now highly unlikely that it will be considered to refuse such a claim without documentary evidence. Even were the claim to recite (in distorted terms) the standard use of HSDPA, the examiner would – at the latest when challenged – be obliged to cite at least a textbook in support of his analysis. Although the claimed matter is based on a very basic idea (don’t feed a small child big portions, they can’t eat it all at once and process it safely without being ill),

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if this has not been applied to such a system in this manner before, the mere assertion that it is obvious would be open to the accusation of ex post facto analysis. An objection which may still be applicable in the European system, though not in the USA, would be that what is proposed is a mere circumvention of the technical problem of data processing capability of the small device and the throughput of the network through adaptation of the administrative requirement to send the form data in one unit and return the response data in a similar manner. This in current example may not be appropriate, even if this were an administrative aspect; it nonetheless requires implementation in technical terms at both the server and the mobile device. The applicant is at least at the point of in-depth analysis and prior art based discussion.

Chapter 4

Digital Rights Management

Abstract Patent applications comprising aspects of Digital Rights Management can be found in numerous fields of the International Patent Classification scheme (IPC), e.g. in G06F21/00 (Security arrangements for protecting computers or computer systems against unauthorised activity), H04L9/00 (Arrangements for secret or secure communication, which also covers encryption), H04N7/16 (Secrecy systems; Subscription systems). The issues pertaining to patent protection as discussed in the following three examples are directed at DRM schemes in a business context, IPC G06Q30/00 (Commerce, e.g. marketing, shopping, billing, auctions or e-commerce).

4.1

Example 1: Digital Content Promotion Method

In a digital world, electronic content can be copied and distributed with almost no transaction cost. Although several music labels and online music retailers seem to be abandoning the sale of DRM (Digital Rights Management) protected digital music, service and content providers are still developing new DRM schemes for selling and protecting premium digital content such as digital music, video on demand, e-books and software.

4.1.1

Description

Service and content providers are faced with the problem of attracting new customers in a market for digital goods which is becoming increasingly saturated. Promotional offers for digital content are offered via numerous and varied marketing channels, whereby the most successful platform for advertising, promoting and selling digital content is based on remote Internet server websites of online content D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_4, # Springer-Verlag Berlin Heidelberg 2010

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Fig. 4.1 Digital content promotion method

retailers. Potential customers need to be able to actively access these Internet portals and discover that digital content which is available. Service and content providers are, however concerned that potential customers may never become aware of their digital content due to it being hidden somewhere in a fog of data in a world suffering from information overload. The proposed innovation (Fig. 4.1) resides in distributing premium content in a protected form, such that potential users may be made aware of the existence of the digital content or service in a comfortable manner, needing only to agree to the provider’s terms and conditions in order to be allowed access to the content. In conjunction to this, a third party, in the form of a DRM entity, is in charge of regulating the access rights to a wide variety of digital products and services for several content and service providers. The DRM entity appears to the user as being provider independent. This is intended to foster trust and propensity to consume. The above business model is considered to be profitable even if only a limited number of all potential users finally pay for the content or service.

4.1.2

Claim 1

A digital content promotion method, the method comprising the following steps: (a) a content provider providing encrypted digital content to potential users (b) a remote DRM entity being in charge of managing digital rights to access the digital content (c) the user requesting access to the digital content from the content provider

4.1 Example 1: Digital Content Promotion Method

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(d) upon reception of the user request, the content provider transmitting an access request notification to the DRM entity (e) the DRM entity transmitting a license agreement and payment request to the user wherein (f) if the user accepts the license agreement and fulfils the payment procedure, the DRM entity transmits the digital access right to the user via a secured communication network (g) the encryption of the digital content and the type of digital access right being based on symmetric key cryptography.

4.1.3

Examiner Observations

A patent examiner in a patent office which requires the solution of a technical problem as a prerequisite for the occurrence of an inventive step, when faced with a description and claims of such an abstract nature, would start by assessing which parts of the information given relate to technical features and aspects of the claimed invention. The reader will have noticed that the subject matter of the claim comprises the transmission of digital rights over a secured communication network. Consequently the presence of at least two communication devices connected through a network is implicit. This is a technical infrastructure and therefore the claim has technical character. However, the content promotion method and the description focus on the business idea of attracting new customers by promoting digital content. Although the claim contains a very basic DRM concept for protecting digital content and for exchanging access rights over a secured communication channel, the DRM concept is also very abstract and the problem and solution of the method lie rather in the business field. The content providers expect to solve the business problem by making the digital content available in a protected form before a potential user or subscriber has agreed to the terms and conditions. The communication between the parties involved (user, content/service provider, DRM entity), at the level which is disclosed, requires nothing more than the presence of commonly known communication devices. Promotional concepts for distributing protected content to consumers and managing digital rights do not solve prima facie any technical problem and must be ignored in the assessment of inventive step in any patent system based on the technical solution of a technical problem. This however does not prevent such a promotional concept being incorporated into the problem which objectively has to be solved. In this, it may be considered to be legitimate to consider the business

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problem to be a non-technical specification within a request to the skilled person to automate the concept. A realistic problem to be solved in the present example can be taken to be the automation of the promotional concept in some way. The technically skilled person would consider the implementation of non-technical concepts in a generic communication system to be part of his daily work. Such a skilled person, presented with the above problem and non-technical specification, would execute the given task by implementing the digital content promotion concept in a generic communication system by employing standard programming techniques and would thus arrive at the subject matter of claim 1 without an inventive step. Consequently, the notional patent examiner considering inventive step only to lie in technical matter, such as one at the EPO, would object to lack of inventive step. A non-EPO patent examiner may well argue in a different way but will probably come to the same conclusion. It should be noted that the transmission of the digital access right in step (f) of the promotional method does not yet imply the transformation of the protected digital content into unprotected digital content (and without that step, the consumer is not likely to be terribly happy, however this is not a requirement of any patent system we know of). Furthermore the digital content is not bound to any particular device. Consequently, at the USPTO, claim 1 might be regarded as in any case being too abstract for eligibility of patent protection. At the Japanese Patent Office, the subject matter of claim 1 may be adjudged not to meet the requirements for patent eligibility since the examiner may object that it is not clear how software is concretely realized by using hardware resources. As the reader may thus realise, the grounds for not accepting claim 1 might differ from one patent system to another, without a very different end result for the applicant or the Public.

4.2

4.2.1

Example 2: Computer-Implemented Content Promotion Method Using Encryption Description

A common business strategy of service and digital content providers consists of offering basic services at a low initial cost in order to attract and retain a high customer base. Due to intense business competition, the profit which may be made on such basic services is trimmed back to a very low level and providers then turn their attention to trying hard to find potential customers within that customer base for premium content or services with a premium margin. Since the contact details of the potential premium customers are known, the providers build on direct marketing campaigns through personalised messages or Internet pages containing direct references (URL) to encrypted digital content (Fig. 4.2).

4.2 Example 2: Computer-Implemented Content Promotion Method

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Fig. 4.2 Computer-implemented promotion method

One embodiment of such a marketing campaign comprises a telecom provider offering a new premium service via e-mail, SMS or on the provider’s Internet server.

4.2.2

Claim 2

A computer-implemented content promotion method for providing digital content to a user, the method comprising the steps of: (a) a content provider publishes encrypted digital content on a content server (b) a DRM server manages the digital access rights to the digital content (c) the user is provided with a URL referring to the encrypted digital content on the content server (d) a user terminal sends an access request and user identifier (ID) to the content server (e) upon reception of the user request, the content server forwards a content request notification message and the user identifier (ID) to the DRM server (f) the DRM server transmits a license agreement, authentication and user terminal public key request to the user terminal

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(g) the user terminal transmits a license agreement message, user identifier (ID) and user terminal public key (utpk) to the DRM server (h) the DRM server transmits an encrypted secret password (utpk[password]) to the user via a secured communication network, and (i) the user terminal decrypts the encrypted secret password with the user terminal private key and then accesses the premium content with the decrypted password, wherein (j) the digital content is encrypted with a symmetric cryptography key, and the secret password is encrypted with public key cryptography.

4.2.3

Examiner Observations

The second DRM example is built on the same business reflections of those content and service providers who were seeking new customers by distributing protected digital content as in DRM example 1. The subject matter of claim 2 encompasses more explicit technical features such as user terminals, server computers and wired or wireless networks. Going beyond the very generic idea of using an abstract DRM scheme, the protection of the digital content in this example is achieved by using basic DRM elements such as public key cryptography and secret passwords. The subject matter of claim 2 clearly has a technical character. The technical aspects in the present claim however do not go beyond a commonplace computer networked computer system and (a-)symmetric cryptography, both of which are notorious in e-commerce and digital rights management. The invention of claim 2 is in the field of digital content promotion and involves various aspects which are of legal, commercial, and technical natures. In its specifics though, the overall structure defined in this method claim seems to be a result of mainly commercial considerations regarding promotion and distribution of digital content. Patent protection of an invention, in most legal systems around the world, however, requires that the technical contribution be novel and non-obvious over the prior art. A scheme of how to distribute access keys and digital content or passwords over a computer network seems to result from a pure business concept for buying or licensing digital content. An inventive contribution, in European terms, to the prior art may only reside in a specific combination of such features for solving a technical problem. The scheme for promoting protected content to consumers and managing digital rights does not solve, prima facie, any technical problem and in, e.g. the EPO must be ignored in the assessment of inventive step. Such a scheme can, as in DRM example 1, be described in the problem to be solved and thus may be considered to be a non-technical specification which is the basic information given to the skilled person when he is tasked to automate the concept in some way.

4.3 Example 3: Client–Server DRM System

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A realistic problem to be solved can be regarded as the automation of the promotional scheme. The skilled person would consider the implementation of non-technical concepts in a generic networked computer system to be part of his daily work. The skilled person presented with the above problem and non-technical specification would solve the problem by implementing the digital content promotion concept in a generic networked computer system by employing standard programming techniques and would thus arrive at the subject matter of claim 2 without making an inventive step. Furthermore it is considered common knowledge to use separate servers for providing encrypted digital content and managing digital access rights. Of course the appropriateness of such a dismissal of the input by such a skilled person is set, in many ways, not by the examiner, but rather by the adequacy of the specification of the application – i.e. by the applicant themselves. The consequence with respect to claim 2 however is that the patent examiner at the EPO would here again object to lack of inventive step. The USPTO patent examiner may this time consider that in step (i) the content is transformed from a protected to an unprotected state and/or that the content is bound to the user terminal. Therefore claim 2 could overcome a first hurdle of patent law, namely that of eligibility, but would still have to fulfil the further requirements of the US patent system. It is however probable that this may not be predictable given the variation in US case law over time with regard to the inclusion of non-technical features in considerations of obviousness, thus claim 2 might also be regarded as not involving an inventive step. A situation similar to that of the EPO would be expected at the JPO where, even if the subject matter of claim 2 would sufficiently disclose how the software is concretely realized by using hardware resources, the comparison with available prior art would show lack of inventive step.

4.3 4.3.1

Example 3: Client–Server DRM System Description

The historically rapid reduction in the cost of memory and smart cards with large storage capacities allows service and content providers to distribute devices with hidden partitions containing encrypted premium digital content like music, e-books, videos or software to their customers. When the customer uses his device, he is, at a certain point, informed about the existence of the premium digital content that is available for optional activation. If the customer wants to use such services or content protected by digital rights management, he must then agree to the provider’s terms and conditions. As soon as the authorisation through payment or licensing is undertaken, the customer is permitted to unlock the hidden partition and thus gain access to the premium digital content.

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An embodiment of a DRM system following the marketing idea described above may be envisioned in the context of a telecommunication provider and embodied in devices as appropriate. A telecommunication customer places an order for a new telephone, together with a basic voice call service. He receives the new mobile phone and, naturally, along with it, a SIM card. However, instead of providing the customer with a standard SIM card having a very limited storage space, the telecommunication provider ships a SIM card which has a large storage capacity, consisting of several partitions wherein at least one partition, which is hidden, contains premium digital content. The user/subscriber then discovers, or is informed of, the existence of premium services/premium content via a web-like interface. The web server is however not a remote server but rather is running locally, on the user’s mobile device (Fig. 4.3), following the OMA standard for Smart Card Web Servers (SCWS). The digital rights management system employed then allows the telecommunication provider to limit the use of the digital content pre-stored on the SIM card, even once it is unlocked, to subscribers to its own services and/or to single mobile terminals. Premium digital content can thus either be pre-stored in the hidden partition of the secured memory space or can be downloaded into a secured partition of the memory if updates are available on the date of first activation. An example of such a premium service may be a navigation service intended for a mobile phone that already has an in-built GPS-receiver. A detailed map of a city, differing from the city of residence of the user/subscriber, can then be made available as free pre-stored content, wherein the map covering the city of residence or a bigger geographical area as well as the necessary routing software are only

Fig. 4.3 Client–server DRM system

4.3 Example 3: Client–Server DRM System

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available as premium digital content. This premium content, initially inaccessible, is also pre-stored by the service provider in the hidden partition of the SIM card in the mobile terminal or in a separate memory module that can be inserted into the mobile telephone. Once the user has paid for the service or agreed to the subscription license, the premium content is unlocked from the hidden partition. If an updated version of the premium digital content becomes available, a secure connection between the smart card web server and a remote content server can be established and the content can be downloaded. Via the web-based user interface the user can either then discover further premium services that can be either unlocked or downloaded, or be prompted towards these over time.

4.3.2

Claim 3

A client-server DRM system for distributing premium digital content to a mobile user, the system comprising: (a) a content provider server promoting encrypted premium digital content (b) a DRM server managing the digital access rights to premium digital content (c) the user being provided with a URL referring to the encrypted digital content on the content server (d) a mobile user terminal sending a request for premium digital content and an identifier (ID) to the content server (e) upon reception of the user request, the content server forwarding a content request notification message and the identifier (ID) to the DRM server (f) the DRM server transmitting a license agreement, authentication and public key request together with a secret key 1 (sk1) to the user terminal via a first wireless communication channel (ch1) (g) the user terminal transmitting a reply encrypted with secret key 1 (sk1) comprising: a license agreement response, identifier (ID) and user terminal public key (utpk) to the DRM server via (ch1) (h) the DRM server transmitting an encrypted secret password (utpk[password]) to the user terminal via a second wireless communication channel (ch2), and (i) the user terminal decrypts the encrypted secret password (utbk[password]) with the user terminal private key (utpk) and then accesses the premium content with the decrypted password characterised in that (j) the identifier (ID) being based on a hash value of the serial number read from the memory module containing a hidden partition (k) the content server being implemented as a smart card web server (SCWS) executed in a further secured memory section of the mobile user terminal (l) the encrypted content being preloaded into the hidden partition of the secured memory module in the mobile terminal before delivery to the user

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(m) the DRM server remotely updating or replacing the encrypted content in the hidden partition via a secured transmission using a symmetric session key (ssk) pre-shared between the smart card web server (SCWS) and the DRM server when updates or new services are available at step (d).

4.3.3

Examiner Observations

The subject matter of claim 3 comprises technical aspects which go beyond a general purpose computer networked system. While a client–server based communication system may in fairness be taken as being known, the average reader may agree that a content server, comprising encrypted digital content within the SIM card of a mobile telephone is less common than a normal Internet server in a remote network node despite a superficial similarity of intended operation. The individual technical aspects and the DRM elements (public/private key, password, hash functions) of claim 3 appear to be known in the art, but the specific combination of features in claim 3 results in a synergistic technical effect. It should be noted that the simple existence of a new SIM card in a very specific field of technology does not automatically render obvious all uses of this new SIM card structure or hardware. Instead the examiner will be interested in what it is being used for and how the various “grey area” aspects combine and possibly result in what can be recognised as an inventive step. The potential customer is able to discover new services and encrypted digital content in an offline manner. By application of the digital rights scheme, the functionality of the mobile phone can be extended after distribution to the customer and without performing either large scale hardware modifications to the mobile telephone, physical add-ons or even indulging in large data downloads. The combination of all aspects may be considered to go beyond a simple aggregation of features. In contrast to the first two DRM examples, the claim in DRM example 3 cannot be implemented as a simple automation of a business idea involving basic DRM constructs, because the specific interrelationship between the serial number of the memory module, as input for an encryption function, the partially encrypted data exchange over at least two different communication channels as well as the unlocking of a hidden partition in the memory module for enabling new mobile terminal functionality cannot be regarded as an obvious automation. Naturally, it is possible that such a DRM system was already known before the filing date of the patent application in DRM example 3 and that this may lead to continued detailed objections on grounds of obviousness. After establishment of the prior art, the EPO patent examiner would normally apply the problem solution approach in order to aid his determination as to whether or not the claimed DRM system solves a technical problem.

4.3 Example 3: Client–Server DRM System

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Accordingly, although the use of public key cryptography and the exchange of secret passwords are notorious in the field of DRM, and despite the fact that the overall aim of a service or content provider is always connected to the maximisation of their revenue, the combination of features proposed results in the technical effect of unlocking a partition of a memory module, making available digital content and extending the functionality of a mobile terminal. Only the third DRM example can thus be regarded as a good basis for a patent application, overcoming the hurdles of technicality, patent eligibility and obvious automation. Still, it has to fulfil all of the other requirements of the respective patent systems in force and these will to varying levels apply their own criteria and thresholds for that which they may consider obvious. Of the major offices, it should be noted that even the subject matter of claim 3 could be considered by an examiner as failing to meet the requirements of patent eligibility at the JPO, as they may apply differing considerations to the links to the hardware elements claimed. As always when on the borderline, the reader is strongly recommended to consult a knowledgeable professional representative for advice.

Chapter 5

Database and Database Management System

Abstract In this set of examples, we will try to set out the criteria which an inventor should bear in mind when attempting to decide on the appropriate type of protection to apply for when his invention relates to a database. We will first define what a database and a database management system are and then the different possibilities to get intellectual protection for these two objects. The focus will be, via three examples, on patent protection for database management system, database intellectual protection being normally covered by copyright and specific rights (sui generis). The importance of the content of the original patent application in order to increase your chances of obtaining a patent even if the patent examiner is at first negatively minded will also be discussed.

Definition and Use of Database and Database Management System A database is a structured collection of records or data that is stored in a computer system. The structure is achieved by organizing the data according to a database model. Well-known database models are, amongst others, the relational model, the hierarchical model and the network model. In order to manage a database effectively, a computer has to be provided with a suitable database management system (DBMS), implemented most usually in software. The determination of the detail and type of such database management systems is normally dependent upon the database model in use. The most important task of a database management system is to allow users, as well as other software running on the computer or network and requiring access to the database, to store and retrieve data in a logical way, and to structure the search for data entries when necessary. We will make a distinction between DB and DBMS applications for the purpose of this book. We will use the term DB when we consider the entity in which raw data is stored, and the term DBMS when such raw data as may be stored in such a DB has to be queried, changed or more generally manipulated by a user.

D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_5, # Springer-Verlag Berlin Heidelberg 2010

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Intellectual Property Protection of a Database Databases are normally protected by copyright. The protection afforded by copyright extends to an automatic protection without any registration necessary on your part with regard to the content of your database. Accordingly, if the improvement which you wish to claim relates only to the content of a DB, it is rather pointless in most cases to file a patent application, because in the majority of patent systems around the world, you will automatically have almost no chance of having a patent granted, as copyright is already foreseen as the appropriate protection. Although the law-maker may appear idiosyncratic at times, usually there is some method in the madness; it would simply be illogical to deliberately provide multiple legal protection means, when that would obviously result in conflict in the courts, with cases between owners of slightly different matter but differing protection rights being unnecessarily fought out. Some countries have however developed special types of intellectual protection for database in acknowledgement of its existence as technologically based matter between patent and copyright. The best example of such a sui generis right is in the European community, with DB protection being defined in Directive 96/9/EC dated 11 March 1996, on the legal protection of databases. This European Union Directive harmonized the treatment of databases under copyright law in Europe, and created a new sui generis right for the proprietor of databases. Others countries, such as the USA, have developed similar special legal protection mechanisms for databases. Now: In view of these readily available and cheap copyright and sui generis protection mechanisms, should you (indeed must you?) forget patents as a way of protecting the investments made in your database systems? Well, not necessarily, because if the improvements you have proposed lie in some new method for storing data and the interaction with the hardware needed in order to achieve this, then filing a patent application is to be recommended. For example, if you find a new way to control the components of the computer to store data in a manner with reduced use of memory space and succeed in doing so in a non-obvious way, then the rewards which you may reap with a granted patent may be considerable. Another example of a situation where filing a patent application may be recommended is in methods of structuring data in the DB such that the DBMS will, independently of the nature of the data, retrieve the requested information more quickly. A good rule of thumb in order to help you to decide if copyright or sui generis is the only way to protect your DB, or if applying for a patent may be a sensible option, is to check if your improvement is dependent on the content of the DB or not. If what has been invented is that grouping some data together in a database is very useful for some purpose or other, then copyright or sui generis are probably the appropriate possibilities you have to protect your invention. If, on the other hand, you have invented a new method to store data, such that the new DB needs less

5.1 Example 1: Simultaneous Access to a Database

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memory space than the old DB, independent of the nature of the data stored, then filing a patent application may make sense. In any case, if you are in doubt concerning the type of protection you can have for your idea, we can only recommend that you check with a specialized lawyer, and get advice on how to adopt the best protection strategy for it in various countries for which you may need cover. At this point we must also remind the reader, should it be necessary, that protection of databases, content and management systems has a strong geographical and cross-jurisdictional dependency due to positioning and access over the internet. Intellectual Property Protection of a Database Management System A DBMS is actually more likely to gain protection under patent law than a DB, because such systems are more related to the internal running of a computer as opposed to being mere content. For example, they relate to the way data is transferred between the components of a computer or computer network, or to the nature of interaction with the user, for example in the case of a Structure Query Language (SQL). Should the DBMS relate more to the realm of interaction with a user, then the same principles apply as for patentability of a graphical user interface (GUI). Therefore, if your bright idea relates to the way the user interacts with a database, especially in terms of input on the screen via user controls and how the data is presented on the screen, then we would advise you to refer also to the examples in this book on protection for GUIs (see Chap. 7, GUI). However if your idea for improvement lies more in the field of the internal running of a computer system, specific consideration must be given to, and care taken in, the formulation of the claims such that the definition of your invention does not run foul of the examiner. Through the examples which follow, we will try to render the problems you may encounter evident. The patent applications which are filed relating to databases or database management systems are normally classified in class G06F17/30 (Information retrieval; Database structures therefore) of the International Patent Classification (IPC). Even if the IPC has only one class for DB and DBMS subject matter within it, it is worthwhile noting that this class contains more than 100,000 patent applications from around the world filed prior to 2009. Naturally, the non-patent prior art on such matter is similarly massive in numbers and highly diverse in terms of origin and type of disclosure.

5.1 5.1.1

Example 1: Simultaneous Access to a Database Description

The invention relates to database retrieval systems for retrieving data from its position stored in a database. More particularly, it relates to a system for retrieving

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Fig. 5.1 Method for retrieving data from a database

data from a very large database which can be accessed simultaneously by a plurality of different users, who may be active in either retrieving data or updating data in the database (Fig. 5.1). Normally, the task of updating the data held in a database is carried out at a time when activity regarding that database is low, typically during the night, however in worldwide networked systems it is no longer possible to find a time with particularly low activity. In such systems, for example, it may happen that a user based in Belgium tries, during what is for him day-time, to retrieve information, and that he is impeded in this by the fact that the particular information concerned is being updated or completed by a user based in USA during his night time. It is impossible to completely avoid updates of data being carried out at times when other users may try to retrieve the same data. It may happen that the final result of the query made by the Belgian user does not correspond to the latest state of the data, thereby giving a misleading result, or it may happen that the American user has his attempt to update stopped or impeded because the query of the Belgian user blocks his access to the file. In order to solve the above mentioned problem, the present invention consists of the following: If a query sent by a first user is made on data which is currently being updated by a second user, then the query is postponed until the update is finished. A message is then sent automatically by the system to the first user in order to inform him that the query is postponed. The first user can then decide to cancel his query and to retry the same query after a moment or two, or to let the system automatically send him the results once the update is finished. With the present system, a result is provided to the first user only when the update is finished, and thus guarantees the validity of the answer, furthermore the second user’s update process to the database can continue without being blocked by the query of the first user.

