Panel Session VI: Computer implemented technologies: patentable?

Transcription

1 Panel Session VI: Computer implemented technologies: patentable? 1

2 Panel Overview Moderator: Ralph Nack, Assistant Reporter General of AIPPI (DE) Speakers: Richard Beem, Beem Patent Law, Partner (US) Ken-Ichi Nagasawa, Group Executive of Corporate IP & Legal Headquarters, Canon Inc.; President of AIPPI Japan (JP) Jonathan Moss, Hogarth Chambers (UK) 2

3 Where do we stand re patentability of computer related invention? Overview of current practices EPO/UK, JP, US How close are the national/regional practices? Discussing four hypothetical claims Possible avenues for harmonization? 2017 Sidney Study Question Does it make sense to agree on a catalogue of subject matter excluded from patentability per se? Does it make sense to focus on the actual contribution to the state of the art, asking whether it comes from an area of technology? Q &A Agenda 