5.1 Example 1: Simultaneous Access to a Database

5.1.2

79

Claim 1

A method for retrieving data from a database on a central computer system which comprises a database which can be accessed simultaneously by different users via separate computers for the purposes of either retrieving or updating data characterised in that: (a) when a first user sends a query to retrieve data which is simultaneously being updated by a second user, then (b) the query of the first user is postponed such that the second user can, without any disturbance, continue the updating task to completion, and (c) the first user is sent a message, automatically generated by the central computer system, informing him that his query has been postponed and will be carried out later on an updated data set.

5.1.3

Examiner Observations

The problem you may experience with such a claim and description is that there is a lack of explanation as to how the different elements of the technical system, the database, the computers of the users and the connections between these elements are interrelated and also a lack of detail as to which technical modifications a skilled person would have to carry out in the technical system in order to realize your invention. For some patent offices, according to their practice, the level of information given in the above example may be sufficient and, depending on the prior art documentation which would be available to the examiner, the grant of a patent is a possibility. For other offices, in particular the European Patent Office, the examiner may raise reasoned objections, either: (a) That a person skilled in the art would be left in a situation where he does not know how to carry out your invention, because you did not explain how to realise it in technical terms and, as you did not give at least one concrete example of such a realisation, the invention is not sufficiently disclosed or (b) A person skilled in the art, in this case a technical specialist on database management, would, automatically and without any necessity to resort to inventive skill, carry out your invention at the level it is disclosed once he has been made aware of the non-technical administrative idea underlying it, namely to postpone the query and automatically send a message informing the first user of this. Regardless of which line of objection the examiner chooses to follow, you will have difficulty arguing successfully against him, for the following reasons:

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If the examiner starts with objection (a) (lack of disclosure) and you reply that a person skilled in the art knows how to realize your invention even if not disclosed in the patent application, then you are automatically putting yourself in the firing line of objection (b). The logical retort to your attempt to extricate yourself from objection (a) is: If it is so evident to technically realize your invention that you feel you do not have to describe it, surely this means that it is self-evident and therefore obvious for a person skilled in the art to realize your invention in the manner you wish to protect . . . If the examiner starts with objection (b) (the invention is not inventive, i.e. is obvious) and you reply that the implementation is not THAT easy and that inventive skill would be needed in order for the person skilled in the art to implement it, then you are automatically putting yourself in the line of objection (a). If it is not immediately evident how a skilled person would implement your invention, and you do not disclose either the detail required or an example of implementation in your patent application, does this not implicitly mean that your application lacks disclosure? You may consider trying to overcome these two objections by amending your application in order to add the necessary technical disclosure detail, such as a technical implementation. HOWEVER, according to the EPC you are NOT allowed to add new subject matter after the filing date of your application. In conclusion; with such a claim and description, and according to the practice of his office, a patent examiner may grant you a patent, depending on the prior art available to him, or he will probably raise a rather base objection, an objection that does not need to be based on the teaching of a prior art document but is rather due to the lack of disclosure or lack of inventive step of your patent application. The point we are making here is that if you once get into the loop of basic obviousness, lack of disclosure and the inability to amend to get out of it through the application being of insufficient technical “depth”, it is unlikely that you will escape from it.

5.2

5.2.1

Example 2: Simultaneous Database Access with Time Management Description

The invention relates to database retrieval systems for retrieving data stored in a database. More particularly it relates to systems for retrieving data from a very large database which may be simultaneously accessed by a plurality of different users, intent either on retrieving or updating the data held in the database (Fig. 5.2). Normally such updating of data in a database is carried out at a time when activity of users is low, typically during the night, however in worldwide connected systems it is no longer possible to find a time with such low activity based on geographical factors.

5.2 Example 2: Simultaneous Database Access with Time Management

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Fig. 5.2 Method for retrieving data from a database with simultaneous access

In such systems, it may for example happen that a user based in Belgium tries during what is, for him, day time, to retrieve information, but that part of this information is being updated or completed simultaneously by a user based in USA, during what is, for him, night time. It is no longer possible to avoid updating data in a database when other users are trying to retrieve that same data. It may be that the final result of the query made by the Belgian user does not correspond to the latest state of contents which should be in the database, giving a false result, or it may be that the American user is confounded in his attempts to update the contents of the database because the query by the Belgian user blocks his access to the file. In order to solve the above mentioned problem, the present invention consists of the following: A user, who may wish to update some data content of the database, is allotted a certain fixed time to carry out this task, for example 15 min. During these 15 min, the system will block and shield the database’s use as a result of any query from a different user if the query is related to the particular data being updated at that time. The user will be informed that, for maintenance reasons, that his query will not be processed immediately. He is requested to enter his query again after 15 min or informed that his request will be stored and then processed automatically by the system after 15 min. More specifically, the user wishing to update the data has first to specify which data he needs to update and how long he predicts that the update will take. If a different user transmits a query to the database, the system will then also cross-check in case the data concerned is under update. This is done by adding an index table to the database. According to the presence, or lack of it, of a data entry in the corresponding index in the new table, the system will recognize if the data is at that point in time undergoing an update process, and the time projected for carrying out the update process.

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If no such entry is found, the query will be carried out and the results transmitted to the user. If an entry is found, the system will notify the user that the query will be processed later. When the proposed system is put in place, the user who sent a query will not be provided with information which may be erroneous, and the user updating the data can carry out this task any undue disturbance.

5.2.2

Claim 2

A method for retrieving data from a database comprising a database which can be accessed simultaneously via computers by different users either for retrieving or updating data, characterised in that: (a) when a first user wants to update some data, he has first to specify which data is concerned and the time he needs to carry out the update (b) then, the system will link an index in an update table which is part of the database to the data to be updated, the index including the necessary time for carrying out the update (c) when a second user sends a query, the system will first check if the data requested by the query is linked to an index in the update table (d) if it is not the case, then the query will be processed and the result provided to the second user (e) if it is the case, the second user will automatically be informed that his query cannot be immediately processed for updating reasons and a waiting time before the query will be processed will also given.

5.2.3

Examiner Observations

An examiner who would not raise a base objection as discussed for the first example is unlikely to raise such an objection in this second one. However it may be the case that an examiner who has such base objections for example 1 will not be able to argue in quite the same manner for example 2, because there is a basis for a technical solution, provided in both the description and the claim. More specifically, the introduction of a new table, a new index, and a new link are defined, and the interrelation between these new elements and the rest of the system is also defined, however loosely. Therefore the present example does have a limited sufficiency of disclosure, and, as a specific solution has been defined, the examiner will have to decide if that particular solution is new and inventive. By way of a conclusion, we can say that for example 2, the decision to grant a patent will be totally dependent upon the prior art that the examiner is given or finds, and will depend on the outcome of any resultant objections raised during the examination of the novelty and inventive step of the subject matter defined. It is

5.3 Example 3: Simultaneous Database Access with Automatic Time Management

83

hopefully not too much of a disappointment to the reader that the authors acknowledge that the assessment of inventive step can never be anything other than subjective and vary from patent office to patent office. No matter how many tests and ways of analysing this requirement, the concept of “obvious” remains very delicate. Let us consider, just for fun (patent examiners find it where they can . . . ), some hypothetical prior art documents. If the documents available disclose a database with an update table having entries such as last update, update type and the name of the user who updated the data, but does not disclose that this update table is used in order to decide if a query can be carried out or has to be postponed then, as an applicant, your inventive step argumentation will be based on the assertion that the reliability of your system is increased due to the fact that this difference will allow you to reassure the requesting user that the answer given is correct. This argument will probably be accepted by the majority of patent offices, such that you could expect the patent application to proceed to the grant of a patent. In particular, increasing the reliability of a system via technical means is considered, at least at the European Patent Office, as solving a technical problem and this will normally facilitate the path to a grant. So much for one set of hypothetical art. If however the prior art discloses a database with an update table which is checked in order to decide if a query can be carried out or has to be postponed, but does not provide information on the time needed to carry out the update, then your inventive step argumentation will be based on the fact that, with your improvement, the user will be informed of the waiting time. As already specified, with such an argument the grant of a patent will be somewhat dependent upon the particular patent office’s practice. At the EPO, the examiner will probably object that informing the user of a waiting time does not solve a technical problem and may well take the position that adding information about the waiting time is an evident option which does not solve a technical problem, is obvious and therefore non-inventive. In conclusion, if we compare examples 1 and 2, giving in example 2 a concrete example of a technical implementation of your improvement increases your chances considerably of attaining patent protection in some countries.

5.3

5.3.1

Example 3: Simultaneous Database Access with Automatic Time Management Description

The invention relates to database retrieval systems for retrieving data stored in a database. More particularly it relates to systems for retrieving data from very large databases which may be accessed simultaneously by a plurality of different users, intent either on retrieving or updating the data held in such databases.

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Normally such updating of data in a database is carried out at a time when activity of users is low, typically during the night, however in worldwide connected systems it is no longer possible to find a time with such low activity based on geographical factors. In such systems, it may, for example, happen that a user based in Belgium tries during what is, for him, day time, to retrieve information, but that part of this information is being updated or completed at that same moment by a user based in USA, during what is, for him, night time. It is no longer possible to avoid updating data in a database at the same time as other users are trying to retrieve that same data. It may be that the final result of the query made by the Belgian user does not correspond to the latest state of contents which should be in the database, giving a false result, or it may be that the American user is confounded in his attempts to update the contents of the database because the query by the Belgian user blocks his access to the file. In order to solve the above mentioned problem, the present invention consists of the following: A solution to this problem is known from example 2. The goal of the present patent application is to improve the system of example 2. The solution proposed in example 2 works perfectly if the different elements of data stored in the database are not interdependent. For instance if you want to know the value of a certain data element stored directly in the database, you will request it, the system will check if that particular data is being updated and true to its purpose the system will accordingly provide you with the value either immediately, or at least after a moment. However, if your request were rather more sophisticated, relating to combinations of data from interrelated parts of the database, one leading to the next through calculation, it might be that at the outset of processing the request the system does have sufficient information on hand to immediately recognize that some of the data needed is currently undergoing an update procedure. We are then back to the original problematic situation where either the first user may be provided by a misleading and/or incorrect answer, and/or the second user is blocked in his update task. There is therefore a need to improve the system of example 2 by checking more precisely whether the processing of a request will require direct or indirect access to data being updated. That is done by the following technical arrangement and then a technical arrangement is described in steps (g)–(i). With the system proposed in the present application, the user who has sent a query will not be provided with information which may possibly be incorrect or misleading, and the user updating the data can perform this task without any undue disruption (Fig. 5.3). Note to the reader: the introduction of steps (g)–(i) in the description is optional but highly recommend if you file a patent application in Europe for the reasons given in the following.

5.3 Example 3: Simultaneous Database Access with Automatic Time Management

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Fig. 5.3 Method for retrieving data from a database

5.3.2

Claim 3

A method for retrieving data from a database comprising a database which can be accessed simultaneously via computers by different users either for retrieving or updating data, in which: (a) when a first user wants to update some data, he has first to specify which data is concerned and the time he predicts will be needed to carry out the update (b) upon such specification, the system will link an index in an update table which is part of the database, to the data to be updated; the index including the necessary time for carrying out the update (c) upon receipt of a query by a second user, the system will first check if the data concerned by the query is linked to an index in the update table (d) if the result of (c) is that it is not the case, then the query will be processed and the result will be provided to the second user without delay (e) if the result of (c) is that it is the case, the second user will be automatically informed that his query cannot immediately be processed due to the reason of ongoing updating, and in addition the length of the delay until processing of the query can occur, will be given whereby the method is characterised in that, (f) during the check of the query in step (c), the act of checking is extended to ensure that all data, which is directly and indirectly requested by the query, is recognized (optional but highly recommended at least for Europe) and this recognition is achieved by features

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(g) table which . . . (h) a comparison made between following data . . . (i) the list is looked up and . . .

5.3.3

Examiner Observations

In this example we may suppose that the closest prior art available is the subject matter discussed in example 2. If, as an applicant, you do not disclose in your application as a whole, and in particular in your claim, the technical steps (g)–(i), then we are effectively back to the case of example 1. For some patent offices, the fact that a problem may be recognised in example 2 may be sufficient in justifying the grant of a patent even if no concrete technical solution is given. At least at the European patent office, and probably in most European national offices, the examiner may argue that the level of technical information you gave in order to improve the teaching of example 2 is so low, that your patent application is either lacking sufficiency of disclosure, or lacking the required inventive step. We are back to the lines of argumentation (a) and (b) as described in example 1, with the difference that we start the reasoning from the teaching of example 2, and thus start from documentary prior art. However the logic of the “triangle” of inventive step, sufficiency and inadmissibility of added subject matter of technical importance will remain the same, it’s just that the examiner will not need a further document to judge the value of the supplementary features. If however the applicant had, with some foresight, included in the description and claim the technical features (g)–(i), then the scope of protection sought would be reduced. Whilst this may result in a pointless limitation of the scope of protection, and therefore not particularly advisable when facing any patent office which will tend to grant you a patent based of the improvement defined only by feature (f), it will nevertheless be necessary if you want a patent in Europe. Even then, with features (g)–(i) added to the claimed matter, the decision of the examiner will be, as in example 2, completely dependent on the prior art available. If a document showing features (g)–(i) is discovered in a similar context then he will probably decide that the criteria of inventive step are not fulfilled. If steps (g)–(i) are not known in combination with the other features of the claim then you probably will be adjudged to have made a real technical invention which may be rewarded with a patent.

5.4

Conclusion

Although the objective of this part of the book was specifically to give you some hints on the possible ways of balancing intellectual property rights sought if you feel you have made an invention in the field of DB or DBMS; from the examiner’s

5.4 Conclusion

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observations, you will have realised that the requirements may be different from one patent jurisdiction to another. In order to first increase your chances of getting a patent and then to optimize your scope of protection once your application fulfils the requirements of the patent law, you have to be very careful filing an application’s description and claims, as these, from the very beginning of the process, are the sole real resource which will allow you to overcome the examiner’s objections and obtain any protection you may merit. Equally, it is regarded as quite understandable if some aspects, although included in the application’s description and/or dependent claims, are held “in reserve” to avoid pointless limitation in one jurisdiction while permitting introduction when required (as expected perhaps) in others.

Chapter 6

Billing and Payment

Abstract In 1871, Western Union introduced its electronic money transfer service based on its telegraph network. Roughly one hundred years later, in 1977, the first financial message was sent over the SWIFT [1] network. Today, the ubiquitous internet allows people to make transactions 24 hours a day, from almost any place in the world. While the communication networks constitute a very important infrastructure for billing and payment procedures, patent applications often address payment schemes and protocols located on upper levels of the ISO network layer model. Payment processes normally involve electronic links between parties as intermediaries, like banks or credit card companies. Even direct payments schemes between two persons typically involve membership of a third party organisational unit which has to map virtual transactions into real monetary systems. Patent applications in this field are at risk of being too abstract, of being of purely financial nature, or of being considered to be obvious in view of existing communication infrastructure. The following examples concern patent applications in the International Patent Classification (IPC) class G06Q20/00 (Payment schemes, architectures or protocols).

6.1 6.1.1

Example 1: Third-Party Based Billing and Payment Method Description

Billing and payment schemes for remote purchases can take several days to conclude a payment. Once a purchaser has selected a product, put it into the shopping cart and proceeded to the checkout, he or she has to indicate their desired personal payment details, like credit card details, bank or check account numbers. Alternatively the purchaser has to make a prepayment via a suitable transaction mechanism. In either case the seller or merchant will be put in the position of being in possession of the full payment details together with the delivery address. D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_6, # Springer-Verlag Berlin Heidelberg 2010

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Credit card fraud, the theft of banking details and the news of hacked payment databases frighten potential users and thereby impede their readiness to participate in online transactions. Moreover, the first entries listed in online price search engines are often small vendors who are unknown to the potential purchaser and/ or who have no certification or a very limited number of customer feedback reports. It is thus desirable to provide a fast and anonymous payment scheme which enables a user to make remote purchases, via communication means, without disclosing their sensitive payment details to the retailer/seller or merchant. The key elements of the payment scheme are managed by a third party, which coordinates the payment process. Both purchaser and seller have to register a valid payment account with the third party. The third party will have at their disposal multiple reference banking accounts and also one or more credit card merchant accounts which may be linked to these. The purchaser can therefore use his credit card for payments even in the situation where the seller or merchant does not own a credit card merchant account. The third party can accept the credit card payment and pay the merchant via any other payment route. The third party can offer its services in one or more countries. Consequently, the transaction between a purchaser and a merchant or vendor can also take place across national state borders without further formality. When registering with the third party, the purchaser is provided with a number of transaction codes (TANC) for later use. Every TANC can be used only once and contains the encrypted identity of the purchaser. For the payment process, the purchaser provides the seller with a TANC, e.g. during the checkout at the vendor Internet shop. The seller sends the TANC together with further purchase information to the third party which compares the code (TANC) to those issued to the purchaser. If the code is a valid and unused TANC, the third party sends a confirmation request (CONFR) to the purchaser over a preferred communication channel. The purchaser can now check the amount and give his consent to the payment process. When the third party receives the confirmation from the purchaser, the third party internally processes the transaction and sends the payment confirmation to both the merchant and the purchaser. As soon as the third party has confirmed the transaction to the merchant, which normally takes merely a few seconds, the merchant can prepare the product chosen by the purchaser for shipping and the product can be sent within a few hours. For purchases of intangible goods like downloadable digital music that do not require physical delivery and thus do not need a postal delivery address, the claimed payment method can be used for performing online purchasing anonymously. It is noted that the third party will have a full record of all purchases of every customer, however trust is promoted by very stringent privacy policies. It is more attractive for the purchaser to entrust the single third party with their payment details and purchase history than to trust a multitude of remote sellers and Internet shops. The purchaser also has the advantage that the merchants or sellers offering the third party payment process have agreed to a number of requirements set as part of the process. If a merchant or seller does not provide the product as agreed, the third

6.1 Example 1: Third-Party Based Billing and Payment Method

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Fig. 6.1 Billing and payment method

party will reimburse the purchaser and block use of the system for the merchant or seller until the issue is resolved. At predefined intervals, the third party maps an accumulation of virtual transactions into real world financial networks. The account of the purchaser is then debited accordingly and the merchant is credited. The third party charges every user of the billing and payment method per month or per transaction. Since security against fraud or theft is the purchaser’s primary issue for not disclosing his credit or banking details, every transaction is dependent on a transaction confirmation reply (CONFR), requested by the third party from the purchaser before processing the transaction. The transaction codes (TANC) can be encoded with an upper spending limit (e.g. max. 15€), and can be of varying length, depending on the value of the code. Once the customer does not have a sufficient number of codes left, new codes are generated, dependent upon the purchase history of the customer. Unused codes can be deleted. Finally it is noted that the billing and payment method (Fig. 6.1) can be performed over numerous existing communication channels like the Internet, wired or wireless telephone networks or even facsimile.

6.1.2

Claim 1

Billing and payment method comprising the steps of: (a) a purchaser contacting a seller or merchant for the purchase of a tangible or intangible good

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(b) the seller providing the purchaser with the billing details (c) the purchaser sending a one time transaction code (TANC) to the seller (d) the seller forwarding the transaction code (TANC) together with details about the tangible or intangible good to the third party (e) the third party decoding the transaction code (TANC) and thereby extracting the identity of the purchaser and the spending limit of the transaction code (TANC) (f) the third party verifying if the TANC in step (e) is a valid code, associated with the purchaser and of sufficient maximum value, if so, the third party sending a payment confirmation request (CONFR) over a preferred communication channel to the purchaser and waiting for a confirmation reply from the purchaser before executing step (g) (g) with a positive result in step (f), the third party transmitting a payment confirmation to the seller and the purchaser while storing all transaction details in a database (h) at regular intervals, the third party mapping virtual transactions into real financial networks and thereby debiting the purchaser and crediting the seller.

6.1.3

Examiner Observations

Some readers will contend that the proposed billing and payment method can be implemented on traditional communication technology like Internet-based computer networks, commonplace personal computers with Internet connections, mobile terminals or wireless telephones, perhaps even via facsimile machines. The precise nature of the communication infrastructure is, however, unimportant. The claimed method also makes use of existing real-world banking accounts and credit card accounts, with the only difference being that payments are not made directly as a transfer between a purchaser and a seller, but through a trusted third party. Therefore neither new communication technology nor new payment instruments are needed. The third party acts as bank, having several bank and credit card merchant accounts in order to conduct the payment processes as agreed with the parties. The closest prior art can be regarded as a third party payment scheme (e.g. PayPal). The difference between the prior art and the claimed payment process can only be found in administrative steps of the payment process. The prior art payment process has the requirement to login to a third party server for checking and confirmation of the transaction. The claimed payment scheme does not require the purchaser to perform a login to the third party payment server. The payment confirmation process is started by the third party decrypting the user identity from the TANC, determining the preferred contact method and then requesting the customer to give permission.

6.2 Example 2: Card-Less Billing and Payment Process

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The purchaser then only has to check the payment details received from the third party and confirm them. The novel aspects of the method claim can therefore only be found in the use of a one time transaction code (TANC) with encrypted identity of the purchaser that can be used for an automated payment confirmation process. The cryptography involved in the encoding and decoding of the transaction code (TANC) is the key issue for the questions of patentability of example 2. If the description and claims only mention the possibility of encryption but do not highlight and address any problems encountered when trying to implement the claimed payment method, then it may be reasonably alleged that the implementation and adaptation of the software required to implement such an alternative payment process lie within the ordinary skills of a programmer. If however the applicant discloses and claims encryption details for encoding and decoding the transaction codes, the patent examiners at the respective patent offices will apply examination practices taking into account the state of the art in encryption. It is noted that cryptography is generally regarded as having a technical character at the EPO. As the reader will probably be anticipating, the chances of the grant of a patent are much improved when an applicant not only mentions the vague concept underlying an invention but also the problems and real solutions pertaining to it.

6.2 6.2.1

Example 2: Card-Less Billing and Payment Process Description

Self-service kiosks, comprising several user interfaces such as displays, keyboards or touch-screens, note and coin depositors as well as card readers, ticket and/or receipt printers, constitute an attractive and important channel of sales. The payment for low cost products or services can be limited to note and coin depositors, while for the payment for higher priced products or services, it is possible to extend to the customer access to the usage of credit or debit cards. However, credit card fraud and the large scale use of fake debit cards by the criminal fraternity through the widening use of card skimmers has become a serious financial problem. Services providers are thus looking for alternative ways to bill their customers at self-service kiosks. The majority of self-service kiosk customers are familiar with modern technology and carry a modern mobile telephone with them. Such devices nowadays comprise, as a matter of course, large screens and the possibility to both send and receive multimedia messages (MMS). It is therefore an aim of this invention to provide a card-less billing and payment method for self-service kiosks (Fig. 6.2).

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Fig. 6.2 Card-less billing and payment process

Some services such as reservations for concert tickets, rental cars and aeroplane tickets and the like require an online check for availability. Therefore an online connection between the kiosk and a remote server is an implicit necessity. Moreover, premium products like brand-new DVDs or hot-off-the-press books can also be sold through vending machines. When a customer wants to buy a premium product or to book a high value service, they select the product via the keyboard or touch screen of the kiosk. Such products may be either tangible or intangible goods. When the customer has finished their selection of the desired product, the kiosk guides him into and through the card-less payment process. The customer is asked to confirm the selected product and to input the telephone number for billing and payment purposes. The customer then enters the telephone number of his mobile telephone to the kiosk. Upon completion of this, the kiosk sends a transaction record comprising at least the telephone number and product ID to the central server. On the server side, a real-time inventory database is updated, the customer is billed for the selected product and a payment confirmation code is sent both to the kiosk and the customer at the designated telephone number. The customer now enters the code into the kiosk. If the code received from the server coincides with the code entered by the customer, the kiosk dispenses the product and can either print out a reservation receipt or simply display a confirmation message.

6.2 Example 2: Card-Less Billing and Payment Process

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Since the input of long numerical codes is error-prone, the payment confirmation code is sent by the server to the customer in the form of a graphical representation of a barcode within a multimedia message (MMS). This then allows the customer, once they have opened the MMS, to display the barcode on the screen of the mobile phone and place his mobile telephone in front of the barcode reader of the kiosk for reading by the scanner, ensuring error free entry with minimal effort or skill on the part of the user.

6.2.2

Claim 2

Card-less billing and payment process for self-service kiosks comprising the following steps: (a) (b) (c) (d) (e) (f) (g) (h) (i) (j)

the customer selecting a product from a self-service kiosk the customer selecting the card-less payment option the kiosk requesting a mobile telephone number the kiosk forwarding the mobile phone number and product selection to a remote server the remote server updating inventory databases, billing the customer for the product and generating a payment confirmation message the server transmitting the payment confirmation code to the kiosk and the mobile telephone the kiosk prompting the customer to enter the payment confirmation code the customer transmitting the code to the kiosk the kiosk comparing the codes received from the server and the customer if both codes are identical, the kiosk dispensing the product

characterised in that (k) the server sending the code in form of a graphical representation of a barcode in a multimedia message (MMS) to the customer (l) the customer displaying the barcode on his mobile phone (m) the kiosk reading the barcode via an integrated barcode reader.

6.2.3

Examiner Observations

The closest prior art is considered to be a self-service kiosk comprising all the necessary technical hardware features, particularly a self-service kiosk comprising either a keyboard, touch-screen, or both, ticket and receipt printers, a connection to a remote server via the internet or other network and a bar code scanner. On the user side of the system requirements, only a mobile telephone with features like access to the multimedia service (MMS) function and a screen with

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a reasonable resolution are needed. Most modern mobile telephones fulfil this requirement. It is to be noted that the telephone does not need to have a camera. The third component in the payment system is the remote server, comprising communication interfaces for data exchange between the server and the kiosk on one side and the server and the mobile telephone on the other. Such servers are also known in the art. Therefore it is concluded that all hardware features were already available and in use for card-based payment processes in self-service kiosks. Indeed the description would be misleading were it to purport otherwise. The difference between the proposed card-less and the card-based billing and payment processes is thus the particular adaptation and programming of the software which is proposed for use in the self-service kiosk and the remote server. The mobile telephone only needs to have access to the MMS function. It is noted that if the code sent from the server to the mobile telephone is in plain text (e.g. in a short message) then it is merely of cognitive character since the user has to read the message, extract the code from the message and enter the code via the kiosk keyboard. However, as soon as it is defined that the server sends the code in form of a graphical representation of a barcode to the mobile telephone, the customer is not required to cognitively extract parts of the message, but can simply use the graphical representation of the barcode as a whole for triggering the dispensing of the product from the kiosk. The MMS representation of the barcode therefore is of a functional technical character despite its base existence as a presentation of information. Is it now sufficient for a patent examiner to cite two documents, the first document disclosing a kiosk communicating with a server and the second document disclosing a server exchanging data with a mobile telephone, in order to tenably assert an objection to a lack of inventive step? The answer is “No”, because the subject matter is more than a simple aggregation of unrelated features. The use of a barcode links the individual components, i.e. kiosk, server and mobile telephone, gluing them together in such a way that it is not sufficient to simply show that partial systems were individually known (were this otherwise, patenting advances in fields involving resistors, capacitors, transistors, diodes, etc., would be illogically difficult). The software adaptation of the claimed billing and payment process will require all elements to use common formats for the data exchange. So the art would have to be better than the base level mentioned. One may now think that claim 2 is a good basis for an inventive step, and chickens are being put in a queue in order to be counted. The grant of a patent for the claimed payment process would have virtually no chance though. The German airline Lufthansa introduced a barcode based check-in service called m-Barq1 [1] in 2001 which allows frequent travellers holding electronic tickets to check-in and receive an electronic, barcode-based, boarding pass on the display of their WAP-enabled mobile phone. The barcode is verified via scanners at security and boarding control points prior to boarding the flight. In view of the prior art, the existing kiosk system and the Lufthansa barcode check-in procedure, the claimed payment method does not involve an inventive step.

6.3 Example 3: Colour Matrix Based Billing and Payment System

6.3

6.3.1

97

Example 3: Colour Matrix Based Billing and Payment System Description

Self-service kiosks with mobile phone enabled payment processes are known in the art (see also example 2). Some involve the issuance of a server generated barcode which is first transmitted to the mobile phone, then displayed on the mobile phone and finally read by a barcode scanner in the self-service kiosk or other attended or unattended machine. There are several disadvantages with the prior art systems. The information content of a barcode is of limited size. Due to this limit, the content of the code is of limited interest for use in the generation of billing statistics in the mobile phone or external accounting software. The generation of codes on the server side and the subsequent transmission of codes to both the kiosk and the mobile telephone could also be delayed due to high network traffic. In addition, the costs caused by roaming fees when the unit is used abroad and/or linked to a telecommunication networks other than the subscribers own contracted provider can render this type of payment unattractive. It is therefore an object of this patent application to offer a kiosk payment process that does not require real-time generation and transmission of payment codes by a remote server. The object is achieved by moving the code generation away from the server and onto the mobile device. It is noted that in the present application, the mobile device does not strictly have to have a wireless long distance telecommunication interface, but for simplicity it may be assumed that the mobile device is a modern mobile telephone. The improved billing and payment process is now described in a first embodiment. Let us take the situation of a travelling businessman, wanting to rent a car in London. Before his departure from an airport in France, he uses a self-service kiosk of an international car rental company which guides him interactively through the whole reservation procedure. The last step of the reservation procedure is the payment of the contracted sum. When presented with the choice, the person elects to pay via the mobile device payment procedure. The payment procedure is initiated by the kiosk which generates a two-dimensional colour matrix barcode bill (2D bill). This bill is shown on the kiosk’s display. The user is then instructed that he has to scan the two-dimensional colour matrix barcode with the inbuilt camera of his mobile device, and how this should be done. Special software held on the mobile device then allows him to decode the bill and to extract the reservation information. Once this is done, the message is displayed on the screen of the mobile device in plain text and contains at least the following data:

98 l l l l

6 Billing and Payment

Name of the person having made the reservation Geographic location, time and costs of reservation Details about the rented object Serial number of the kiosk

If the user agrees to the information displayed, which was decoded as necessary from the total data included in the bill displayed, he instructs the mobile device to generate a payment confirmation code (voucher). The algorithm necessary in order to generate the appropriate two-dimensional colour matrix barcode will have been downloaded from the remote server beforehand. This code contains a unique identification number, e.g. the IMSI (International Mobile Subscriber Identity) or serial number of the device in use, and details of the reservation relevant for the billing and payment, e.g. the geographic locations of the reservation/rental and the associated payment account. The voucher is then rendered and displayed on the screen of the mobile device as a two-dimensional colour matrix barcode. The user presents the screen and its content before the scanner present on the kiosk. Once scanned, the kiosk then scans the code, associates it with the voucher produced by it earlier and sends both codes (bill and voucher) to the remote server. The server extracts the necessary information from the first code (bill) and generates the second code (voucher) with the same algorithm as the mobile device. This is used as a cross-check against the received second code (voucher as produced by the mobile device) and confirms the reservation to the kiosk and the reservation network if the two-dimensional colour matrix voucher barcodes are a match. The kiosk can print out a reservation confirmation comprising plain text, optionally along with the two-dimensional colour matrix barcode (voucher). The mobile device stores both codes (bill and voucher) in a protected memory. The billing details can be extracted to an accounting module implemented in the mobile device. The user thereby always has an overview of his expenses incurred through such purchases. This data can also be exported to company accounting software for automated travel expense claims or personal accounting software. The voucher code is forwarded by the reservation network to the car rental station. The user generated voucher code is used for dispensing the car keys at the car rental station.

6.3.2

Claim 3

Colour matrix based billing and payment system consisting of: (a) a mobile user device comprising a processor, protected memory, billing module, a colour camera and a colour display (b) a self-service kiosk comprising a processor, protected memory, a communication interface, a colour camera and a colour display (c) a remote server, comprising a processor and protected memory, characterised in that

6.3 Example 3: Colour Matrix Based Billing and Payment System

99

(d) the self-service kiosk generates a bill encoding all relevant billing details together with the kiosk serial number and displays the bill in plain text and as a first two-dimensional colour matrix barcode (bill) (e) the user checks the plain text bill and scans the two-dimensional colour matrix barcode (bill) with the camera of his mobile device (f) the billing module in the mobile device decodes the two-dimensional colour matrix barcode (bill), displays the information as plain text together with a virtual button for the generation of a payment confirmation (g) by clicking the button, the mobile device generates and displays a second twodimensional colour matrix barcode (voucher) encoding a unique device number (IMSI, serial number), the billing details and an indication of the reference billing account (h) the kiosk scans the second two-dimensional colour matrix barcode (voucher) from the user device display (i) the kiosk sends the first and second two-dimensional colour matrix barcodes (bill, voucher) to the remote server (j) the server extracts all data from the first two-dimensional colour matrix barcode (bill), generates the second two-dimensional colour matrix barcode (server generated voucher) and compares the server generated voucher with the user generated voucher (k) wherein the user device and the server use the same algorithm for generating the voucher (l) if both vouchers are identical, the server debits the reference user account and transmits a payment confirmation to the kiosk (m) the kiosk displays the payment confirmation and optionally prints out the voucher as plain text together with the second two-dimensional colour matrix barcode (voucher).

6.3.3

Examiner Observations

The colour matrix based billing and payment system (Fig. 6.3) has three elements in terms of infrastructure, i.e. the user device, the self-service kiosk and the remote server. It may be taken by the reader that these elements and their technical components are recognised as individually known from the prior art. Two-dimensional colour matrix barcodes are also known in the prior art. However, several individual prior art documents cannot simply be thrown together in any combination in order to assert a lack of inventive step. This is where the layperson regarding the patent system with critical eye frequently needs clarification, as they see known elements in combination and despair as to the lax requirements of patent offices. However the test is not whether the individual components are known, but rather how they are combined and whether this has been done in an obvious way. It is easy to answer this in the affirmative where the end product lies before you, however the temptation towards such hindsight is to be resisted by EPO

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Fig. 6.3 Colour matrix based billing and payment system

examiners who have to look for which objective problem has been addressed and whether this and the solution were truly obvious. Equally, where lots of evidence points in the direction of a simple combination without inventive skill (the advantages and disadvantages being clear), examiners also have to resist the supportive argument, presented by applicants and their representatives as a matter of course, they are applying hindsight in alleging that the matter described and claimed is obvious. In the US, the emphasis, over time, increasingly moved towards the necessity for proof of reason for combination before an assertion of obviousness was found tenable; however more recent case law has at least tamed this tendency. In the present example, the reader will have noticed, as did the notional applicant, that all elements of the three-tier architecture (the user device, the self-service kiosk as well as the remote server) are generating two-dimensional colour matrix barcodes. A mobile telephone with a colour camera and the capability to scan the first twodimensional colour matrix barcode (bill) is however not sufficient for generating the second two-dimensional colour matrix barcode (voucher). The required software within the mobile device would not be present in such a standard unit. In contrast to known payment systems that use standardised multimedia messaging functions (MMS) to transmit a graphical code from a server to a user device, the graphical code in this example is generated by a special purpose software module in the user device and includes within that code generation, invocation of unique numbers of devices involved in the payment procedure.

References

101

It should be reasonably self-evident that a two-dimensional colour matrix barcode can encode more data than a black and white barcode. The additional data content rendered possible will allow the needed exchange of all relevant details of the payment process in one graphical image. Furthermore the exchange of graphical codes via displays and cameras on both the kiosk and user device avoids wiretapping. The chances for the grant of a patent depend once again on the content of the disclosure of the application. The inventor has to indicate in the description what problems have to be overcome. Examples may comprise the adaptation of software modules in the hardware components, i.e. the user device, the self-service kiosk and the server and/or the integrating of new hardware components in self-service kiosks. Furthermore, the inventor also has to disclose the solutions to the above problems by way of sufficient details about the algorithm for generating the twodimensional colour matrix barcodes and the integration of the respective software modules comprising the algorithm in all hardware components.

References 1. SWIFT is a carrier of messages. It does not hold funds nor does it manage accounts on behalf of customers, nor does it store financial information on an on-going basis. As a data carrier, SWIFT transports messages between two financial institutions, http://www.swift.org 2. http://findarticles.com/p/articles/mi_m0EIN/is_2001_May_22/ai_74847513

Chapter 7

Graphical User Interfaces

Abstract In this part, we will try to outline the matters which should be of concern to potential applicants concerning inventions in the field of Graphical User Interfaces. After a summary of the different intellectual property protection available for GUI, the criteria, according to which a decision could be made as to whether or not to file a patent application, are explained via four examples. One of the aspects of the present chapter is to clarify the minimum disclosure your patent application has to include in order to increase your chances of grant. Another aspect is to make clear to you that it’s your task, with the help of your patent lawyer, to understand what your invention is (see example 7.2). It is very unpleasant to realize, after you have a patent granted, that in fact you have unnecessarily limited your invention to a GUI even if a GUI is only one of the embodiments you can achieve with your real invention. Definition and Use of the Term “GUI” A graphical user interface (GUI) is a means of enabling user interaction with electronic devices such as computers or hand-held devices. Typically these devices nowadays have the ability to show visual indicators such as icons. These are then considered to be “graphical” and thus GUI, as opposed to being text-based interfaces, which are considered separately under the IPC. The GUI has to fully present all information necessary to the user as well as making clear to that user the actions available to them in response to that information. These actions are frequently performed through direct manipulation of the graphical elements constituting the GUI, such as the movement on-screen of a pointing cursor between icons in conjunction with a mouse, trackball, joystick or touchpad, or, alternatively, “tabbing” between these using key strokes. In either case, visual feedback with regard to the actions carried out by the user is normally given. In effect then, a GUI nowadays represents the best known and most widely used means of interaction between a user and an apparatus comprising a display; virtually all computer controlled processes are launched or managed by users via such a means. D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_7, # Springer-Verlag Berlin Heidelberg 2010

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Intellectual Property Protection of a GUI People who develop GUIs are confronted with a quite specific set of problems. Their work consists of providing the best compromise between an interface which appeals to the user in terms of ease of use but incorporates, encourages and enables a form of interaction by the user which allows the full range of function of what is, after all, a complex and impersonal machine, in such a way that the efficiency of the combination of user/machine is improved. Different types of IP protection are offered around the world to GUI developers for their investment in product development. Protection via design, model, copyright and patents are all possible, but this is a sliding scale of protection covering the full palette of creativity, from aesthetics, to information, to utility, to technical invention. Although we hope that we can help you decide what protection or combination of protection is appropriate to your new GUI, or how to “tweak” the information you should consider including in your decision making process, we must recommend that you meet with a qualified IP lawyer who, according to the countries in which you want protection, and depending of the kind of improvement you have made, will help you to define a strategy which is hopefully complete and integrated for your particular situation. As noted however, the goal of this chapter is to consider how good your chances are of getting a patent for your new improved GUI. As a matter of general principle, we can immediately advise you that the more your improvement is on the user perception side, for example the screen is illuminated a nice colour to attract the user’s attention or a new form for an icon is proposed, the less chance you have of getting a patent. Choice of colour or form is mostly a question of design, whether this is colour or shape, just as the aesthetics of a painting or sculpture are not patentable aspects of their existence. Such a sweeping statement must be enjoyed with caution however, and immediately narrowed and clarified by us as patent examiners. Engineers find aesthetic beauty in shapes, colours and forms which have technical function. The swoop of an aircraft’s wing, the propagation of a flame front in a combustion cylinder or the glow from a chemical reaction or an LED may be things of beauty, especially to their creators. It is the lack of the latter technical aspects however, not the presence of the former aesthetic ones, which is an impediment to grant. A priori, when filing a patent application, the applicant would be well advised to ensure that an improvement lies at least partially in the manner of interaction between user and machine. It is also recommended, in order not to sell yourself short, to clearly define whether your improvement is really in the GUI, rather than more fixedly on the computer side. If the innovation is more on the computer, and merely presented to the user via the standard GUI, then a patent application can of course still be filed, but its scope of protection would then not be unduly limited to a specific GUI (this will be considered in example 7.2). Patent applications relating to GUIs are normally classified in classes G06F9/44 (arrangements for executing specific programmes) and G06F3/048 (interaction

7.1 Example 1: Spell-Checking System

105

techniques for graphical user interfaces, e.g. interaction with windows, icons or menus) of the International Patent Classification (IPC).

7.1

Example 1: Spell-Checking System

7.1.1

Description

The existence of pop-up windows which open automatically in order to provide a user with a menu list is well known in a computer environment. Such windows appear on the screen at a place and time decided upon by the computer system. The idea underlying the present application is to use this pop-up window in conjunction with a spelling check system in order to arrive at a new kind of GUI. The correction of typing errors is a common problem for any computer user. This has rendered it desirable to develop a system in order to allow a user to quickly, and with a high level of certainty, correct a mistyped word. In order to achieve this, the computer is provided with a dictionary which is used to provide a list of words displayed for the user via a window which opens automatically near the word which has to be corrected (Fig. 7.1). The order of appearance of suggested words is alphabetical and these are arranged in this manner by the spelling system. The user then chooses one of the words by simply clicking on it and it is entered as the correction.

7.1.2

Claim 1

A graphical user interface for a spell checking system, characterised by: (a) a window being automatically opened near the wrongly spelled word whereby (b) this window contains a list of suggested words (c) the user chooses, by way of a single click, from these words the correct word to replace the wrongly spelled word (d) the list of suggested words and the order of the suggested words in the list being predefined by the spell checking system.

7.1.3

Examiner Observations

Let’s first consider that which is well-known, or rather notorious, in the above discussion, namely that a window may be opened automatically on a screen according to a check or an operation made by a processor.

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7 Graphical User Interfaces

Fig. 7.1 Graphical user interface for a spell checking system

We shall assume that we have a document D1 disclosing such prior art in order to support our position as examiners, although (dependent upon priority date) the sheer banality and level of basic assumption behind the assertion that this was generally known may be taken to be relatively irrefutable and not contestable by any reasonable mind. The subject matter of claim 1 then differs from the teaching of such a D1 only by the content of the window and the place where the window is opened. Even if the context of D1 were to be completely different, D1 would still fairly disclose that a processor opens a window with content at a requested place. According to their own local practice, different patent offices will accept such a claim or not. A European examiner will probably raise the objection that such subject matter as that of claim 1 does not solve a technical problem related to the technical infrastructure, i.e. in this case, a computer, as no further component parts are more closely specified. Such a technical problem would be, for example, reducing the memory needed by the computer or reducing the CPU time needed to execute the same task. Following on from this, a European patent examiner will probably then object that any adaptation of the teaching of D1 necessary in order to arrive at the subject matter of claim 1 is not inventive because the position where the window is opened relates to a design option and is a matter of obvious choice, and the content of the window does not solve a technical problem.

7.2 7.2.1

Example 2: Dynamic Spell-Checking System Description

The correction of typing errors is a common problem for any computer user. This has rendered it desirable to develop a system in order to allow a user to quickly, and with a high level of certainty, correct a mistyped word. In systems known hitherto, a window is opened automatically opened near the word to be corrected, whereby the window contains a list of suggested corrections predefined by the computer. It could be, however, that the words which are

7.2 Example 2: Dynamic Spell-Checking System

107

Fig. 7.2 Graphical user interface for a spell checking system

suggested in the list shown in the window do not correspond to the desired word, in particular when the user is writing a technical paper with words with less usual technical connotations. The word “discrete” as opposed to “discreet” is an example of such a situation. It is therefore desirable to provide a system taking account of the context of the document and the vocabulary used by a particular user (for example where a man is an author of romantic fiction and his wife is an electronic engineer). It is hereby proposed to do this by virtue of a statistical analysis of a previous body of text written by the same user. Based on the outcome of that statistical analysis, the suggested words and their order in the window are defined (Fig. 7.2).

7.2.2

Claim 2

A graphical user interface for a spell checking system characterised by: (a) a window being automatically opened near the wrongly spelled word whereby (b) the window opened contains a list of suggested words (c) the user chooses, by way of a single click, the correct word to replace the wrongly spelled word from the list of suggested words (d) the order of the suggested words in the list is created by way of a statistical analysis of a previous text written by the user.

7.2.3

Examiner Observations

If we start with the subject matter of the first example as our closest prior art, and call it D1, and then further assume that it is acknowledged in the description of the present example, then the difference lies only in the content of the window. Some patent offices may consider such a difference in content to be sufficient for patenting, but in Europe you may be confronted with a number of substantive barriers to inventive step being acknowledged.

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7 Graphical User Interfaces

If the patent application does not disclose how the specific statistical analysis is carried out, the examiner may object that the subject matter for which protection is sought is simply a combination of two well-known prior art elements, namely the prior art of D1 and any well-known statistical analysis of text. Were a patent office to be minded to grant the first example, it would also grant the second example – and if it would not grant the first example, it probably would not grant the second. It is this chainlike consideration which at times leads to apparently considerably varying levels of definition of what is afforded protection. If, however, you have developed a new statistical analysis of text, and this new analysis methodology is sufficiently disclosed in the patent application, you may have made a technical invention with this statistical analysis method even in isolation, and claims including the technical steps of your statistical analysis may be acknowledged as patentable in Europe if this new statistical analysis solves a technical problem (see Chap. 12, mathematical methods). Therefore, if you were to introduce such steps into feature (d) of your claim you might get a patent which includes the features of your beloved GUI not because you have invented a new GUI, but because you have invented a new and inventive manner of statistical analysis which improves the user/machine interaction when used in a GUI which is regarded as previously known. The criteria used in Europe, to decide if such a manner of statistical analysis is still within that which may be patented before the EPO, are similar to the ones used for deciding on the patentability of mathematical methods. Basically, your statistical method has to solve a technical problem in an inventive way. In such a situation, you may prefer to draft a claim, or claim set, which relates rather uniquely to your new manner of statistical analysis, because that is where your patentable invention is. Further definition of the area of use is like adding that it can only be used when it is a sunny day – it is a counterproductive and pointless restriction which brings nothing except limitation. You can, of course, still add a claim related to a particular GUI which incorporates and displays data which is in some manner related to your earlier statistical analysis, but, for your own good, normally only as a dependent claim. As patent examiners, we will object when you claim too broad a scope of protection, as the trade-off with the Public is not justified (inventive disclosure vs. patent protection); it is not our task in that role to point out that you are claiming too narrow a scope of protection. If you wish to shoot yourself in the foot, that’s up to you.

7.3 7.3.1

Example 3: Mixed Spell-Checking System Description

Correction of errors in typed text is an everyday problem for computer users. It is therefore desirable to develop systems which allow and aid a user to quickly, and with a high level of certainty, correct a mistyped word.

7.3 Example 3: Mixed Spell-Checking System

109

Two systems are well-known in response to this need. Both of these systems present, near the wrongly-spelled word, a window including a list of suggested words for use as replacement text to arrive at a corrected form. In the first system, the list of suggested words is predefined by the computer system and is independent of both the user and the context of the document which is under construction. It responds rather to the need of the majority of users to have a basic system which responds in a highly predictable manner, covering average and non-specialist usage. In the second system, a statistical analysis of any text written previously by the same user as presently using the computer is carried out. Based on that statistical analysis, the list of suggested words as well as their order in the window are determined. This second system can thus be adapted to situations where the principal activity of user consists of, for example, writing technical papers with words which have one meaning in normal life but have particular meanings in the technical field, as well as being able to cope with unusual vocabulary (for example chemical terms). The advantage of such a system as this second one is the fact that it can take into account the context of the document written and the vocabulary used by a particular user and not need to be “set” each time the user starts working on a document. The idea of the present invention is to combine these two systems into one and arrive at a level of utility which is higher than may be anticipated by the sum of the utility of each individually. According to the present invention, the window is automatically opened near the word to be corrected, and contains not one but rather two lists of suggestions predefined by the computer. On the left side of the window, the list corresponding to the first system is presented and on the right side, the list corresponding to the second system is developed and presented. The present system thus provides a spelling system covering all possible uses, whether the user is writing a normal private letter or writing a specific paper with unusual words. By providing these means in an advantageous combination, the applicant has solved the problem of providing the specialist user with a comprehensive system without the disadvantage of a preconception of content type which will be produced (Fig. 7.3).

Fig. 7.3 Graphical user interface for a spell checking system

110

7.3.2

7 Graphical User Interfaces

Claim 3

A graphical user interface for a spell checking system characterised by: (a) a window being automatically opened near the wrongly-spelled word (b) the said window containing two different lists of suggested words (c) the user choosing, by means of a single click, from amongst these words the correct word to replace the wrongly-spelled word (d) the first list of suggested words, and the order of appearance of the suggested words in the first list present in the first window being created by way of a statistical analysis of text written previously by the user (e) the second list of suggested words and the order of the suggested word listed in the second window being predefined by the spell checking system.

7.3.3

Examiner Observations

The content of the window is again different which means that patent offices which would grant patents, for examples 1 and 2, will also grant example 3. Under the European approach, the temptation will be great for the examiner there to consider the subject matter of claim 3 as an obvious combination of the first two examples and to object to the matter as being without inventive step. Certainly it is a very attractive and simple logic, but one which has to be carefully negotiated, as it is not without flaw. The applicant may argue, with varying levels of outrage and justification, that the invention he perceives is much more than a simple combination, and that with his invention the interaction user/machine has been significantly improved and thus solves the general but very bothersome technical problem of easing use. The question which the examiner should (must) now consider, is whether the interaction user/machine is really improved. The user is, in fact, provided with more information by the window displayed than by either of the two prior art windows, and this being so, he is being given more opportunity to find the appropriate, desired word in the lists presented to him. The fact that both are presented at the same time also gives an additional possibility of choice between type of correction due to type of text written (which will be selfevident to the user, of course). Nevertheless, the crucial step to be carried out, namely the choice of the correct word, is completely left to the user, and this important step is still carried out only by way of processing and decision in the user’s own mind. The present case differs from the first two examples in that it renders the user in a position where he has more chance of finding the correct word in the window in one action, however it is only correct because more information is given to him, not because his method of interaction with the system has changed or improved.

7.4 Example 4: Smart Spell-Checking System

111

It is, at the least, rather questionable whether the interaction between the user and the machine has really been improved and is therefore questionable whether such a claim would be considered as fulfilling the requirements of patentability for the patent offices requiring an inventive step, which is based on a technical problem being solved, for grant of a patent. However, and it is a big “however”, where there is reasonable doubt in the matter of obviousness, most systems give the benefit of such doubt to the applicant in ex partes proceedings (i.e. those where only applicant and office are involved), leaving open the consideration of basis of such doubt to any later inter partes proceedings (such as the opposition procedure of the EPC, where a granted patent may be challenged and the evidence and arguments from both sides can be weighed up and decided upon). While the EPO has a “deep” structure: divisions comprising three examiners to decide on the grant, a different (3 examiner) division to decide on any opposition, and an independent appeals function built in, other jurisdictions do not have this and cases under such jurisdictions proceed quite rapidly to litigation before courts. The applicant would do well to remember this before celebrating prematurely under any system.

7.4 7.4.1

Example 4: Smart Spell-Checking System Description

Correction of errors in typed text is an everyday problem for computer users. It is therefore desirable to develop systems which allow and aid a user to quickly, and with a high level of certainty, correct a mistyped word. Two systems are well-known in response to this need. Both of these systems present, near the wrongly-spelled word, a window including a list of suggested words for use as replacement text in order to arrive at a corrected form. In the first system, the list of suggested words is predefined by the computer system and is independent of both the user and the context of the document which is under construction. It responds rather to the need of the majority of the users to have a basic system which responds in a highly predictable manner, covering average and non-specialist usage. In the second system, a statistical analysis of any text written previously by the same user as presently using the computer is carried out. Based on that statistical analysis, the list of suggested words as well as their order in the window are determined. This second system can thus be adapted to situations where the principal activity of the user consists of, for example, writing technical papers with words which have one meaning in normal life but have particular meanings in the technical field, as well as being able to cope with unusual vocabulary (for example chemical terms). The advantage of such a system as this second one is the

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fact that it can take into account the context of the document written and the vocabulary used by a particular user and not need to be “set” each time the user starts working on a document. A system combining the two systems of the prior art described above is also known, whereby the results of the two spelling correction systems noted above are displayed to the user together in a unique single window. The advantage of such a combined system is that it provides a spelling correction system which covers all possible uses, whether writing a normal private letter or writing a specific type (say a technical) paper with unusual words, differing meanings or spellings, and thus solves the problem of providing the user with an adapted thesaurus. The disadvantage of this system however, is that it provides the user with too many possibilities for correction, confuses the user and obfuscates the nature of the error. Accordingly it is the goal of the present invention to provide a system developed to use the two well-known spelling correction systems but imposing a manner of limiting in the list displayed the number of words which are actually provided as suggested corrections to the user. According to the present invention only the first word of each list is presented to the user. If one of these two words corresponds to the word desired by him, then the user will choose it by way of a single click. If not, he has the possibility to close the window which includes the less appropriate suggestion. This action will cause the second window to open a full list automatically, and allow the user to select the most appropriate word in the list. With the present invention, the user is provided with a limited number of words, which are also the most likely ones of their type, for initial selection but can still benefit from the combined advantages of the two spelling correction methodologies (Fig. 7.4). In a preferred embodiment, the system first defines the category of text written by the user, e.g. normal letter or technical paper. If the text written by the user appears to be, for example, a technical article, then only the first suggested words based on the text analysis will appear.

Fig. 7.4 Graphical user interface for a spell checking system

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A further preferred embodiment solves an additional problem which occurs when the user writes a mixed letter, for example a letter to one of his friends who is also a technically skilled person. He may then use quite usual vocabulary for some of the letter and then break into unusual vocabulary in order to recite a slightly comical discussion recently experienced at a patent office concerning Nicolai Tesla, aluminium cooking foil, levitation, the DNA of a Chihuahua and the stock exchange. The reader can make up their own story with the above components as this is unimportant to the example . . .. This supplementary problem is solved by the computer dynamically carrying out an analysis of the text category, such analysis being performed after each new sentence or upon completion of each paragraph. With this method, it is possible to attain a greater flexibility and an improved insight into the user’s current usage of language and through this the system may offer the user, as a first choice, a different list of words either technical or nontechnical. With these two preferred embodiments, the user has the possibility to choose a word by way of a simple single click in order to open a complete first window or to close that first window and trigger the automatic opening of the second window. With the present invention, the interaction user/machine is greatly increased.

7.4.2

Claim 4

A graphical user interface for a spell checking system, characterised by: (a) two windows which may be opened near the wrongly-spelled word (b) these windows containing different lists of suggested words, the user choosing, by way of a single click, amongst these words the correct word to replace the wrongly-spelled word (c) the first list of suggested words and the order of the suggested words in the list in the first window being created by means of a statistical analysis of the text previously written by the user (d) the second list of suggested words and the order of the suggested words in the list in the second window being predefined by the spell checking system whereby (e) at least one of the first terms of the two lists being presented to the user (f) if one of the first terms presented corresponds to the desired word, the user will choose it by simple click (g) if not, the user will close one of the two windows thereby automatically causing the other one to open in order to display its full list of suggested words.

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Examiner Observations

Again, those patent offices whose practice allows grant of a patent for examples 1–3 will probably also allow grant of this example. For patent offices which require a technical problem to be solved, like the European Patent Office, the examiner will check if and how the user/machine interaction may have been improved. His first reaction may be, as in example 3, to consider it as a pure juxtaposition of known systems and object accordingly to a lack of inventive step. This time however it will be much easier for the applicant to provide argumentation to counter this objection because in the present system the solution is not only to provide the user with more information, but also to provide him with a selection of specific information, and with a particular methodology behind this. However, in this case the proposed greater levels of interchange of information between the user and machine may well allow for an improved interaction. The applicant can also consider the wisdom of introduction to the claim of the features of the first or second preferred embodiments. This tactic may prove necessary (and in any case it is always wise to have a plan B) should the examiner decide against a grant on the basis of claim 1 as originally filed. The preferred embodiments increase the role of the machine in the procedure at hand and reduce the user burden, by some of the intellectual activity of the user being taken over by the machine. Such a rebalancing in order to attain better or differing interaction possibilities goes some way towards grant. The grant of this last example will also depend upon the prior art available to the examiner. If the examiner does not have better prior art than that disclosed in the description as showing the two known spelling correction systems, such a claim, or at least a claim including, in appropriate claim language, the further features present in the preferred embodiments, has a good chance of being granted by all the major patent offices. This last example may also be seen as an example of good practice in writing patent applications. A well written application must include, from the outset, possibilities for amendment which take into account possible objections which may be raised by a patent examiner to changes in the application when applying the criteria defined by the patent law in his or her region, as well as foreseeing the types of prior art document and logic which may be introduced into the proceedings and which may be better than the art hitherto known by the applicant and disclosed in the description.

7.5

Conclusion

We hope we have given you some food for thought in your attempt to decide on the best way to protect your improved GUI. You really should invest some time to arrive at a clear understanding of what your invention really is, see example 7.2, as

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opposed to what you originally thought. Where what you have is greater – don’t be inadvertently modest. This is yet another reason to contact a specialist, be they a patent attorney or patent agent, or even (initially) one of the numerous public advice agencies which exist nationally; they should help you crystallise who to speak to, what you have (or do not have), where exactly your invention is and, eventually, draft an application accordingly.

Chapter 8

Simulation

Abstract Aspects of simulation play a role in many fields of the IPC, such as G06F17/50 (Computer aided design) and G09B9/00 (Simulators for teaching or training purposes). Some training simulators have many features in common with amusement devices (e.g. A63F13/00, which concerns aspects of games using an electronically generated display having two or more dimensions). One and the same hardware could, of course, be used in a certification process of a training program or as a virtual amusement ride component in a fun park. It will then be at this point the simulation software that defines the intended purpose and a technical difference, if any. Two of the following examples belong to IPC G09B9/08 (simulators for teaching the control of aircraft), whereas the other two would probably have to be classified somewhere else. The reader will find out in due course.

8.1 8.1.1

Example 1: Method for Simulating a Flight Situation Description

The water landing of a civil aviation jet aircraft on the river Hudson in January 2009 was a masterpiece by the pilot involved. A short time after take-off, the pilot was confronted with a situation whereby he suffered the loss of power from both engines and had to decide, within seconds, where and how to land the aircraft. The pilot successfully landed the aircraft on the river and all passengers and crew were rescued. Although decades of flight experience cannot be adequately replaced or compensated for by simulation, ongoing computer-based training of both standard and unexpected situations is an important element of modern pilot training. It is the aim of example 1 to depict an example where the simulation of an emergency situation in an aircraft and analysis of the reactions of pilot trainees is proposed and supported. D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_8, # Springer-Verlag Berlin Heidelberg 2010

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8.1.2

Claim 1

Method for simulating a flight situation comprising the steps of: (a) (b) (c) (d) (e)

confronting a trainee with an unexpected event observing the reactions of the trainee comparing the trainee reaction with the expected reaction assessing the performance of the trainee documenting their performance.

8.1.3

Examiner Observations

The simulation method in claim 1 is very abstract. The training method proposed could be applied without a simulator, or even without a computer. Taken to its limits, the protection claimed by the method would extend to a guide for a role play or a job interview in a pilot assessment centre. Even if the method for assessing a trainee pilot were implemented on a computer, it would be one of many computer based training concepts and therefore it does not belong to IPC G09B9/08, but rather G09B19/00 (teaching). Consequently, the above claim would very probably be refused in all patent systems. It may be that in some systems the refusal would be for lack of technical character (Europe) or failing to be statutory matter (USA) or in others for lack of novelty or inventive step. The precise reason for not granting such a patent application is ultimately not of crucial importance. The content of the claim and the description are the reasons for the refusal. It is not the case that applications which are drafted in a very abstract way do not exist in other fields of the International Patent Classification system. Claims like example 1 are bound to be refused regardless of area. If the description does not comprise any significant aspects going beyond the abstract idea of assessing a trainee, there would be no reason for filing a patent application in the first place. On the other hand, if the description contained more than the bare idea of assessment, the claims should reflect the invention.

8.2 8.2.1

Example 2: Computer-Implemented Aircraft Configuration Description

This example of a patent application concerns the configuration and simulation of future aircraft. It is common to pre-sell aircraft, i.e. to sell them off-plan before they are actually built and flying, and thus available on the market. Airlines are quite

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used to ordering aircraft that do not yet exist in reality, but only on paper in form of a specification, and their readiness to order in this manner allows manufacturers to finance the design and certification process. Furthermore, it is thus possible for the airlines to have a major influence on the characteristics of future aircraft, as they have a very clear picture of the required specifications defined by their own demands in the passenger and cargo transportation market. It is also known that airports in mountainous regions, such as the Funchal airport on the island of Madeira, are so difficult to land at that pilots need special training to cope with these safely, and such training must be with aircraft that will comply with legal and local airport limitations constraining, for example: maximum wingspan, maximum length of the runway, noise restrictions, etc. The carriers are therefore faced with two problems. On one hand they want to use aircraft that are easy for the pilots to fly, such that the number of sufficiently skilled pilots is high enough to have a labour pool and thus ensure flexibility without the extra cost which use of specialists would entail. On the other hand they want to load aircraft to their possible maximum in order to reduce the number of required aircraft and optimise profitability. One solution for attaining the best balance between these divergent goals can be found prior to manufacturing and before test flights in the real world by the use and help of simulation. The proposed solution (Fig. 8.1) comprises a computer based simulation system for specifying and testing future aircraft. It comprises the specification of an aircraft, with parameters for design, overall length, wingspan, load capacity, load balancing, fan type, transportation type, i.e. passenger, cargo or mixed-type, and others as well as realistic terrain representations of existing airports with known difficulty characteristics (such as Funchal and Hong Kong), with varying weather conditions (e.g. wind, precipitation, visibility) and pilot skill levels (beginner, normal, expert). The aim of the simulation process is to find an optimum compromise between secure manoeuvrability and stability, maximum payload and economical fuel consumption by varying available simulation parameters. A possible application of such a simulation system will now be described. Representatives of a carrier and an aircraft manufacturer together determine all simulation parameters of the aircraft, select an airport (or range of airports), weather conditions and pilot skill level.

Fig. 8.1 Computerimplemented aircraft configuration

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The performance of a virtual aircraft is then evaluated in a range of take-offs and landings at the chosen airport(s), with selected weather phenomena and predefined pilot skills. As long as the take-off and landing manoeuvres are successful, critical parameters P1 to Pn like load, load balancing, wingspan, etc., can be changed until the aircraft reaches a critical performance level. All parameters can then be saved in order to define interesting aircraft configurations. If one or more interesting configurations have been found, the aircraft manufacturer can then produce offers based on the respective sets of parameters P1 to Pn and the carrier can determine and order the optimal aircraft based on their actual needs, confident that this has been taken into account in the design process.

8.2.2

Claim 2

Computer-implemented aircraft configuration, simulation and evaluation system comprising: l

a configuration engine (ce) for defining parameters P1 to Pn of l l l l l

l

l

l

l

a virtual aircraft (va) a terrain model comprising at least an airport (ap) weather conditions (wc) pilot skills (ps) legal and further airport limitations (lal)

a simulation engine (se) for simulating the virtual aircraft (va), at least take-off and landing manoeuvres of a virtual aircraft (va), flown by a pilot with selected skills (ps), under weather conditions (wc) at an airport (ap) an evaluation engine (ee) for determining the fulfilment of legal and further airport limitations (lal) of the virtual aircraft (va) performances a report engine (re) for producing a specification of virtual aircrafts fulfilling the legal and further airport limitations (lal) a computer system for implementing multiple engines (ce, se, ee, re).

8.2.3

Examiner Observations

The simulation of an aircraft with a specification of parameters P1 to Pn can have two possible outcomes. Outcome 1 The carrier orders a number of aircraft corresponding to a configuration resulting from the simulation process. Consequently, the virtual specification of the

8.2 Example 2: Computer-Implemented Aircraft Configuration

121

simulated aircraft is potentially interrelated to a CAD/CAM system of the aircraft manufacturer in some undefined way. The weakest form of interrelation would be the manual copying of some parameters (e.g. length, seat configuration) into the CAD/CAM system of the manufacturer. A stronger form of interdependency would consist of a common database for a subset of parameters used in the simulation and the CAD/CAM systems. The involvement of the simulation system as an integral part of the CAD/CAM system would represent the strongest integration into a real world manufacturing process. In this situation, the parameters P1 to Pn could be chosen from any of the data structures of the CAD/CAM system resulting in highly realistic simulations of virtual aircraft. The final configuration and order of an aircraft could be seen as part of a technical design process and the starting point for a manufacturing process. Outcome 2 If however, the carrier does not order any of the aircraft he has aided in configuring and observed in the simulation, the virtual aircraft would never leave the virtual digital computer world and would never serve as input and starting point for a manufacturing process. The simulation system, consisting of a general purpose computer, programmed for producing a graphical representation of a simulated aircraft performance, then has to be seen rather as a marketing tool like many other computer-based product configuration systems. The simulator of claim 2, as presented above, is thus, at most, based on a general purpose computer and does not have any explicit interrelation to a manufacturing process. At best, some of the simulation parameters P1 to Pn could serve as manual input into a CAD/CAM system. However, such input can also result from faceto-face discussions in a sales meeting. Hence, the simulation system of claim 2 would most probably not be regarded as comprising an inventive step in view of known computer-based flight simulation systems because it may fairly be regarded as the expression of a desired result to be achieved. An aircraft configurator, based on and interrelated to a CAD/CAM system and complex models for technical simulation of the aircraft, forbidding configurations that, after technical simulation, violate manufacturing and/or flight performance restrictions, might be the basis of an inventive step. However, a patent application would have to disclose all of the relevant details of the CAD/CAM system, the simulation model, and the manufacturing and/or flight performance restrictions in order to go beyond a simple wish of a result to be achieved. The considerations within such a system would, for the European patent environment, have to lie within an indepth understanding of the technical details of the systems and parameters concerned, and not only the legal and commercial aspects.

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8.3 8.3.1

8 Simulation

Example 3: Computer-Implemented Flight Simulator Description

Computer-implemented flight simulators have now been known for decades. They are most often encountered in home computer systems and are primarily intended for entertaining computer users. However, modern pilot training necessitates the completion of several computer implemented courses in order to correctly prepare for pilot certification tests. The drawback of current software flight simulators is the lack of haptic feedback. Although the provision of visual clues may comprise presenting the user with photorealistic scenery, such simulation is limited to the virtual world in the computer. The computer based flight simulator of this example has been augmented with haptic feedback components. It builds a bridge between the virtual simulation and the real world of the trainee and thereby improves the cognitive learning effect of the pilot training. The simulation system (Fig. 8.2) comprises a general purpose computer, flight simulation software, one or more visual screens, a seat, pedals, flight sticks, and a central control stick. The software calculates the aircraft’s behaviour and generates at least the graphical representation of the flight instruments and the out-of-the-window view. Alternatively the aircraft can be observed from an external viewpoint. The software provides automated assessment of pilot trainees. It can be adapted to national regulations and optionally be integrated to the certification test procedures. In a preferred embodiment the visual displays can be replaced by a head mounted display with an integrated three degrees of freedom (3 DOF) head-tracker

Fig. 8.2 Computer-implemented flight simulator

8.3 Example 3: Computer-Implemented Flight Simulator

123

that lets trainees look around inside the virtual simulation world as if they were actually in the cockpit of the aircraft. In a further preferred embodiment the computer receives real-time simulation data from a remote server. The additional information comprises aviation weather reports, flight schedules and simulation parameters of peer simulations.

8.3.2

Claim 3

Computer-implemented flight simulator comprising: (a) (b) (c) (d) (e) (f )

a general purpose computer one or more visual displays one or more flight control interfaces a seat with fixation means for further control means characterised in that the flight controls comprise haptic feedback components real-time data is provided from a remote server.

8.3.3

Examiner Observations

Taking the discussion of prior art systems as valid, the claimed flight simulator is novel over well-known software flight simulators on general purpose computers. Since the simulation system consists of a computer, the simulation software and simulation accessory hardware, a standard computer in itself is not sufficient for making novelty or inventive step objections. However, the field of simulators for teaching or training purposes has several overlaps with other IPC fields (e.g. A63F13/00 concerning aspects of games using an electronically generated display having two or more dimensions). In the present case, the flight simulator could be used for entertainment purposes in an amusement arcade just as well as it could be applied as a training device in a pilot certification facility. Occasionally “serious” manufacturers are offended by this comparison, however it is the manner of definition which allows – or rather necessitates – it, and one and the same hardware system can have different applications depending on the simulation software. It must be noted that the flight simulator performance must match the expected performance of a simulated aircraft to a fidelity defined by an official authority, if it is intended to be used for official pilot certifications, and this is normally far higher than that of most games or leisure use type simulators. Today’s entertainment flight simulators are increasingly being supplemented with force feedback aircraft controls and real-time simulation data previously reserved, when available, for professional systems. Joysticks, pedals and panel mock-ups are now increasingly available at low cost. As long as these controls only serve as straightforward alternatives to computer keyboards and other standard desktop computer I/O devices, the grant of a patent seems improbable. If however,

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the manner of haptic feedback they provide is not yet known in the prior art, a possible acknowledgement of an inventive step is more realistic. There is also a further level of dependence present, related to the integration of such hardware accessories into the simulation system. This is in turn an indicator of whether the sum of hardware elements must be seen as an aggregation or if the accessory contributes to a synergistic simulation effect. A cockpit mock-up consisting of several painted panels can only be seen as independent matter of aesthetic de´cor, since it does not have any influence on the simulation process. In contrast, a seat with haptic feedback components controlled by the simulation software and activated and controlled in reaction to inputs by the user or simulation events cannot, however, be examined in isolation.

8.4 8.4.1

Example 4: Special Purpose Helicopter Simulator Description

Software flight simulators with hardware accessories are known in the art. Combined with modern personal computers they generate realistic views of aircraft, airports and landscapes, produce genuine sounds and allow the use of several types of flight controls with haptic feedback, and sometimes even movable seats. Although this kind of simulator offers a great deal of fun for the layman, it is only suitable to a very limited extent for real pilot certification training. Professional flight simulators reproduce, to a considerable level of detail, the exact interior of a particular type of aircraft cockpit. All relevant flight controls are present in the cockpit and original aircraft parts are often used to increase realism. The simulator cockpit is connected to a motion platform that is capable of producing motion clues in six degrees of freedom. Visual clues are provided on large panorama screens, which are either mapped to the windows or visible through them, in order to increase the realism of the simulation. However, professional simulators are very expensive and require large quantities of space, power and maintenance. The aim of the third example is a space-saving, low cost, high fidelity motion simulator. It is limited to the simulation of special manoeuvres. The key idea of small special purpose simulators is the fulfilment of strict authority requirements. A first preferred embodiment is a nap-of-the-earth (NOE) helicopter simulator (Fig. 8.3). Nap-of-the-earth is a very low altitude type of flight course, used to avoid detection and attack by an enemy when in a high-threat environment. The lowest altitude of any NOE flying is by helicopters due to their lower air speed and higher manoeuvrability in comparison to fixed-wing aircraft [1]. For this first special purpose simulator, a high performance graphics engine simulates all visual clues, i.e. the quickly changing landscape, the helicopter cockpit and visible parts of the trainee’s own body, since the trainee views the whole scene through the head-up-display. The interior of the simulator cockpit is kept very simple. Only the four flight control inputs, the cyclic, the collective, the

8.4 Example 4: Special Purpose Helicopter Simulator

125

Fig. 8.3 Nap-of-the-earth (NOE) simulator

anti-torque pedals and the throttle, are provided in the mock-up of the cockpit. The motion clues of the six degrees of freedom motion base are characterised by very fast and accurate vertical linear motion features VLM 1 and VLM 2 which greatly increase the fidelity of the rapid low altitude helicopter manoeuvres. Training with the NOE simulator consists of flying as low and fast as possible without causing any damage to the helicopter or, of course, crashing. Another preferred embodiment is a mountain rescue helicopter (MRH) simulator. It comprises the same cockpit mock-up with the four flight control inputs as the NOE simulator, but adds four ceiling mounted and one floor mounted projectors for full panorama out-of-the-window and through-the-floor views. The mountain rescue helicopter simulator is mounted on a standard six degrees of freedom motion base, but does not incorporate the vertical linear motion features VLM 1 and VLM 2. Since it is intended for training for the rescue operation flights in mountains, it comprises a simulated view of a mountain rescue stretcher connected to a helicopter winch and an associated turbulence generation software module. Training with the MRH simulator consists of maintaining the helicopter in a stable position and operating the winch and stretcher system as quickly and precisely as possible, even under bad weather conditions simulated by the turbulence generator. In an assessment mode, each simulator (whether NOE or MRH) records the trainee’s performance and their learning progress as pilot trainees for evaluation and certification purposes.

8.4.2

Claim 4

Nap-of-the-earth (NOE) helicopter simulator comprising: (a) a helicopter cockpit mock-up (b) a six degrees of freedom motion base

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(c) a helmet with integrated high resolution panorama head-up-display (d) simulation base station with high performance graphics engine for simulating fast changing landscapes as experienced during a nap-of-the-earth flight (e) wherein features VLM 1 and VLM 2 improve the simulation of vertical linear motion.

8.4.3

Examiner Observations

For this example it is supposed that the Nap-of-the-earth (NOE) helicopter simulator allows the simulation of very low level flights to an extent that is not possible with existing simulators. The hardware and software features VLM 1 and VLM 2, both being assumed to have been described in detail in the description, figures and claims, constitute the improvement over existing simulators. Patent applications for special purpose training simulators have good chances of being rewarded with a patent, this on the assumption that they disclose the invention to a sufficient level of detail, going beyond an abstract concept and a bare indication of a simulation result to be achieved. In the above example it is considered that simulator features VLM1 and VLM2, were they sufficiently disclosed, would be regarded as novel and inventive at patent offices. It is noted that, at the EPO, applications that do not disclose the invention, in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art, may be confronted with an objection of a lack of disclosure (Article 83 EPC). If the applicant has failed to disclose the invention at the date of filing of the European patent application then it is difficult, if not impossible, to add further details without violating Article 123(2) EPC, which states that a European patent application or European patent may not be amended in such a way that it contains subject matter which extends beyond the content of the application as filed. Whilst attorneys and their clients may complain that this is applied in a manner which appears harsh to them, it is frequently the case that the reason they wish to add something, however few words this may be comprised of, is precisely because it is important and was not in the application as originally filed. The potential applicant is urged to give this some thought prior to filing, and to consult a patent attorney for more details and legal advice regarding the requirements of disclosure and possibilities for amendment in the context of Articles 83 and 123(2) EPC.

8.5

Special Topic – Non-unity

For the sake of further analysis on this particular point, it is assumed that both the NOE simulator (Fig. 8.3) and the MRH simulator (Fig. 8.4) were claimed in separate independent claims and are new and inventive over the respective prior

8.5 Special Topic – Non-unity

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Fig. 8.4 Mountain rescue helicopter (MRH) simulator

art. The reader has noticed the expression “respective prior art”, which implies that the two simulators have to be examined in view of different prior art.

8.5.1

Claim 5

Mountain rescue helicopter (MRH) simulator comprising: (a) (b) (c) (d) (e)

a helicopter cockpit mock-up a six degrees of freedom (6 DOF) motion base four ceiling and floor mounted full panorama projectors a mountain rescue stretcher connected to a helicopter winch a turbulence generator.

8.5.2

Examiner Observations

The NOE simulator is characterised by special purpose elements VLM1 and VLM2 of the motion base. The MRH simulator comprises however a standard 6 DOF motion base but further projectors, a winch, a stretcher and a turbulence generator. Although both simulators are comprised in one patent application, they should have been filed as two separate patent applications, because they have no “special technical features” in common. The EPC and PCT [2] require that an application should relate to only one invention. If there is more than one invention, the inclusion of those inventions in

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one application is only permitted if all inventions are so linked as to form a single general inventive concept. With respect to a group of inventions claimed in an application, unity of invention exists only when there is a technical relationship among the claimed inventions and this relationship involves one or more of the same or corresponding special technical features. The expression “special technical features” means those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art. The determination of that contribution is based on the wording of the claims, interpreted in light of the description and drawings (if any). However, the NOE simulator and the MRH simulator are not linked in any such manner as to form a single general inventive concept. The VLM1 and VLM2 elements of the NOE simulator motion base are not comprised in the MRH simulator with its flour projector, winch, stretcher and turbulence generator or vice versa. Both special purpose simulators may be considered to be novel and inventive over known helicopter simulators, however, even where the respective inventions are realised through different technical features. Therefore an applicant may not be permitted to receive one patent for two separate inventions. We would advise you to consult with your patent attorney for further details if you think that one of your inventions or applications contains non-unitary subject matter.

References 1. http://en.wikipedia.org/wiki/Nap-of-the-earth, March 2009 2. Ref. PCT Guidelines, as in force from March 25, 2004, part III, chapter 10.01, unity of invention, http://www.wipo.int/export/sites/www/pct/en/texts/pdf/ispe.pdf#page=75

Chapter 9

Games

Abstract What is meant by “games”? It is perhaps a very basic point to begin with, but just as with the other exclusions, the one for games is “as such”. No one seriously expects a patent application landing on their desk to simply recite the rules for hopscotch, yet methods for playing games do in fact still arrive. These can be games of chance with links to lottery systems, betting games played at a table or, which is more often the case, related to machines which in some way enable the playing of a game.

As for methods of doing business, the threshold for such games applications to escape the exclusions provision of the EPC is set low. In the USA there is no systematic provision of examples of matter which is excluded. Rather there is an affirmation of matter which is to be considered statutory. Therefore, logically under the US system, games or any other area should also simply fall under any definition or test applied to establish the inclusive nature of statutory matter. Naturally, where data is crunched or managed to calculate probability of outcomes there is in effect a modelling of similar human thought processes which would occur during a game of chess or, more pressingly, Russian roulette. Likewise, where it is necessary to depict an image to show to a user what is happening within a game, which in reality would be seen across the full angle of vision of the player, and this is reflected onto a screen (with finite size), then the modelling of an equivalent of a fellow player’s warning shout will be included. How exactly this processing or depiction is achieved within the implementation of the machinery or interface of the gaming system is therefore the key to the probability of success of the application. Just as a football design, goal post design and football boots may be the legitimate subject of a patent application, so may the electronic infrastructure that allows the playing of games. The line that divides where the game rules end and the technical implementation begins is, however, as ever, not quite so simple to depict or decide upon.

D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_9, # Springer-Verlag Berlin Heidelberg 2010

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9.1 9.1.1

9 Games

Example 1: Multi-player Game Description

In enabling players of a game to participate effectively in the game and interact with one another in an enjoyable manner, it is vital that information flow between the players and the control of this, as well as the manner of cooperation, is finely regulated. Should such a regulation be too pervasive, the players will not find the game captivates their attention and their desire to continue in the cooperative act will dwindle. As this is contrary to the very existence of the concept of starting a game, it is of paramount importance to render the quantity, quality and timing of the information flow such as to maximise attention by the players. This problem is addressed by the present application by providing a framework of rules and timing of information flow such that certain information may only be known by specific players at any one time during game flow. Other information is held and revealed only at specific points in the game and in a manner regulated to entertain and capture the attention of the players. In particular, means are included to allow each player to record and track both their own initial playing data as well as data pertaining to another player’s playing position. These recording means may be electronic and be in communication either with one another or with a further data processing device, to which some or all of the data is passed from the other means in use.

9.1.2

Claim 1

A game for a plurality of players whereby: a first player selects at random and without gaining knowledge of these, one of each of a first item, a second item and a third item as an unknown combination to be guessed; each player of said plurality of players then has distributed to them an even number of each of the remaining first items, second items and third items, without knowledge of the items received by the other players; each player takes it in turn to demand information on individual combinations of first, second and third items from the other players; whereby when asked; a player must reveal any one item that is demanded of them if they possess that item, but only to the player demanding the information; whereby each player is provided with a means of recording the information gained over the course of the game from other players in such a manner as to allow discounting of first, second and third items which are not the initially selected and unknown combination;

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and whereby the winner is the player who first calculates, with the aid of the means of recording, the unknown combination.

9.1.3

Examiner Observations

For those who do not know the game or did not realise it, the game described is in fact the very well known Cluedo#, where the combination to be guessed is a person (the murderer); a room where the murder took place; and an item which is the murder weapon. As the number of combinations is high but finite it is possible for the suitably mentally agile and retentive to manage to play the game without a means of recording the cards they have seen and thus the single remaining possible combination, also without “wasting” their guesses on repeats. However, whether the means are paper and pencil, or a small electronic device with further unspecified recording capabilities, there are means provided in the claim which are proposed in support of the game. These are not part of the scheme, rules or method of playing the game and therefore lift the definition above the threshold of a game “as such”. That which is left however, is any “aide memoire” and as such we need not spend time unnecessarily considering it for obviousness. Were a major patent office with a requirement of non-obviousness or inventive step to issue a grant on such claimed matter, then it would rightly be a matter of considerable internal concern as regards quality assurance, as there is a clear lack of any basis for the existence of such non-obviousness (US) or a technical inventive step (EPO). At least some interaction beyond simple recording is required as a link between the means and the game in order to adequately specify it in a manner to distinguish it technically from “any other suitable recording means”.

9.2 9.2.1

Example 2: Device for Multi-player Game Description

In games in which strategic guessing is required in order to engage with an opponent, a paper grid has traditionally been employed, hidden from view of the opponent upon which both the positions of the player’s own pieces are recorded and the guesses made by the player as to the location of the opponent’s pieces. The game is played by taking turns to guess, with a player who scores a “hit” by guessing the position of an opponent’s piece being rewarded with a further guess. If the player “misses” the pieces of his opponent, the opponent takes his turn to guess. Playing such a game on paper poses certain limitations on the level of strategy and the informed nature of guessing involved. Although many players will attempt

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Fig. 9.1 Device with a display, memory and processing means

to achieve randomness in their placing of pieces on their hidden sheet of paper, it is nevertheless human nature to form certain preferences and habits. The present invention (Fig. 9.1) proposes an electronic version of the game in which previous games played are stored and may be related to the individual players. By utilising said invention the player may recall previous games on the screen during play and consider whether there is any historical pattern to the positioning chosen by the current opponent. Upon first “hit” the device may perform a coincidence check between the current game and previous games, indicating those previous games where a “hit” has occurred in the same location as in the current game, thereby indicating the increased probability of positioning of other pieces by the opponent. Although normally the game will be played between two electronic devices, a single shared device may be employed should the opponent agree to enter his piece positions to the device on the understanding that these are not unfairly revealed to the other layer using the device. The display (possibly of the touch screen variety), user input/output interface means, storage and communication means (should wireless communication and single player data entry be wished) utilised in the portable devices are of standard nature but adapted to the specific needs of the game.

9.2 Example 2: Device for Multi-player Game

9.2.2

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Claim 2

A device with a display, memory and processing means, adapted to allow the performance of a game whereby: the player using the device enters a set of data into memory indicative of the two dimensional placement of items which are playing pieces with particular characteristics on a grid; the grid and the players’ indicated playing pieces are displayed on the device display for viewing by the player; an opponent may take guesses as to the position of the player’s playing pieces or parts thereof by way of grid reference; whereby the data representing the grid reference may be transferred either by the opponent noting this to the player and the player entering the guess on his device, the secret location of the opponent’s pieces having been confidentially entered on the device; or by the opponent entering the guess on a compatible device and this being transferred electronically to the player’s device; where the guess is correct the opponent proceeds to a further guess; where the guess is incorrect, the opportunity to guess the location of the opponent’s pieces passes to the player; and whereby, during the course of game play, the player of the game may recall, from the memory of the device, previous game results showing the placement of the opponent’s pieces as an aid to decision-making for his guesses of grid references; and, following the first correct guess by the player of the position of the opponent’s pieces, presenting previous game results in order of those with the highest probability of similarity, based upon the existing correctly guessed grid references.

9.2.3

Examiner Observations

The game, for clarity’s sake or for those with a less martial childhood, is the electronic version of the golden oldie “Battleships”, first known in paper format around 1900 and one of the first games to be rendered electronic in the 1970s. The mere transfer of the paper and pen implementation of the game to the electronic version may, in itself, be argued to be inconsequential, and indeed in the twenty-first century this may have some validity of logic. This simple chronological point has however, considerable impact on the discussions between applicants and authorities. Just how date dependent is inventive step/obviousness? The reasonable answer is “very”, despite being incredibly difficult to quantify. The mere use of an electronic

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device in the 1970s would have entailed considerable effort and skill by those charged with implementing it; the device would have had to be dedicated, unless it was running on some of the first personal computers (by today’s standards horrendously large, slow and expensive). Today, the use of an electronic device for a game program is unlikely to imply the necessity for creating a custom-made device, but rather the provision of particular software for a user’s device in order to provide the user interface to the players and use the available processor for running the game. The closest one may get to a dedicated device is a gaming platform and perhaps a specifically formed controller of some type (a gun with a trigger or a ring with a steering wheel function instead of the more general purpose controller pads or handset sticks). The present claim is written as directed towards a specific device however, as a combination of hardware and software to carry out a particular game according to particular rules. Whilst the examiner would be well aware that any touch-screen device with a programmable function could run such an application, he will in all likelihood provide a document covering not only the physical aspects, such as the (touch-screen) display, the possible communication means and the memory and processor capable of running the game, he will probably also investigate the prior art with a view to the “suggesting” capability defined, as otherwise a refusal may be rendered insecure through the lack of evidence of the availability of a recall and display function during the course of play. Although it will be immediately evident to any reader (other than the applicant’s representative!) that even the early electronic touch-screen PDAs of the 1990s were fully capable of performing such programmed tasks, nevertheless it is probable that evidence would be required by a later instance in the case of an appeal. In the USA, the rules of games may be given more weight than in Europe and Japan when taken in conjunction with the features of the device. There, until later case law on the obviousness of combination of prior art, it was rather more difficult for an examiner to allege the obviousness of programming an intentionally generic capability device according to certain rules. The device remained, for the US system, an article of manufacture, and the reasons for rendering it in a state to perform certain tasks were considered separate, distinct, and valid as distinguishing features within the consideration of inventive step.

9.3 9.3.1

Example 3: Hand-held Gaming Device Description

It is well-known that the enjoyment and scope of games in which information may be hidden from view due to restrictions in the display capabilities of a device can be limited and be highly frustrating to the user of the game device. In handheld devices in particular a balance between screen resolution, portable size and weight and the

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capabilities of the device to convey adequate information to the user can be especially difficult to achieve. The applicant has realised that one way in which the effective area of perceived information content of a display on a small device can be extended, is via the use of motion perception in the device. Many handheld devices (so called “controllers”) have included in them vibration creation units. The present application proposes the inclusion of such a unit in the mobile device, or the control of such a unit if it already exists in the unit. Standard known gaming devices calculate that which should be shown on the display. The present application (Fig. 9.2) extends that calculation to prepare a virtual screen which is invisible to the user, extending as it does outside the viewing window which is represented on the screen. As the virtual screen portions cannot be shown graphically, a signal, indicative of the content of the non-graphic part of the virtual screen is generated and utilised to control the vibration unit. In this way when, for instance playing a car racing game, a competing racing car is almost alongside but not within the “windscreen” view depicted graphically on the screen of the device, a vibration of the device, possibly coded to indicate direction, will be perceived by the user to be indicative of an occurrence of interest close by, or in that direction, but invisible.

Fig. 9.2 Hand-held gaming device

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Likewise when playing a game of guessing, such as the electronic version of “battleships”, where a player guesses where the opponent’s ships lie on a grid basis, additional information which is not yet fully visible but just out of “sight” on the screen may allow a better assessment of your opponent’s forces and repair capabilities for his units within the game, through the force and duration of activation of the vibration unit. This would add function, extend capability and increase enjoyment of the gaming experience.

9.3.2

Claim 3

A hand-held gaming device including a graphics control unit, a graphical display, an extended representation control unit and a vibration creation unit whereby: the graphics control unit prepares an image which extends beyond the display capability of the graphical display by a predetermined amount in each dimension; the extended representation control unit analyses the portion of the graphics image prepared for content and derives a extended representation control signal; the extended representation control signal is used to control the vibration unit; whereby the vibration creation unit is activated to indicate items of interest or additional information which lie outside the graphical image displayed but are related spatially or organisationally, within the game being played, to that image.

9.3.3

Examiner Observations

The claimed subject matter is a device and therefore the applicant has immediately arrived at a patentable invention in as far as the exclusions to patentability do not apply; accordingly a European examiner will proceed to consider novelty and inventive step. In the USA and Japan this will also be the case. The examiner will now attempt to figure out which parts of the device do what and how, as well as the full width of protection sought by way of the features defined. Also under consideration should be whether there is a link between the parts of the device and the game itself in such a way as to make them interact in a manner which lends technical character beyond the physical material present and the processing steps it performs. The use of vibration to indicate information has to be investigated; here, it is not really defined or described what kind of info is being represented. Sound is vibration and is commonly associated with game play, yet the application makes no mention of that; could it be that the vibration creation means is simply a speaker? It is the case that the claimed matter defines a somewhat ambiguous function of the display control means in that it apparently prepares an image bigger than the display, however without further definition available of how this is done or how the

9.4 Example 4: RFID-Based Multi-player Gaming System

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area outside the displayed image is processed, the functions defined remain within any device with a general purpose processor which controls a display and a speaker and whereby sound is generated related to something outside the displayed image. The nature of the ambiguity will probably, somewhat perversely, trigger a perception of necessity to provide a document showing something characteristic of the noise of a car without seeing it in order to show that the link between vibration and what is happening “out of shot” is known. How that is represented, when all physical capabilities of the game device such as vibration, screen control player control functions are present anyway, is then rather open to debate. While a presentation of information in itself is excluded, various decisions in Europe deal with this aspect when combined with a technical basis of some kind in manners which are situationally dependent. Whereas indicating that something is happening “off screen” may be considered inventive, as it increases information content available to the user, it may equally be alleged that this is merely the provision, in electronic format, of a sign indicating where the toilets are in a restaurant. In any case it is the reduction to operation of the existing components of a device to mirror what happens in real life, and with that, the applicant may be fortunate to arrive at a discussion of, and limit it to, specific prior art, rather than common sense based lack of obviousness.

9.4 9.4.1

Example 4: RFID-Based Multi-player Gaming System Description

Where previously game playing has been divided into the real player and a virtual character, many players of games are now engaged not only in real life endeavours but also in endeavours which take place in virtual environments. These endeavours in virtual environments nevertheless provide means of trade and influence in the virtual environment which are valued by others who inhabit them. Until now the value possessed by success in the virtual environment has had little effect in the real world; only limited financial gain is derived through trade between virtual capital and real world money. The applicant has realised that the inhabitants of virtual environments frequently are also engaged in virtual world gaming. Whilst there may be a reluctance to trade virtual environment value to the real world, a transition phase is proposed in which that value in the virtual environment may be recognised and utilised in virtual world gaming. A virtual world game with a link to the value attributed in the virtual environment is proposed. It is played partly on the screen of a mobile device and with virtual world game character attributes, but in direct real time reference to a table upon which playing pieces are distributed to indicate the presence of other players and assets. Some information concerning player capabilities is only available on the

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screen of the mobile device, related to physical objects being moved on the table. RFID technology may be employed between the table and the objects to allow tracking, and be reported via Bluetooth to the local mobile device. Players may be remote from one another or at the table. Players can re-designate meanings of items on table under their control via their mobile device and purchase further capabilities utilising their established value in the virtual environment. As a trivial example – in the electronic version of the game “Battleships”, when a ship is “hit” it sustains damage which is irreparable. However in the real world, dependent upon the infrastructure and financial capabilities of the authority which controls that ship, assuming it is not sunk, it may be repaired quickly and returned to service, or not. In the proposed game (Fig. 9.3), capability stored from the player’s virtual environment existence can allow an improved and intensified gaming experience through, in terms of the trivial example, a fast repair to a damaged battleship. Other players would only be able to perceive this capability later through the objects on the table having their characteristics updated. When this happens it is reported to the other players via the actual items on the table, however even this may be

Fig. 9.3 Sea-battle-inspired gaming system

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managed in proportion to those other players capabilities to read this, also dependent upon their established virtual environment capabilities. The game, as a whole, allows a connection between virtual reality gaming and characters and physically present player identity and real items on a table. In order to achieve this there is provided a server network, communicative with both the data held on the virtual environment values possessed by a player and their instance in the virtual game world. A value calculation engine processes the data derived from both environments and provides a set of resources in the gaming world based on the values accrued in the virtual environment. As resources are utilised in the game, the values accrued in the virtual environment are decreased. The amount of the noted resources available and utilised are based on models of actual physical resources and their technical characteristics, capabilities and costs, requiring in-depth technical knowledge of these resources in arriving at the said models.

9.4.2

Claim 4

A sea-battle-inspired gaming system running a first game scenario, the system including a table including a playing surface, representing an area of ocean and two areas of coastline, playing pieces of various shapes representing various types of both warships and supply ships, and a dice; the playing pieces may be moved according to the count shown on the dice, the count being known to the opponent; the dice, playing pieces and playing surface are in communication utilising RFID tags in the playing pieces and dice, and sensors on the playing surface; whereby a central game monitoring device ensures fair play and reports infringement to the players; the first game scenario consisting of the players taking turns in guessing the position of the other player’s pieces on a grid, whereby a player cannot view the positions of their fellow player’s pieces, and whereby a correct guess is considered a hit, which will inflict a level of damage to the playing piece calculated by the central monitoring device based upon the type of vessel represented and its current state of damage; the central monitoring unit calculates, using the current state of damage for any vessel, the expenditure and time necessary for repair of such a vessel should the player choose to use his dice score to move it to a suitable repair facility represented on that player’s area of coastline; and whereby the central game monitoring device is in communication with the mobile devices of the players and may receive instructions from these devices in order to purchase game capabilities such as enhanced repairing functions using credits purchased by the players through credit card details being given at the outset of the first game and the credits being stored at a first server with relation to the first game scenario;

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the central monitoring device in communication with the first server holding data relating to the first game scenario also being in communication with a second server which holds data related to a second game scenario; the second game scenario consists of a virtual world hosted environment where players may gain credits through their associated character in that virtual world engaging in endeavours within that virtual world environment; and further the player may instruct the central device to transfer credits from the second game environment to the first game environment in order to gain advantage in the first game scenario.

9.4.3

Examiner Observations

This example is a very deliberate mixture of a large number of claim types which arrive on an examiner’s desk. Games and rules of games, financial accounting systems, modelling of real things and devices defined in support of these areas. Let’s pull the claim apart a little on the physical side. We have a couple of mobile devices communicating with a central unit, that central unit is somehow connected to a couple of servers. Data flows between all of these. Further to this we have some form of surface using RFID tracking to report data to the central unit. Assuming that the parts are considered as obvious in themselves, or that we have prior art in these areas, the concern of the examiner will begin to move towards exactly which data is flowing where, and why. First, let’s take the mobile devices individually. If we take the date of all of this disclosure and definition to be in the twenty-first century then it is reasonably safe to assume that a mobile device would have the requisite processing, memory, communication and display capabilities to communicate as foreseen, given an appropriate gaming “app”. The central processing device, likewise, has little to distinguish it. Any standard low-level computer would have the capability to interface with the playing surface system to track the pieces and dice and to process the data that would have to be dealt with. If no further information, which may in some way be regarded as special in this area is disclosed, then there would be little prospect of arguing that it would be surprising to have such a central unit (though were it absent, and the mobile devices alone relied upon to carry out the function of processing the game and data flow, then the arguments of the applicant might be more challenging for the examiner). The RFID tracking system defined for the gaming surface, playing pieces and dice is (if you have rudimentary knowledge of the field) quite banal, as these are employed in casinos in a commonplace manner in order to track chips, cards and other playing pieces. Moving beyond the immediate game environment (assuming the players are in the same geographical location), the claim’s definition of data being held on servers may be considered to only disclose the use of networks in a completely normal manner – to process and store data on discrete devices yet allow the access between these.

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However, even in Europe, an examiner frequently faces the argument, from the applicant and perhaps also from a board of appeal, that it is the particular “constellation” of these parts which may somehow result in an objective technical problem which requires a technical solution. Accordingly what the examiner must do, is to consider (openly and transparently applying logic to this) which, and in which manner, functions are interrelated. The initial point of consideration here may be the RFID link between the pieces and the hosting central unit. As the data being derived from the use of this system could equally be entered directly by, e.g. keyboard, the actual function of these features relates to a quite separated field and may be regarded by the examiner as a “partial problem”, namely that of automation of gathering of such data. As we have established that this is per se known (though an exemplary document may be a wise precaution), we can progress to think about what other parts of the system are doing, as consideration of this part may now be restricted to the possibility that there is some unexpected synergy involved in its overall function within the system as a whole (which is unlikely). Next we have the host unit and its connection, via a host device, to servers which hold credit data. The troublesome point here is the perception of value when considering which systems are good prior art. Applicants may alternatively argue that the servers are not financial services servers and thus should not be equated to these or, in a fit of split personality disorder, argue that as the function of such servers is the same as those of a banking system, they are employing such an architecture in the surprising area of games. The mention of “troublesome” is meant in the following way: When working in the field of gambling, gaming and banking systems, examiners are obliged to consider the rather plastic definition of “money”. Naturally this concept has some importance in the world – it makes it go round, as we know. But; what is money? It is a unit of some form, reduced to a data entry in some cases, but is really just an expression of trust to which some value will be attributed. Dependent upon human perceptions, needs and pressures, its actual worth will change leaving really only the unit of measurement itself – a raw data value. Accordingly, whether customer rewards points, one share in a company, playing credits in a casino or other game or entries of €, $, ¥ or £, the fact that there is a data entry in a database is the only fixed point of technical importance. A recent discussion concerning the nature of fraud may further clarify this point with the reader – if two drugs dealers exchange money in a virtual gaming environment (for which you may buy credits using “real-world” money and extract that money again in a similar fashion, but which exists as a “black box” to the banking sector and laws), does that constitute part of a criminal act or money laundering? Is the company running that “game” liable to the authorities as part of the act? Some companies which run virtual world companies already log all data on a precautionary basis and have applied to be recognised under banking laws – they however are frequently unsure of what they may or may not be liable for. Accordingly, with these considerations in mind, it is rather beside the point whether or not the system was conceived by the applicant as a banking system; in

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effect it simply acts in a similar manner. Data entries in one database represent credits in one account and can be transferred to change the data entries in another, also effectively an account. There is therefore precious little difference in technical terms between this set up and triggering a transfer from one account to another using a mobile device of some kind (i.e. any internet banking system accessed from a laptop computer). Finally we have the mobile devices and the host computer device and the programs running on these to cause the game to run. From this combination what strikes the examiner is that there is modelling of damage and repair times being carried out. This is analogous to systems which analyse probable damage to cars in the event of a crash, and also to systems which analyse the cost of repairing damage to vehicles. Insurance companies utilise such systems, however running this together and over the particular architecture chosen is quite different. As has been mentioned in other sections, the remaining hurdle to be taken by the applicant is the deadly question posed by the examiner, namely “so how does it do that then?”. In the present case, if the architecture stipulated and the basic idea have not been proposed previously, then what has been defined is a new architecture for supporting a game, and the data transferred and the processing incurred by necessity of enacting that game may not be prima facie obvious. The elements of modelling and simulation may not even have to be revealed in detail at that point. Should the examiner provide a document showing the prior existence of a server based, two player game via a local host, then discussion will however still turn to those details. The final point of consideration which would have to be given by the examiner is the overall view of the system. In the present example the applicant has crossed two game environments to arrive at a new set of definitions, with the use of credit from one environment in another game environment where it previously has not been normal to be able to affect the outcome of the game through financial clout, whether virtual or real. Accordingly the base rules of the game have changed. This in itself cannot contribute technical character to the overall definition, however the implementation is undeniably of technical character and, even where the data being transferred and processed is in itself not technical, it may be difficult to substantiate an objection of lack of inventive step, as a European examiner, where there is not concrete reason to screw together the network and components in the particular “constellation” (in the terms of the EPO Boards of Appeal) defined. One could envisage other ways of transferring the data and organising the processing devices (a hint was given earlier concerning the possibility of using the processing power solely of the mobile devices). The bottom line is that such a system has many aspects interrelated and, due to that at least, the applicant has a much increased chance of success. The remaining point, as always, is that there must be the substance, the mass, the disclosure in the application as originally filed not only to allow the applicant to counter any objection of lack of sufficiency of disclosure (that “how” question) but also to fall back upon should amendment in one or other of the promising directions noted above become necessary without falling foul of the requirement of not extending beyond the application as originally filed.

Chapter 10

E-Learning

Abstract Electronic learning and teaching applications can be found in various locations falling under IPC class G09B, such as G09B5/00, G09B7/00, G09B9/00 (simulators) and G09B19/00. Applications in the field of electronic learning and teaching are often built on a basis of general purpose computers. Standard interfaces like keyboards, pointing devices, voice input and touch-sensitive displays are used for interacting with the user. The implementation of teaching concepts is often described on a very high abstract level. Applications consider the hardware infrastructure of learning systems to be known to the expert and the software is often described in functional terms without disclosing implementation details that might be of importance during the realisation of the learning system. The following examples concern electronic learning systems in the context of geography education.

10.1

Example 1: Interactive Electronic Learning Tool

10.1.1 Description Manufacture of electronic boards with interchangeable printed covers is known. Predefined contact points are distributed over the surface of the board. The user of the learning board places a first contact probe next to a graphical representation of a learning item, e.g. the text label “France”. If he then places the second contact probe onto the correct corresponding contact point, i.e. the graphical representation of France within a map of Europe, an electronic circuit is closed and the learning device confirms the correct answer by lighting a lamp or producing a sound. The learning content can consist of any subject as long as the association between questions and answers is unique. A great variety of such electronic boards exists in and is particularly suitable for the education of students of geography.

D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_10, # Springer-Verlag Berlin Heidelberg 2010

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Due to constant changes however, geographic features like borders, state names or statistical facts are rapidly rendered obsolete. The objective of the improved learning tool is the provision of a learning device which may be updated as and when required. The problem is solved by the provision of a computer console, comprising at least one touch sensitive display for data input via a pen. The console may further comprise several command buttons, wired and wireless communication interfaces and a memory card slot. An associated memory card comprises the software and up-to-date map material for running the geography e-learning quiz on the computer console. Update kits are available on a yearly basis as replacement memory cards. In this way new games and quizzes can be provided to the learner with knowledge updates that reflect changes in the real world.

10.1.2 Claim 1 Interactive electronic geography learning tool comprising: (a) a teaching concept for a handheld computer console consisting of a touchsensitive display, a memory card slot, a touch-pen, a processor, a memory card comprising software and data (b) the teaching concept and data being arranged to simulate a geography quiz (c) wherein the quiz consists of a series of questions and answers characterised in that (d) each question being activated by clicking with the touch-pen on one of several available question symbols (e) each answer being given by clicking with the same touch-pen on one of a plurality of answer symbols (f) a correct or incorrect answer resulting in corresponding graphical or audio feedback signals (g) the quiz ending when all available questions have been answered or after a predefined time interval.

10.1.3 Examiner Observations Despite the prominence given to them, the closest prior art learning tools for the claimed invention are not the electronic boards with interchangeable printed covers mentioned in the description, but existing game or computer consoles which are commonly known to exist and as distributed from major manufacturers.

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For this example, it is to be supposed that a geography quiz is not available for this type of console. The claimed geography learning tool thus differs from the closest prior art by the learning content. The particular way the console is operated upon during the geography quiz, i.e. the use of a touch-pen for answering questions by clicking on symbols displayed on the touch-sensitive console display, is known from other learning modules for this type of console which are also available on memory cards. Since the description did not mention any obstacle for implementing the claimed geography quiz, it has to be assumed that a console programmer would implement the geography quiz just like any other existing quiz comprising questions and answers. Therefore a skilled person would implement the claimed learning tool without any inventive skill. The reader might doubt that patent applications as in example 1 are really filed with patent offices, however it is the case. It is noted that the content of example 1 could realistically be part of a patent application filed in IPC G09B7/00 and that some patent systems foresee the possibility of granting patents for programs for computers even when their action relates to other matter which falls under the exclusion list of the EPC. Once past the requirement of presence of any technical character at all, the EPC has a relatively graded response to subject matter. In the US system, for example, the requirement of statutory matter is somewhat more generous in its later implications for what may be considered inventive. In other patent systems, claim 1 nevertheless would most probably not be considered inventive over other software programs for existing game consoles. If the applicant were to modify his claim during the examination phase to a system claim comprising all console elements mentioned in bullet (a) of claim 1, a tactic observed quite regularly during substantive examination before the EPO in a “throw the kitchen sink at it” act of desperation, it would still not be regarded as involving a inventive step.

10.2

Example 2: Internet-Based Interactive Learning System

10.2.1 Description Interactive globes which operate in conjunction with an associated touch-pen have previously been used for entertainment and educational purposes. Known globes consist of a base part and an upper part made of a coloured sphere with maps. The base part comprises several buttons for selecting the games and quizzes to be played. A memory module stores the facts about the countries. The touch-pen allows the user to select locations on the globe. Traditional globes are faced with the problem that by the time they have been manufactured, some of the knowledge stored in the globe is already out of date.

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A further problem of globes is the level of detail of areas of interest due to the uniform scale over the whole globe. Small countries or other areas of interest like cities and national parks cannot be explored with a satisfactory level of detail. A solution as presented in the previous example consists of providing a memory module with updates. Although data stored in the globe can be updated every now and then, the memory module is nevertheless faced with the same problem of obsolete data. Replacing the data stored in the globe by updated data from a memory module is cheaper than replacing the whole globe but does not solve the problem of providing up-to-date values for globe data like population, currency and world leaders to name just a few. The new concept for interactive globes comprises an interface, provided in the base part of the globe, by which the globe can be connected to a general purpose computer (Fig. 10.1). A software driver is provided in order to allow the automatic connection of the globe to a remote server via the general purpose computer. By virtue of connecting the interactive globe, via the computer, to an Internet server, up-to-date values for all relevant facts can be downloaded into the memory module of the interactive globe. The access to the Internet server requires an access code which is provided with the globe. This code is valid for one year. After the first year, the user can purchase a new one year subscription. The solution to the second problem, the uniform scale over the whole globe, is solved by the provision of detailed maps. For this purpose the base part of the globe comprises a compartment that can be opened. When necessary, a flat detail map of choice can be placed onto the flat drawer surface of the compartment and used in conjunction with the touch-pen. Paper cards with representations of different geographic areas and different scales can be placed onto the flat drawer surface. RFID tags in the paper cards are read in order to determine which card has been placed onto the drawer surface. The interactive geographic learning tool thus allows the user to explore the globe as a whole on a uniform scale and chosen areas of interest with a scale such that the paper maps fit in and onto the interactive compartment of the base part of the globe.

Fig. 10.1 Interactive globe

10.2 Example 2: Internet-Based Interactive Learning System

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10.2.2 Claim 2 Interactive geography learning system comprising: (a) (b) (c) (d)

a base part having multiple buttons for selecting and playing games and quizzes an interface for connecting the base part to a general purpose computer a sphere with a touch-sensitive surface, connected in a rotatable manner to the base part (e) a touch-pen, connected to the base part via a cable, for selecting locations on the sphere (f) a memory module for storing the globe facts (g) and a processor characterised in that (h) the interactive globe can be connected to a remote Internet server for replacing out-of-date globe facts by up-to-date values (i) the base part comprises a compartment which can be opened and onto which interchangeable detailed maps can be placed.

10.2.3 Examiner Observations The geographic learning tool differs from traditional interactive globes by features (h) and (i). However, those features do not interact to provide a synergistic effect. Therefore the features of claim 2 can, in some patent systems, be regarded as an aggregation, these features relate to partial problems which are not related in any way. In such patent systems, it is sufficient to show a lack of inventive step for each of the individual problems and their associated features and solutions. Let’s consider the first point, namely updating. The concept of updating firmware or user data in a digital device is known. Such devices are shipped with a driver on a CD for connecting the device through a general purpose computer to a remote server. Once connected to the server, parts of the data stored in the device can be updated. Known examples are portable navigation devices where the user can connect the navigation device through a USB interface and a local computer to a remote server for updating the firmware of the navigation device or for downloading updated map data. The similarity of technical infrastructure and implementation should be immediately evident and it is improbable that an examiner will be contradicted on the self-evidence of this. In the present example, the interaction between the globe on the one hand and the general purpose computer or the remote server on the other hand, does not go beyond the concept of downloading data and updating a digital device.

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The provision of detailed maps in a compartment of the globe does go beyond the simple combination of known interactive globes and interactive boards. The interactive boards mainly come with two electrically conducting contact probes whereas the electronic globe only has one touch-pen, which does not have an electrically conducting tip. The use of the touch-pen, together with interactive board does therefore require a technical solution. If sufficiently disclosed, this interaction could be the basis for an inventive step. The examiner would have to seek further detail and prior art in order to raise tenable objections.

10.3

Example 3: Computer-Assisted Teaching System

10.3.1 Description Traditional electronic globes exist in different designs. Some focus on the representation of political information, others illustrate natural landscapes like mountains, deserts, forests and grasslands. Hybrid globes are manufactured with illuminations that show, for example, political information when the light is switched off, but reveal both political and transparent natural landscape representations when the light is switched on. Independent of the type of the information represented on the electronic globe, the level of detail is limited. A typical problem of traditional electronic globes is that of their high scale. On a football-sized globe even the United States of America is only a few centimetres wide. If a user wants to see a selected region in more detail, he has to consult an atlas. It is also difficult to point at and touch a certain area of interest. A game or quiz mode must be limited to areas of relatively generous dimensions due to the limited resolution of the contact point of a touch-pen on the interactive globe. The aim of the present invention is the provision of an interactive geography course that allows the study of even the smallest geographic regions while preserving the pedagogic benefits of the presence and use of a real globe. The geography course makes use of an electronic globe as presented in example 2. The tutor can teach basic concepts using a three-dimensional scale model of the earth. Games and quizzes on a wide geographic level covering continents, oceans, countries and capitals can be performed using the touch-pen associated with the globe. For more detailed questions, the tutor switches to a computer implemented globe displayed on a general purpose computer connected to the Internet (Fig. 10.2). Such a computer could, for example, be a portable computer positioned next to the globe. Alternatively the tutor may use a projector. The information displayed by the computer globe can be adapted to the needs or interest of the tutor. It features real-time information like weather data, historic imagery consisting of images of a selected area from different points in time (showing the changes which have

10.3 Example 3: Computer-Assisted Teaching System

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Fig. 10.2 Computer-assisted teaching method

occurred in an area), saved tracks from class excursions, and all of these with the option of displaying on two- and three-dimensional layers.

10.3.2 Claim 3 Computer-assisted teaching method for interactive geography courses comprising the steps of: (a) using an interactive globe for teaching geography on a large scale (b) the interactive globe being connectable to a remote Internet server for replacing out-of-date globe facts by up-to-date values characterised in (c) switching to a computer-implemented globe for detailed views of smaller regions (d) selecting regions of interest via the computer user interface (e) receiving map data on the computer from a remote server (f) rendering a three-dimensional view of an area of interest (g) displaying the resulting view on the computer display (h) representing real-time data on graphical layers of the computer display (i) providing an application programmer interface (API) for integrating any kind of further web-based teaching material.

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10.3.3 Examiner Observations The reader is at this point probably thinking of a combination of a traditional globe as presented in example 2 and virtual globe software now available over the Internet, such as Google EarthTM . Both teaching tools are indeed already known from the prior art. In one case the globe of example 2 may be presumed to be known, and in the other, interactive 3D globe software is very popular and has been in common circulation since, at the latest, 2005. Claim 3 is directed however at a particular combined use of both learning tools in one course, but that does not yet result in an invention intimately related to a novel and inventive teaching method. The combination of both tools potentially results in a cognitive learning effect for the pupils. However, the possibility of an Internet update for the physical globe data does not provide any interaction with the computer-implemented virtual globe. The teacher must build a cognitive bridge between the two globes, and thus create a virtual learning unit. While in some patent systems the precise structure of the claimed course and the predefined uses of the tools might be sufficient to achieve patent protection, no inventive step would be acknowledged in patent offices requiring the solution of a technical problem, since the claimed combination of features would be regarded as an aggregation of known parts. Unless a surprising or unexpected technical effect were to be convincingly argued and substantiated through reliance on the disclosure as a whole, this objection would be considered a tenable reason for refusal.

10.4

Example 4: Interactive Educational Globe System

10.4.1 Description The closest prior art is the computer assisted geography teaching course involving an interactive globe as described in example 2. Providing interchangeable detailed maps in the base part of an interactive globe is already known. Paper cards with representations of different geographic areas and different scales can be placed onto the flat drawer surface. RFID tags in the paper cards are read in order to determine which card has been placed onto the drawer surface. Although numerous paper cards could be provided with all kind of information and zoom levels, interactive globes with Internet connections are limited to simple graphical representations. Furthermore, globes with small monochrome LCD displays incorporated in the base part for displaying gray-scale text or images are known from toy globes.

10.4 Example 4: Interactive Educational Globe System

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Also known is the provision of computer-implemented electronic globes that render a three-dimensional representation of an area of interest on a computer display. Such software allows the user to zoom in or access street level views, provides for the display of real-time graphical overlay information and permits the system to interface with other computer based learning software. The disadvantage of such a software-based virtual globe is the lack of an intuitive tactile interface and the need for a general purpose computer. It is the aim of example 4 to provide an electronic globe with a touch-pen that comprises a real three-dimensional sphere and which allows the user to zoom in on areas of interest on an associated, mid-size, colour display (e.g. 4.3 inch) by using the touch-pen. The solution of the above problem is thus provided in the form of an electronic globe (Fig. 10.3) that combines the advantages of the virtual and real educational globes known from the prior art. The inventive educational globe comprises one or more wireless communication interfaces. The globe can be used in a stand-alone mode or in a connected mode. Stand-alone Mode The additional touch sensitive display allows the user to access and have displayed detailed maps of selected areas of interest. When the user circles an area of intense and understandable interest on the globe’s surface with the touchpen, e.g. the particularly beautiful European country Luxembourg, the touch screen shows an enlarged view of the selected area of interest. Virtual buttons allow the user to further zoom in or to overlay additional information. City maps can also be loaded. The educational globe can further be provided with the full map functionality of a portable navigation device. Furthermore games and quizzes can be initiated and played through the touch screen.

Fig. 10.3 Interactive educational globe system

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Connected Mode If the educational globe is connected, e.g. via a USB connection, to a local computer which has an Internet connection active, it can also receive up-to-date information from a remote Internet server about areas of interest, shown on the touch screen of the globe or on the display of the computer. Examples are realtime weather data and real-time location dependent news (where the user can click on a region of the globe and thus see the latest news from that part of the world). In a preferred embodiment the educational globe comprises a local area wireless interface such as Bluetooth1 or WLAN (IEEE 802.11) which enables the user to wirelessly connect the educational globe to a local computer or a mobile phone in order to download real-time data, map updates or other information. In a further preferred embodiment, the educational globe comprises a wide area wireless communication interface (e.g. third-generation [3G] mobile telecommunications technologies like UMTS [Universal Mobile Telecommunications System]) in order to similarly download further data. In yet another preferred embodiment one or more fingers or other objects can be used instead of the touch-pen to interface with the touch-sensitive globe surface and/or on the touch-sensitive colour display. The modular design of the educational globe allows the producer to manufacture, package and sell the globe with different functions and expansion capabilities, thereby increasing possible market penetration and future upgrade sales.

10.4.2 Claim 4 Interactive educational globe system comprising: (a) a base part comprising a loudspeaker and a power supply (b) a sphere with a touch-sensitive surface, connected to the base part such that it can freely rotate (c) the base part further comprising: (c1) one or more interfaces for connecting the globe to a local or a remote computer (c2) a memory for storing up-to-date information or detailed map data (c3) a touch sensitive display arranged to show detailed maps of a region of interest or virtual context-sensitive buttons (c4) a wireless pen for selecting regions of interest on the globe surface or on the touch-sensitive display in the base part and for the remote control of the computer, wherein (d) said regions are shown on the display of the general purpose computer and/or on the touch screen in the base part of the globe together with any kind of further information related to a certain area of interest.

10.5 Special Topic – Lack of Disclosure

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10.4.3 Examiner Observations The interactive educational globe of example 4 now has features which are clearly novel over the globe known from example 2 and also over those with small monochrome LCD displays. It is assumed, for this example, that the claimed computer-assisted interactive globe does not yet exist on the market. First of all, it has a complete micro-computer and a colour touch screen in the base part of the globe housing. Secondly, where the globe of example 2 has interchangeable paper maps, the new globe includes all the standard features of a small computer and a colour touch screen, allowing the execution of various programs and the display of electronic maps in any zoom factor, as well as questions and answers, virtual buttons and any other graphical content. Thirdly, the micro-computer has been integrated into the globe housing. Last but not least, the new globe system also enables new forms of interaction, for example between the wireless touch-pen, the surface of the physical globe, the touch screen in the base part of the globe housing and the electronic globe on the computer respectively. The applicant may define further features of the globe in dependent claims. The fate of the application will now be dependent on the depth of disclosure concerning the integration of the micro-computer into the globe housing and on how the touch-pen interacts with the physical globe surface as input device for the micro-computer. Such an application, assuming the presence of appropriate depth of disclosure and a lack of further more pertinent prior art, has a rather good chance of being granted in patent systems requiring the solution of a technical problem but also in patent systems having other requirements for inventive step. The technical features of the claimed globe render possible the creation of interactive learning content, something which was not possible with the prior art systems.

10.5

Special Topic – Lack of Disclosure

The interactive globe of example 4 could be realised with many off the shelf components. The biggest difference between the claimed globe of example 4 and the globe of example 2 is the integration of the micro-computer with a colour touch screen. A globe engineer would therefore be motivated to look for existing microcomputers having all of the required hardware features as well as a collection of digital maps. A possible choice might therefore be portable GPS devices. The integration of the microcomputer (portable GPS device) into the globe would therefore require a hardware adaptation including connection between the

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electronic circuitry of the globe and the USB interface of the GPS device, a software adaptation for implementing new programs on the GPS device and an adaptation of the firmware of the GPS device for allowing new forms of data input, like the reception of geographic coordinates from the touch-pen’s interaction with the globe’s surface. The integration of a GPS device into the globe housing will pose some problems. Although connecting a portable GPS to a computer is known, as is running the portable GPS in an offline simulation mode, what is not obvious is how to control a GPS device in simulation mode with a touch-pen when it is connected via USB to some hitherto unknown electronic circuit. One essential feature required for the integration of a portable GPS device into a globe’s housing would therefore be a hardware interface between the GPS device and the globe housing. If this integration is not described in the application, a patent examiner at the EPO would object to lack of disclosure, because it requires more than daily routine programming of the skilled person to adapt the GPS to the inputs received from the touch-pen at the globe surface, and to implement all of the new features which would be needed to the portable GPS receiver. If however this integration is described in the application, the manufacturer of the globe and/or the portable GPS device could offer an interactive globe with a portable GPS device that works as a navigation unit on its own and as an educational tool together with the globe housing.

Chapter 11

Medical Informatics

Abstract If you want to file a patent application in the field of medical informatics you should be aware that you will encounter two types of patenting problems. Problems inherent to the patentability of computer implemented inventions and problems inherent to patentability of medical systems or uses. The purpose of this chapter is to give you an overview of these types of problems and their possible interworking. This is done by four different examples, each of them addressing a specific problem which you may encounter.

Definition of Medical Informatics Medical informatics lies at the intersection of information science and health care. It deals with the resources, devices, and methods utilised in order to optimise acquisition, storage, retrieval, and use of information in health. As a basic example, let’s take a situation where you believe you have invented a computerized method for assisting medical personnel and patients in their daily work or life, recording data about the patients, manipulating that data and perhaps basing some output or action on that data. Intellectual Property Protection for Medical Informatics Patent applications in this particular field have to take into account not only the essentials of the patenting of computer implemented inventions generally, but also the restrictions which exist in the majority of patent systems with respect to anything to do with medical care, be that diagnosis, treatment or surgery. In almost all countries considerable barriers exist against awarding patent protection for methods of therapeutic surgery or treatment, as this lies too close to the appropriately guarded area of responsibility of qualified medical personnel. Barriers against patenting inventions closely related to inventions which support methods of diagnosis are not quite so strictly guarded, however they are not treated in the same way as any method relating to a less sensitive area.

D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_11, # Springer-Verlag Berlin Heidelberg 2010

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It has to be noted that some countries follow a different path. In these countries obtaining a patent in the medical field is not more difficult than in other fields, but the exercise of a medical patent against third parties is limited by law. Before filing a patent application related to the use of a computer system in a medical environment, it would be wise to check if, from a computer point of view, you are fulfilling the criteria already explained in other parts of this book. If you are, then by all means continue checking whether you are fulfilling the criteria relating to a medical patent application. You should do this if for no other reason than, even if you get a patent for a medical informatics invention, some countries have restricted the use of such patents. As this is a rapidly evolving area of concern, it is always advisable to contact a specialised lawyer to get up-to-date information. Before filing a patent application in one country, ensure that your attorney checks and confirms not only the patentability criteria which will be applied (some of them will be explained hereafter) but also the possible limitation of patent rights in this field in the country in which you are applying for protection. Finally, you should check that the initially filed application has sufficient “meat” in it to allow it, or subdivisions of it, to survive in any other geographical areas in which you may be interested. Patent applications relating the incorporation of computers in medical areas are normally classified in class G06F19/00 (Digital computing or data processing equipment or methods, specially adapted for specific applications) of the International Patent Classification (IPC). It is worth noting that this class is generic and, for example, applications related to bioinformatics will also be classified under the same heading.

11.1

Example 1: Computer-Implemented Method for Managing Medical Treatment

11.1.1 Description Some people who suffer from particular illnesses have to follow very heavy treatment regimes based on taking different doses of different types of medicaments at various and varying times of the day. Such treatment regimes are difficult to understand and also to maintain, in particular for old people or people suffering from memory disruption. The innovative idea of the present invention resides in the use of a computer in order to aid them in following their treatment accurately. This is done by a program including as parameters the names of medication, the quantities which should be taken and the times when the patient should ingest or otherwise take the medicines involved. A computer including this program will then advise the sick person of when he has to take a medicine by sending a message to this effect via a pop-up window which appears with an appropriate message prompting the patient (Fig. 11.1).

11.1 Example 1: Computer-Implemented Method

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Fig. 11.1 Computer implemented method for helping a person with an illness

11.1.2 Claim 1 A computer implemented method for helping a person with an illness in the management of the taking of his/her medication characterised in that: (a) a computer is provided with all the necessary information such as (i) name of the medicine (ii) quantity to be taken (iii) time when the medicine has to be taken (b) the computer sends a message to the patient to inform him/her when he or she has to take a particular medicine.

11.1.3 Examiner Observations From the point of view of a patent examiner, this claim relates only superficially to a medical use. In fact it really relates to the administration of medicines. The patentability of such a claim will depend more or less completely on the practice of the patent office responsible with regard to patenting of administrative measures. Accordingly, at this level of definition, the reader should refer more to the corresponding chapter of this book (see Chap. 3, “Administrative Methods”). The medical part of this application is not relevant simply because it is not explained. The medical analysis of the patient situation is not even related in any meaningful way to any improvement the applicant is attempting to justify via actual definition in the claim. Therefore, the only objections you will have to overcome relate to the computer aspects. In the present example, the level of definition of any informatics is so ridiculously tiny as to reduce the prospects of the granting of a patent to the realms of “future ludicrous example”. The mere listing of technical sounding specifications of the names of the medicines or the quantities prescribed or the way the patient is

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informed will a priori also not be useful. These would simply be labels, headers for a dataset with no technical impact on the operation of the computer in any particular way.

11.2

Example 2: Computer-Implemented Medical Pre-diagnosis

11.2.1 Description In some countries, gaining access to a doctor is difficult, and in some cases you have to wait for hours or days before meeting competent medical advisers or until they can attend you. This may be due to geographical remoteness, extreme waiting lists due to underfunding of or shortages in Public services, or simply poor service provision. In such situations, people hesitate to ask for the presence of a medical doctor if they are not really sure that they need one, which of course carries the inherent risk that by the time that the need becomes apparent, it may be too late. It is therefore a goal of the present applicant to define a system which allows a patient to carry out a medical pre-diagnostic check on his health status by himself in order to allow him to make an informed decision on whether or not it is necessary to contact a doctor. The patient introduces data relating to his health, for example temperature, pains, type of pains, duration, etc., into a computer information system. According to the information entered by the patient, a program is able to make a pre-diagnosis. In light of this pre-diagnosis, the patient can decide whether or not a doctor’s presence is necessary and possibly start a course of medication based on the results given by the computer (Fig. 11.2).

Fig. 11.2 Computer implemented method for defining a medical pre-diagnosis

11.2 Example 2: Computer-Implemented Medical Pre-diagnosis

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11.2.2 Claim 2 A computer implemented method for defining a medical pre-diagnosis characterised in that: (a) a patient will enter personal medical data such as, temperature and/or type and place of pain(s) into the computer (b) the data entered by the patient is compared with basic symptoms of common illnesses stored in the computer (c) based on this comparison a medical pre-diagnosis is made by the computer system and communicated to the patient.

11.2.3 Examiner Observations In this example, the patent examiner will be confronted with problems again related more to the patentability and inventive step of patent applications in the area of computer implemented administrative ideas. This time however, he may also consider that the application lacks sufficiency of disclosure due to the manner in which the claimed comparison is made between illness symptoms and data entered by the patient, as this is not defined to any depth. Beyond that, he will now also be confronted with the problem of dealing with the patent application as a diagnostic method. Depending on the practice of his patent office, his examination may follow (at least) three different paths. Path 1 If the level of technical disclosure is not considered an important criteria, and the patenting of a diagnosis method is not an issue, then his examination will purely depend on the closest prior art available to him and be judged on inventive step. Path 2 If the level of technical disclosure is not an important criteria but patenting of a diagnosis is very restricted or even forbidden, then, independently of the prior art available to him, he will raise objections due to the fact that there is a claimed diagnostic method. As the applicant, in order to overcome this objection you may be tempted to delete feature (c) of the claim resulting in the method stopping after the comparison and not including a communication of the pre-diagnosis. By doing so, you will overcome the objection based on the diagnostic step, however your claim is limited to features (a) and (b), and no longer makes much sense. You will probably be confronted with clarity objections and possibly (if applying a European first-to-file attitude towards extension of scope beyond the original filing) be prevented from filing such amendments anyway.

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Path 3 If the level of technical disclosure is an important criteria and patenting of a diagnosis is very restricted or even forbidden, then getting a patent for your claim will be very difficult, if not impossible. This is the situation in Europe. The examiner may object on the lack of inventive step based upon the level of definition of the computer aspect saying, for example, that it is simply a normal computer being used for a non-technical purpose but operating in its normal way (see Chap. 2, “Business Methods”). He may also object on the basis of the lack of patentability of the diagnosis steps (see above path 2). In that situation, the filing of this patent application in a country having the legal patenting requirements presented was probably not a very good idea. At best it was a waste of money, at worse it may be the equivalent of paying to wear a t-shirt saying “Kick Me!”. Even were you to somehow convince the patent examiner that your invention overcomes the basic objections for patenting a computer implemented invention, and that it shouldn’t be closed out as being a diagnostic method but rather it merely supports such a method, then you will have to overcome the novelty and inventive step hurdles depending on the prior art documents which will become available in the proceedings.

11.3

Example 3: Computerized Method Supporting Medical Diagnosis

11.3.1 Description Nowadays, sophisticated medical aids such as computer aided tomography scanning or magnetic resonance imaging (MRI) give doctors a lot more information on the health status of their patient than was previously available. The amount of information is so important and of such high resolution in all sorts of areas that the sheer volume of data is so vast that doctors may experience difficulties coping with this mass of information in a manner which is beneficial to their patients. The purpose underlying the research which forms the basis of this application was to attain the goal of managing this information in an advantageous manner, centralising all these data sources, to address the problem of their sheer volume by ranking them before presenting them to the doctor. This is achieved by developing a computer system able to compare all the information delivered by the different machines which have been used in analysing the patient and, based on this comparison, provide the doctor with a ranking of the different results according to their determined importance (Fig. 11.3).

11.3 Example 3: Computerized Method Supporting Medical Diagnosis

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Fig. 11.3 Computerized method for supporting a medical doctor

11.3.2 Claim 3 A computerized method for supporting a medical doctor in his job of defining the health status of a patient characterised in that: (a) all the results of the different medical analyses of the patient are stored in a computer (b) the computer treats the stored medical information resultant from step (a) and attributes a ranking to the different results of the various analyses, dependent on their relevance for judging the health status of the patient (c) a listing of the final ranking made by the computer is provided to the medical doctor.

11.3.3 Examiner Observations As no diagnosis or pre-diagnosis is made by the computer, the concerns which may occur otherwise concerning patenting of a medical diagnosis are not an issue. Had step (c) been differently worded then this would be more problematic; let’s say: (c) A list of possible illness is made by the computer and provided to the medical doctor. With such wording then you, as the applicant, would be in the same situation as depicted in example 2 rather than example 1. With the actual wording, the computer is just sorting the medical information in order to present it in a form that is easier for the doctor. Thus the problems you will experience with patent examiners will be more related to the computer þ administrative aspect of your invention. Note also that had your real invention been a method for rendering different formats given by the different medical apparatus compatible in such manner that direct comparison could be made possible between the results of these, then you would have a technical invention which would be patentable per se and it would be

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foolish to limit this unduly, rather you should concentrate fully on this clearly technical process and spend time and effort investigating the possibility of inventive step in this area.

11.4

Example 4: Computer-Controlled Surgery

11.4.1 Description A growing amount of surgery nowadays is carried out with the aid of a laser. Lasers are capable of cutting skin with a high level of precision and are used, for example in case of skin cancer, to take away very limited areas of tissue. In such circumstances it is always better for the patient to reduce the amount of tissue taken away to the bare safe minimum. When a human doctor operates, he is always tempted to “play safe” and take away more tissue than necessary, in order to minimise the risk he runs of leaving behind bad cells which may then cause further damage. This may happen even when an area of “safe” removal has been decided upon in advance. The applicant has developed a computerized method for operating on a patient in order to address this problem. A computer automatically controls a laser used in the operation in such a way that the minimum necessary amount of tissue is burned away. Sensors, placed by the competent doctor on the skin, define precisely the perimeter of the skin surface to be taken away. The computer controlled laser then follows exactly the perimeter of the surface defined by the sensors and removes neither more nor less than that which was decided on as the “safe” level. The doctor can also enter the depth of tissue to be removed. The precision of the operation carried out by way of the laser under the control of a suitably instructed computer has been found to be considerably more reliable and better in terms of accuracy of result than the same operation performed by a human doctor (Fig. 11.4).

11.4.2 Claim 4 A method of surgery for removing cancerous skin tissue characterised by: (a) a computer controlled laser is provided (b) the computer controlled laser cutting beam following a perimeter defined by sensors placed by the medical doctor on the skin of the patient (c) the depth of the operation being predefined by a medical doctor (d) the computer controlled laser cutting and vaporising tissue within the perimeter defined by the sensors up to the depth of operation predefined.

11.4 Example 4: Computer-Controlled Surgery

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Fig. 11.4 Method of surgery for removing cancerous skin tissue

11.4.3 Examiner Observations In such a case, the computer part of the invention is not a problem, as the data used in the process is of technical nature. Medical data is inherently of technical character even if it carries with it other problems. This may be seen in contrast to financial or commercial data which is normally rather of a cognitive nature and not accorded the status of “technical character” in Europe. The disclosure also appears to be sufficient and thus this requirement also seems to be satisfied, at least when reference is made to the description. What may well have to be done is that the type of sensor has to be specified, the connection between computer, laser and sensors could also perhaps be improved. In summary, the technical infrastructure has to be defined in the application as a whole and this aspect of the application will be just fine. The problem will be the surgery aspect. The majority of countries with functioning patent systems are very reluctant to or indeed, even forbid the patenting of surgical methods. Trying to patent a method of surgery is often a source of problems for the applicant as it puts the protection mechanism into conflict with basic rights and duties in society. The problems you will have to overcome are thus equivalent to the ones defined in path 2 of example 2 of the present chapter. It has to be noted that this entire issue is only given importance in this case because of the openness of stating that which is to be cut by the laser, and who is involved. A decision to grant a patent for a method for cutting some undefined material with a computer controlled laser would depend only on the closest prior art available to the examiner, because such a method will always be considered as having a technical content and solving a technical problem. Once it is specified however that the “undefined material” is human skin or any other part of a human body, then the examiner may have to make a principal

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objection based on the rejection of patenting of surgical methods, depending on the patent law he has to follow. Removing such subject matter in order to overcome the objection will of course run foul of the European system of an objection concerning extension of the application beyond the scope of the original filing (as, before, only skin was removed yet modified wording would cover absolutely anything).

11.5

Conclusion

In this section, we have seen that in some technical fields you may have an aggregation of problems under varying parts of the law and may run foul of these in series or parallel, and indeed may run from one to the next when attempting to overcome the possible objections a patent examiner will have to raise according to the patent law current in his area. Again, if you want to get patent protection in some “sensitive” fields such as those related to medicine, biotechnology, nanotechnology, etc., contact a patent expert who is specialised in that particular field. It is reminded that some countries may allow patents in the medical field but then limit the exercise of such medical patents against third parties by law.

Chapter 12

Mathematical Methods

Abstract In this chapter we will set out why a mathematical method should, a priori, not be patentable even if implemented in a computer. The reasoning is similar to that for a discovery or a new scientific theory, although the specifics and argumentation may vary from patent law to patent law. Nevertheless a mathematical method which has been developed in order to solve a technical problem in a technical field, and which is claimed as a method for improving a technical system, may in some situations fulfil all the requirements of patentability. There are two examples this time. Again, the focus will be on the importance of the initial stages of drafting of the patent application.

Intellectual Property Protection of a Mathematical Method All the patent laws we have considered foresee, in effect, an exclusion from patentability of discoveries, new scientific theories and mathematical methods. One could imagine then that, logically, the discussion is then closed, and that it is simply not possible to get a patent for a mathematical method. Ah, but were life so simple. If the new mathematical method you have developed responds to a particular technical need or is part of a process for improving a specified technical system, then your mathematical method will probably be considered as part of a technical process and therefore the grant of a patent will only be dependent on the prior art at the disposition of the examiner. Patent applications relating to mathematical methods, implemented in a computer, are normally classified in class G06F17/10 of the International Patent Classification (IPC), under the heading “Complex mathematical operations”. It should be noted that where a patent application to a mathematical method is related to a special use, it will normally be classified in the IPC class of this special use, for example a mathematical method developed for improving the encryption of data in a chip card will be classified in the class related to that area, namely in G07F7/10.

D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_12, # Springer-Verlag Berlin Heidelberg 2010

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Example 1: Mathematical Method for Defining Points of a Graph

12.1.1 Description A mathematical function F(t) depends on multiple time varying variables x(t), y(t), . . ., z(t), accordingly F(t) ¼ F(x(t), y(t), . . ., Z(t)). The different variables x(t), y(t), . . ., z (t) being interrelated. Representing the function F(t) via a graph can be very difficult and time consuming. We have developed a new mathematical method in order to quickly determine the relevant points of this graph, which can then be drafted more quickly with a minimum loss of precision. Due to its complexity this method cannot be realized manually but needs to be implemented in a computer. The number of relevant points and their values can be estimated by the following mathematical steps: step (a) . . . step (b) . . . ⋮ step (n) . . .

12.1.2 Claim 1 Method for defining the graph of a function F(x(t), y(t), . . ., z(t)) comprising different time varying interrelated variables x(t), y(t), . . ., z(t) in which the number of relevant points and their values are calculated by a computer applying following mathematical steps in order to reduce the calculation time and keep the loss of precision at a predetermined level: step (a) . . . step (b) . . . ⋮ step (n) . . .

12.1.3 Examiner Observations Even if this mathematical method is complex and has to be implemented by a computer, it is still a pure mathematical method and therefore a priori excluded from patentability by all patent laws we are considering. If we were to use EPO language, we would say that what is claimed is a mathematical method as such and therefore excluded from patentability even if implemented by a computer.

12.2 Example 2: Mathematical Method for Treating a Video Signal

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The only possibility for the applicant to argue against this with any chance of success, would be to discuss that the gain of time for drafting a reasonable graph representing the function F will imply less CPU time and an optimized use of the computer. This argumentation will probably not be followed at the EPO (i.e. nice try, no banana) because you are not really optimizing the CPU time at all. As you are not calculating the same number of points, you are not optimizing the use of your CPU, but rather just calculating something different according to different formula for a different (even if similar) result. This last point is really quite important because, as a patent examiner, it is an argument we deal with regularly: “With my new computer implemented business or administrative or simulation method I need less CPU time and therefore I solve the technical problem of optimizing the resources of my computer system”. This argument, optimizing resources of computer system, will normally be accepted by the examiner only when the computer system is carrying out the SAME operation in a more efficient way, and will require significant disclosure in the application as originally filed. For example if you find a (mathematical) method for better distribution of the load between different CPUs when performing the same operation, you can argue that you are solving the problem of optimisation of computer resources; then you may just about have a chance of entering the realms of patentability.

12.2

Example 2: Mathematical Method for Treating a Video Signal

12.2.1 Description A video signal can be regarded as a mathematical function F(t) dependent upon multiple time varying variable x(t), y(t), . . ., z(t), such that F(t) ¼ F(x(t), y(t), . . ., z(t)). The different variables x(t), y(t), . . ., z(t) are interrelated. Transposing this function to images on your screen can be very difficult and time consuming. We have developed a new mathematical method in order to quickly determine the relevant points of the images we wish to project onto the screen such that the processing is quicker and at the same time carried out with a minimum loss of precision. This method can be implemented by a home computer with relatively low CPU power, whereby the video can be seen on the computer screen. The number of relevant points of the images to be shown and their values can be estimated by the following mathematical steps: step (a) . . . step (b) . . . ⋮ step (n) . . .

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12.2.2 Claim 2 Method for treating a video signal which is to be visualized on a computer screen, the video signal being in the form of a mathematical function F(x(t), y(t), . . ., z(t)) comprising different time varying interrelated variables x(t), y(t), . . ., z(t) in which the number of relevant points of the images to be visualized and their values are calculated by the computer CPU, in order to reduce the calculation time and keep the loss of precision at a predetermined level, by applying the following mathematical steps: step (a) . . . step (b) . . . ⋮ step (n) . . .

12.2.3 Examiner Observations Even if the proposed mathematical method may be the same as that for example 1, you have limited your invention to a particular technical environment, namely the treatment of video signals. Your invention will be perceived as a way to compress signals or extract important information and no longer equated only with an abstract mathematical idea. At this point you then have a good chance to get a patent if the prior art available is not relevant. It should be noted however that the prior art which will in all likelihood then emerge will probably be a different mathematical method for treating a video signal in some similar manner. The examiner will then have to compare two different mathematical methods in order to decide on obviousness or inventive step. A good suggestion would thus be to make the examiner’s life easier (we really don’t mind) by informing him, as early as possible and preferably in the application, of the technical advantages derivable from your new mathematical method (for example, a better definition of the image, attained in terms of the same CPU time in comparison with any systems known from the prior art). The claim for which you may have a chance of grant would then necessarily be more detailed that the one drafted in this example. You would have to define what the variables x(t), y(t) or z(t) actually represent, for example colours or pixels in an horizontal line or . . .. The person skilled in the art has to gain some insight into how to apply your invention and therefore would have to know what the variables represent. If however he does not have all the information in the application as originally filed in a sufficiently complete form, and he has to figure out what x(t), y(t) or z(t) are, then you may face a linked objection to a lack of sufficiency of disclosure. Such an objection is not easy to overcome and your application will likely be refused.

12.3 Conclusion

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169

Conclusion

If you have developed a new mathematical method as an abstract entity, without any concrete implementation leading from that, then your invention will be treated like a new scientific theory or a discovery and you will have no chance of getting a patent. Filing a patent application will then be a quite expensive way to publish your invention, if indeed that is your sole intention. But, if you had to develop a new mathematical method in order to solve a technical problem in a technical environment, then you can draft your application in such a way that the technical implementation is completely disclosed. If you follow that path, you then only face the gauntlet of the prior art and other objections the examiner may raise.

Part III

Chapter 13

Case Law

Abstract Decisions of courts or appeals instances have different levels of importance in different legal systems. In some, a decision from a certain level of court is more or less binding on lower instances and can only be truly overturned by an even higher instance issuing a decision in a different direction. Of course, when that happens you can end up with a situation which becomes problematic later even if it does provide a solution in the short term; you just never know what is round the next corner. Here we simply list some decisions which may or may not have been mentioned within this book. As they are a matter of public record there is little point in repeating their content, and anything other than the briefest summary may lead the reader astray. Rather, we would encourage you to look up the decisions and read them in full. Better still, bearing in mind that such decisions are taken on files which have some history, if you can, look up the original decision which went before the referral to the board or court.

In the EPC there are varying levels and types of Boards of Appeal, and the decisions they issue are marked according to this by the first letter of the decision reference number. The most common type of decision from the EPO Boards of Appeal which is of concern to the present subject is the “T” decision. This denotes the “Technische Beschwerdekammer”, which is the technical board of appeal (the use of German language will become clear in a moment). Such boards comprise a mix of legally and technically qualified members. They decide on cases which arrive at appeal from the examination procedure (so only an applicant is involved) and opposition procedure (where proprietor and/or opponent/s may feel cause for appeal exists). “T” decisions are binding on the instance to which they are directed, on the case upon which they were made. They may be taken as a guide by examiners, or indeed other Boards of Appeal, on cases with similar content, but are not absolutely binding on that instance. “T” decisions (amongst other types, such as “J” decisions – “Juristische”, Legal board of appeal which is made up of legal members in order to consider points of procedure which do not have technical content) and “G” decisions (“Grosse D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_13, # Springer-Verlag Berlin Heidelberg 2010

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Beschwerdekammer”, the Enlarged board of appeal, which will be discussed next, though at least the reason for the use of German should now be clear) are occasionally summarised in a collection issued by the EPO as a “Case Law of the EPO” book. They are also the primary source for consideration when the Guidelines for Examination of the EPO are edited. When a particular “strain” of case law becomes established, it is gradually integrated into standard working practice at the EPO, allowing a steady development and adaptation of working practices. The idea behind this is straight-forward, to allow change but to avoid both shocks to the system and dead ends. Cases before the boards carry a reference to the year of filing of the appeal, not the year of the decision. “G” decisions are not an everyday occurrence. The Enlarged board sits only on specific issues and can only be called on in a limited number of ways. The decisions bearing a “G” have considerable weight; they are referenced directly from the Articles of the EPC and, when clearly applicable, are binding on all parts of the EPO including the Boards of Appeal, which otherwise enjoy independence in decision making. With an outcome only expected some years after a referral, G3/08 was a referral to the enlarged board concerning the patentability of computer implemented inventions and software in particular. The following non-exhaustive list of case law decisions is intended for providing you with further information if you want to deepen your knowledge. It has to be noted that the examples of the previous chapters may have been inspired by, but have not been directly derived from these decisions. The case law decisions are provided with their headnote(s) or catchwords if available.

13.1

Chapter 1: Introduction, General Case Law

13.1.1 T208/84 Vicom. Digitally processing images in the form of a two-dimensional array of pixels, for example to smoothen or sharpen the image. Headnote I.

Even if the idea underlying an invention may be considered to reside in a mathematical method a claim directed to a technical process in which the method is used does not seek protection for the mathematical method as such. II. A computer of known type set up to operate according to a new program cannot be considered as forming part of the state of the art as defined by Article 54(2) EPC. III. A claim directed to a technical process which process is carried out under the control of a program (whether by means of hardware or software), cannot be regarded as relating to a computer program as such.

13.1 Chapter 1: Introduction, General Case Law

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IV. A claim which can be considered as being directed to a computer set up to operate in accordance with a specified program (whether by means of hardware or software) for controlling or carrying out a technical process cannot be regarded as relating to a computer program as such.

13.1.2 T26/86 Koch & Sterzel. Computer control of an X-ray tube to protect against overload but obtaining optimum exposure. Headnote 1. The EPC does not prohibit the patenting of inventions consisting of a mix of technical and non-technical features. 2. In deciding whether a claim relates to a computer program as such it is not necessary to give a relative weighting to its technical and non-technical features. If the invention defined in the claim uses technical means, it can be patented provided it meets the requirements of Articles 52-57 EPC.

13.1.3 T935/97 IBM, Computer Product Keywords Exclusion of computer program product from patentability (not under all circumstances)

13.1.4 T1173/97 IBM, Computer Product II A computer program product is not excluded from patentability under Article 52 (2) and (3) EPC if, when it is run on a computer, it produces a further technical effect which goes beyond the “normal” physical interactions between program (software) and computer (hardware).

13.1.5 T163/85 BBC. New class of claim dealt with – a signal propagating through space. A colour television signal characterised by technical features of the system in which it occurs, i.e. in which it is being generated and/or received does not fall

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within the exclusions of Article 52(2)(d) and (3) EPC and is regarded as an invention within the meaning of Article 52(1) EPC.

13.1.6 T0769/92 Sohei, Management System. A user interface for use in financial and inventory management. Headnote 1. An invention comprising functional features implemented by software (computer programs) is not excluded from patentability under Article 52(2)(c) and (3) EPC if technical considerations concerning particulars of the solution of the problem the invention solves are required in order to carry out that same invention. Such technical considerations lend a technical nature to the invention in that they imply a technical problem to be solved by (implicit) technical features. An invention of this kind does not pertain to a computer program as such under Article 52(3) EPC. 2. Non-exclusion from patentability cannot be destroyed by an additional feature which as such would itself be excluded, as in the present case features referring to management systems and methods which may fall under the “methods for doing business” excluded from patentability under Article 52(2)(c) and (3) EPC (following established case law according to which a mix of features, some of which are excluded under Article 52(2) and (3) EPC and some of which are not so excluded, may be patentable [in contrast to recent case law concerning inventions excluded by Article 52(4) EPC, see T 820/92, OJ EPO 1995, 113, according to which one feature excluded under Article 52(4) EPC suffices for the whole claim to be excluded from patentability]).

13.1.7 T641/00 Comvik, Two Identities. A mobile phone modified to have two identities such that operation and billing could be separated between two numbers Headnote I. 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. II. Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature

13.2 Chapter 2: Business Methods

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appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the 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.

13.1.8 UK Court Decision: Astron Clinica et al., England and Wales High Court [2008] EWHC 85 (Pat) Summarised consideration of EPO Board of Appeals case law and UK case law.

13.1.9 UK Court Decision: Autonomy Corp. Ltd., England and Wales High Court [2008] EWHC 146 (Pat) Analysing text and automatically executing a query, embedding an icon and generating links which show when the icon is activated. Analysis of UK and EPO case law.

13.1.10

US Court Decision: KSR v. Teleflex, 550 US 398 (2007)

Concerns the use of obviousness objections.

13.2

Chapter 2: Business Methods

13.2.1 US Court Decision: State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d 1368 (Fed. Cir. Jul. 23, 1998) 13.2.2 US Court Decision: In re Bilski, 545 F.3s 943, 88 USPO 2d 1385 (Fed. Cir. 2008) Concerns the examination of statutory subject matter.

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13.2.3 UK Court Decision: Shopalotto.com, Judgement of the England and Wales High Court [2005] EWHC 2416 (Pat) 13.2.4 T931/95 Pension Benefits. Administration of a pensions scheme. Headnote 1. Having technical character is an implicit requirement of the EPC to be met by an invention in order to be an invention within the meaning of Article 52(1) EPC. (following decisions T 1173/97 and T 935/97) 2. Methods only involving economic concepts and practices of doing business are not inventions within the meaning of Article 52(1) EPC. A feature of a method which concerns the use of technical means for a purely non-technical purpose and/or for processing purely non-technical information does not necessarily confer a technical character to such a method. 3. An apparatus constituting a physical entity or concrete product, suitable for performing or supporting an economic activity, is an invention within the meaning of Article 52(1) EPC. 4. There is no basis in the EPC for distinguishing between “new features” of an invention and features of that invention which are known from the prior art when examining whether the invention concerned may be considered to be an invention within the meaning of Article 52(1) EPC. Thus there is no basis in the EPC for applying this so-called contribution approach for this purpose. (following decisions T 1173/97 and T 935/97)

13.2.5 T258/03 Hitachi. Auction over a network with competitive state resolution. Headnote I. A method involving technical means is an invention within the meaning of Article 52(1) EPC (as distinguished from decision T 931/95-Controlling pension benefits system/PBS PARTNERSHIP)(see points 4.1–4.4 of the reasons). II. 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 (see point 5.7 of the reasons).

13.3 Chapter 3: Administrative Methods

179

13.2.6 T959/03 Ed Pool. International shopping system with cost calculation and electronic title/ invoice.

13.3

Chapter 3: Administrative Methods

13.3.1 UK Court Decision: Aerotel/Macrossan, Judgement of the England and Wales Court of Appeal [2006], ECWA Civ 1371 Means of perfoming administrative tasks. The Court called into question the track record of the EPO Board of Appeal.

13.3.2 T154/04 Duns Licensing Assoc. Estimating sales activity. Headnote I. Methods of business research are excluded “as such” from patentability under Article 52(2)(c) and (3) EPC. II. Gathering and evaluating data as part of a business research method do not convey technical character to the business research method if such steps do not contribute to the technical solution of a technical problem.

13.3.3 T172/03 Ricoh. Order Management system. Catchwords 1. 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. 2. 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

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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).

13.3.4 T368/05 Citibank. Integrated bank account system.

13.3.5 T845/05 Minerva Holdings. Assessing an application by analysis of answers and constructing forms. Keywords Inventive step – treatment of non-technical features Mere wish to automate a manual procedure – obvious.

13.4

Chapter 4: Digital Rights Management

13.4.1 T0953/04 Fujitsu Limited. Method of distributing software.

13.4.2 T0860/05 Fujitsu Limited. Method of and apparatus for protecting data on storage medium and storage medium.

13.4.3 T0043/06 Konica Corporation. Image data handling system, print generating system, and memory medium making system.

13.7 Chapter 7: Graphical User Interfaces

13.5

181

Chapter 5: Database and Database Management System

13.5.1 T701/06 Casio Computer. Grouping images taken according to where they were taken. Catchwords The idea of naming groups of images by where they were taken does not make a technical contribution (point 7 of the reasons).

13.5.2 T787/06 Sony. A server with automatic document assembly.

13.6

Chapter 6: Billing and Payment

13.6.1 T1108/06 Visa International Service Association. Electronic bill pay system.

13.7

Chapter 7: Graphical User Interfaces

13.7.1 T928/03 Konami. Visualisation of a possibly concealed graphic indicator in an interactive video game. Keywords Visualisation of a possibly concealed graphic indicator in an interactive video game – exclusively addressing a mental process (no) Shape of graphic indicator – merely aesthetic creation (yes) Specific implementation of game rule requirements – technical contribution (yes) Inventive step (yes)

13.7.2 T1188/04 Sharp. GUI allowing processing conditions to be set by drag and drop.

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Keywords Setting parameters by direct manipulations on a graphical screen – inventive step (yes – after amendment).

13.7.3 T125/04 Comparative Visual Assessments. Designing diagrams which convey information. Catchwords In general, the task of designing diagrams is non-technical. This is so, even if the diagrams arguably convey information in a way which a viewer may intuitively regard as particularly appealing, lucid or logical.

13.7.4 T769/92 Transfer slip, using a single input form for different processing types. Headnote 1. An invention comprising functional features implemented by software (computer programs) is not excluded from patentability under Article 52(2)(c) and (3) EPC if technical considerations concerning particulars of the solution of the problem the invention solves are required in order to carry out that same invention. Such technical considerations lend a technical nature to the invention in that they imply a technical problem to be solved by (implicit) technical features. An invention of this kind does not pertain to a computer program as such under Article 52(3) EPC. 2. Non-exclusion from patentability cannot be destroyed by an additional feature which as such would itself be excluded, as in the present case features referring to management systems and methods which may fall under the “methods for doing business” excluded from patentability under Article 52(2)(c) and (3) EPC (following established case law according to which a mix of features, some of which are excluded under Article 52(2) and (3) EPC and some of which are not so excluded, may be patentable [in contrast to recent case law concerning inventions excluded by Article 52(4) EPC, see T 820/92, OJ EPO 1995, 113, according to which one feature excluded under Article 52(4) EPC suffices for the whole claim to be excluded from patentability]). Keywords Non-exclusion from patentability – technical considerations to be regarded as resulting in a technical contribution to the art – no doing business as such – no computer programs as such – no presentation of information as such Remittal for further prosecution.

13.8 Chapter 8: Simulation

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13.7.5 T643/00 Searching for an image to be output. Images presented side by side at low resolution and hierarchically displayed at higher resolution. Catchwords An arrangement of menu items (or images) on a screen may be determined by technical considerations. Such considerations may aim at enabling the user to manage a technical task, such as searching and retrieving images stored in an image processing apparatus, in a more efficient or faster manner, even if an evaluation by the user on a mental level is involved. Although such evaluation per se does not fall within the meaning of “invention” pursuant to Article 52 EPC, the mere fact that mental activities are involved does not necessarily qualify subject matter as non-technical since any technical solutions in the end aim at providing tools which serve, assist or replace human activities of different kinds, including mental ones.

13.8

Chapter 8: Simulation

13.8.1 T1227/05 Infineon Technologies AG. Verfahren zum Erzeugen einer Folge von Zufallszahlen eines 1/f-Rauschens. Headnote I. Simulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method functionally limited to that purpose (point 3.1). II. Specific technical applications of computer-implemented simulation methods are themselves to be regarded as modern technical methods which form an essential part of the fabrication process and precede actual production, mostly as an intermediate step. In that light, such simulation methods cannot be denied a technical effect merely on the ground that they do not yet incorporate the physical end product (point 3.4.2).

13.8.2 T0421/06 Infineon Technologies AG. Verfahren zum bedarfsorientierten Erzeugen einzelner Zufallszahlen einer Folge von Zufallszahlen eines 1/f-Rauschens. Computergestu¨tztes Verfahren mit mathematischen Schritten zur Simulation des Verhaltens eines Schaltkreises unter dem Einfluss von 1/f-Rauschen – Technizita¨t (bejaht) Unbestimmter technischer Zweck – ausreichend fu¨r Deutlichkeit (verneint).

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Chapter 9: Games

13.9.1 T1543/06 Gameaccount. Adding skill aspect to a game of chance. No identifiable synergistic effect between games rules and the technical implementation.

13.9.2 T1023/06 IGT. Computer implemented game process. Arrangement of poker playing cards on a screen to allow multiple hands.

13.9.3 T336/07 IGT. Electronic multi-play poker with face-up hand in bottom row. Catchwords 1. The mere fact that subject matter, which is excluded per se under Article 52(2) (c) EPC, is technically implemented cannot form the basis for inventive step. Inventive step can be based only on the particular manner of implementation of such subject matter. To this end it is therefore necessary to ask how the per se excluded subject matter (e.g. a game or business method) is implemented (reasons 2.4) 2. A consideration of the particular manner of implementation must focus on any further technical advantages or effects associated with the specific features of implementation over and above the effects and advantages inherent in the excluded subject matter (reasons 2.5) 3. A set of game rules defines a regulatory framework agreed between players and concerning conduct, conventions and conditions that are meaningful only in a gaming context. It is perceived as such by players involved, and as serving the explicit purpose of playing a game. As such an agreed framework it is a purely abstract, mental construct, though the method and means for carrying out game play in accordance with such a set may well be technical in nature (reasons 3.3.1).

13.10 13.10.1

Chapter 10: E-Learning T0856/05

Novell, Inc. System and method for distance learning.

13.11 Chapter 11: Medical Informatics

13.11 13.11.1

185

Chapter 11: Medical Informatics G1/04

Medical method claims should be narrowly interpreted. Headnote I.

In order that the subject matter of a claim relating to a diagnostic method practised on the human or animal body falls under the prohibition of Article 52(4) EPC, the claim is to include the features relating to: (i) the diagnosis for curative purposes stricto sensu representing the deductive medical or veterinary decision phase as a purely intellectual exercise, (ii) the preceding steps which are constitutive for making that diagnosis, and (iii) the specific interactions with the human or animal body which occur when carrying those out among these preceding steps which are of a technical nature.

II. Whether or not a method is a diagnostic method within the meaning of Article 52(4) EPC may neither depend on the participation of a medical or veterinary practitioner, by being present or by bearing the responsibility, nor on the fact that all method steps can also, or only, be practised by medical or technical support staff, the patient himself or herself or an automated system. Moreover, no distinction is to be made in this context between essential method steps having diagnostic character and non-essential method steps lacking it. III. In a diagnostic method under Article 52(4) EPC, the method steps of a technical nature belonging to the preceding steps which are constitutive for making the diagnosis for curative purposes stricto sensu must satisfy the criterion “practised on the human or animal body”. IV. Article 52(4) EPC does not require a specific type and intensity of interaction with the human or animal body; a preceding step of a technical nature thus satisfies the criterion “practised on the human or animal body” if its performance implies any interaction with the human or animal body, necessitating the presence of the latter.

13.11.2

T542/06

BrainLab. Visualization of procedural guidelines for medical procedures.

13.11.3

T1814/07

Cardiac Intelligence Corp. Collection and analysis of patient disorders, ordering and prioritizing to identify an index.

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Catchwords In the assessment as to inventive step of a system or device for medical treatment or diagnosis all features and steps that contribute to the technical character of the system or device as a whole must be taken into account, even if, taken out of the context of the system or device, they would fall under the exception of Article 53(c) EPC (see point 3).

13.12 13.12.1

Chapter 12: Mathematical Methods T1824/07

Fraunhofer-Gesellschaft zur Fo¨rderung der angewandten Forschung e.V. A method for segmentation and identification of nonstationary time series.

Chapter 14

Conclusion and What Comes Next

We hope that reading this book has helped you to define your global Intellectual Property strategy, in particular where your invention includes the use of a computer, by helping you to understand how to optimise protection of your invention and not waste resources. We have been at pains to note that we can offer little in the way of guaranteed success (we’ll leave that to others!), however we can tell you one unambiguous truth; if you do not file a patent application, it is incredibly unlikely that you will ever be granted a patent. So if you decide that, along with relatively cheap IP rights (copyright, design, sui generis right for databases, etc.), you need to make the jump to investing money and time in a patent application, the most important lesson is to be sure that these are not squandered from the start. Take the examples from this book and select the closest ones in order to minimize the risk of filing a patent application for subject matter which has little or no chance of gaining patent protection. Do not simply file the lowest denominator of technical definition from all patent systems and be rewarded in Europe with a refusal of a business method implemented in a straightforward manner by way of a standard computer. It really is a very expensive piece of paper with news on it that you are unlikely to enjoy. Do not hesitate before filing a patent application to make a brutal cost/benefit analysis. You must be honest with yourself about, what the rough cost will be for a patent in all the countries you want or need, and what the benefits are that you hope to derive from the application or granted patent. These may be intangible or difficult to quantify in terms of competitors and market effects. It will also be necessary to update this analysis to reflect risk related to the extent of protection you may obtain in each authority concerned at the end and this scope can be different from country to country. Do bear in mind that, at least in the field of Computer Implemented Invention, there is little harmonization around the world concerning what can a priori be patentable. That is why we consistently recommend contact with a patent specialist D. Closa et al., Patent Law for Computer Scientists, DOI 10.1007/978-3-642-05078-7_14, # Springer-Verlag Berlin Heidelberg 2010

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to ask for advice. If you are considering patent applications according to differing regions with differing laws, then ask different patent specialists if necessary. Where can you find a good patent practitioner specialized in the field of CII? This can be especially difficult if you do not have acquaintances who have experience in the area and who can recommend “by word of mouth”. All major patent offices maintain lists of patent practitioners who are allowed to represent you before them. Normally such a list does not specify technical specialities but it can help you to find a patent practitioner in your vicinity. Contact one, and ask them if he has some experience in that particular field and, if not, whether he can recommend a colleague. A big patent law firm will normally have at least one specialist on CII, so if a big law firm has an office near you, visit them and ask to meet their CII specialist. Another possibility is to follow the prosecution of patent applications in the same field as your invention; check the name of the practitioner and if you think he did a good job then contact him. Be aware though that if your invention is technically too close to an application he is working on in the name of a competitor, then he will have to refuse to represent you to avoid a conflict of interest. A point of general concern to inventors is confidentiality and it is indeed wise to be concerned. Patent practitioners will normally immediately caution you on what you can say, and to whom, due to their own obligation to confidentiality. However specific secrecy agreements prior to discussion with others should not be overlooked by the inventor as a safety mechanism to avoid later confusion. Be aware that while in some jurisdictions (USA) it may be “safe” to disclose your invention to others (as there is a culture of “first to invent”), such a disclosure may be utilised as prior art against you in European type “first to file” systems. Get advice; forewarned is forearmed. Having analysed your invention in view of the teaching of this book, and decided to pursue the possibility of patent application as an option and contacted at least one patent specialist, you must explain clearly to him what your invention is, what you hope to achieve, which countries you are interested in patent protection for and listen to the options he will set out for you. Do not be surprised if some changes occur over the drafting process. It is essential that you explain the commercial background to the representative in order that he can help develop the business case – where income can be derived from the invention – for a patenting strategy before the patent is drafted. For example, a patent may afford protection for a new method of transmitting content via an encryption method; if the claims cover the encrypting unit there is the chance to get money from the provision of that unit; but more considerable income is likely to be derived from sales of the multiple decryption units necessary to utilise the content. Therefore the patent should also claim the decryption units. A patent that fails to cover where the money is, both in terms of geography and market, is an expensive mistake. It would therefore be remiss to omit claims providing some technical definition of the end user side. If you want to gain patent protection in different countries via an international application (a PCT application), be sure that this patent application contains, from

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the first filing date, all the necessary information which may be needed to overcome different levels and types of objections which will be made by the different patent offices. And then hope. The reception of the search report will give you a first indication of the value of your patent application. At any time you can decide to stop and withdraw your application thereby putting an end to the costs if you think that the benefits you can have for your possible patent are not sufficient. Come what may, we hope that by reading this book you will be in a better position to discuss the probabilities of success. We hope that you will be able to follow certain steps for your own safety before taking the decision to file a patent application and investing money and time in a patent prosecution. We also hope that you will now have some idea of how the subject matter is analysed and considered by the patent examiners.

Index

A Abstract concept, 126 idea, 118 Adaptation, 96, 101 Adding content, 37 Adequate specification, 37, 43 Administrative, 157, 159 nature, 51 requirement, 62 Aesthetics, 104 Aggregation, 72, 96, 124, 147, 150 Aircraft configuration, 120 Algorithm, 98 All parts of the claim in depth, 48 Ambiguous function, 136 Another ‘excluded matter,’ 54 Any other suitable recording means, 131 Assessment, 118, 125 Auction, 38 Automated response means, 43 Avalanche of refusals, 36

B Banking details, 91 system, 141 Barcode, 95, 98 Base objection, 80 Basic level of knowledge, 59 Battleships, 133 Bilski, 24 Biotechnology, 164

BlackBerry, 18 Boards of Appeal, 173, 174 Borderless Order Entry System, 19 Bottom end of the scale, 53 Business, 35 methods, 11, 51 problem, 65 strategy, 66

C Case law, 174 Circumvention of the technical problem, 62 1-Click patent, 17 Cluedo#, 131 Cognitive, 96 Cognitive learning effect, 122, 150 Colour matrix barcode, 99 Commercial aspects, 121 considerations, 68 Commodities, 39 Communication infrastructure, 92 Compatible device, 133 Competing buyers, 38 Computer-assisted teaching, 149 Computer-based training, 117 Computer-implemented globe, 149 Computer Implemented Inventions (CII), 187, 188 Confidentiality, 188 Considerations being applied, 61 191

192

Copyright, 76, 104, 187 Courts or appeals, 173 Criminal act, 141 Cryptography, 93

D Data being handled, 45 Data over the internet, 40 Date dependent, 133 Definition of money, 141 Design, 104, 106, 187 Diagnosis, 155, 159, 161 Differing jurisdictions, 49 Digital content, 63 goods, 63 music, 63 rights, 65 rights management, 81 Digital rights managemen (DRM), 63 concept, 65 scheme, 68 Directive 96/9/EC, 76 Disclosure, 101, 153 Discovery, 165 Documentary evidence, 40, 45, 61 Drafted to US standards, 36 Duplication of effort, 52

E E-books, 63 Education, 143 Educational globe, 151 Electronic globe, 148, 151 Eligibility, 69 Entertain, 130 Essential features, 154 European Patent Convention (EPC), 174 European Patent Organisation (EPO), 6, 26 Exemplary document, 141 Ex partes, 111 Ex post facto analysis, 62 Extend capability, 136 Extending beyond the application as originally filed, 142

Index

F Faux-technical terminology, 59 First to file, 37, 188 First to invent, 188 Flight simulators, 123, 124

G Games of chance, 129 G decision, 173 General purpose computer, 72, 121, 146, 148 Generic capability device, 134 Graphical user interface (GUI), 77

H Hardware adaptation, 153 Health care, 155 Hidden partition, 69 Hindsight, 99 Human common sense, 51

I Illness, 161 In-depth technical knowledge, 139 In dubio pro petitore, 54 Industrial revolution, 6 Information, 104 Insufficiently disclosed, 39 Integration, 154 Intellectual property, 187 Intensified gaming experience, 138 Interactive balancing of supply and demand, 46 Interdependency, 121 Interface of the gaming system, 129 International patent classification, 9 Inter partes, 111 Interplay of the clearly technical aspects, 49 Interpreted by the examiner, 42 Interrelation, 121 Inventive skill, 79 Inventive step, 66, 86, 96, 150 IP rights, 187

Index

193

J

O

Japanese Patent Office (JPO), 24 J decision, 173 Juxtaposition, 114

Obvious, 100 Obvious choice, 106 Optimizing resources, 167 Ordinary skills, 93

L Lack of ambiguity, 57 Lack of disclosure, 80, 153 Lack of evidence, 134 Lack of sufficiency of disclosure, 142 Learning tool, 144 Level of automation, 43 Level of protection being sought, 56 Licensing, 69 Limitation, 87, 108 Logical dissection, 53

M Manner of analysis, 55 Manufacturing process, 121 Marketing, 66, 121 Marketing idea, 37 Mathematical method, 108, 165 Mathematical modelling, 43 Meaningful search, 40 Medical informatics, 155 Medication, 158 Mere assertion, 62 Mixture of a large number of claim types, 140 Mobile telephone, 97 Model, 104 Modelling and simulation, 142 Models of actual physical resources, 139 Money laundering, 141 Multimedia message, 95

N Nanotechnology, 164 Non-technical specification, 66, 69 No search, 40 No technical definition, 56 Novel, 153 Novel aspects, 93

P Paper and pencil, 51 Paris Convention, 6 Partial problems, 141, 147 Particular constellation, 141, 142 Particular function, 53 Patentability ‘as such,’ 39 Patent classification, 6 Patent Cooperation Treaty (PCT), 6 Patent practitioner, 188 Payment, 89 codes, 97 scheme, 89, 90 PCT application, 188 Pen and paper, 42 Perceived information content, 135 Perception of value, 141 Performance, 118, 125 Personal computers, 92 Philosophical debates, 55 Physical aspects, 134 Pilot certification, 122 Pilot training, 117 Pop-up windows, 105 Pre-diagnosis, 158, 161 Premium service, 70 Pre-prepared standard forms, 54 Presentation of information, 137 Prior art, 82, 86, 96, 99, 127, 148, 151, 153 Priority right, 6 Problem and solution approach, 27, 72 Processing overhead, 57 Programming, 96 Programs for computers, 145 Property rights, 15 Public key, 68 Public/private key, 72

Q Quantum of technical definition, 42 Query, 78

194

Questions and answers, 144, 153 Quiz, 145

R Randomness, 132 Real-world money, 141 Refac, 19–20 Refund, 40 Regional, 49 Related to machines, 129 Reliability, 83 Reservation procedure, 97 Respective prior art, 127 Result to be achieved, 121

S Scientific theory, 165 Secrecy agreement, 188 Secret key, 71 Self-service kiosk, 199 Simulation system, 119 Skilled person, 79 Software, 8, 9, 20, 63, 75, 96, 100 adaptation, 154 patents, 8 Sorting, 161 Special technical features, 127 Specifications, 119 Specific prior art, 137 Spell checking system, 105 Standard low-level computer, 140 State of the art, 93 State Street Bank, 23, 35 Statutory matter, 118, 129 Stock markets, 36 Structure Query Language (SQL), 77 Sufficiency of disclosure, 86 Sufficiently disclosed, 79, 126 Sui generis, 76, 187 Surgery, 155, 162 Symmetric key cryptography, 65

T T decision, 173 Teaching, 117, 143

Index

Technical apparatus, 45 aspects, 72 character, 68, 118, 136, 163 character overall, 53 constraints, 46 disclosure, 159, 160 effect, 150 function attributable, 54 implementation, 83 issue, 48 problem, 65, 106 savings, 54 sounding terms, 42 Technicality, 28 Thinking in technical terms, 61 Threshold, 129 Totality of cause and effect, 48 Touch-pen, 147 Training, 117 Transaction code, 92 Treatment, 155

U Unexpected synergy, 141 Unnecessarily considering, 131 Unrelated features, 96 Update, 78 User/machine, 104, 114 US Patent and Trademark Office (USPTO), 23–24, 66 Utility, 104

V Vending machines, 94 Venetian senate, 4 Very basic idea, 61 Virtual capital, 137 environment, 137 screen, 135 world game, 137

W Width of protection sought, 136 World Intellectual Property Organisation (WIPO), 7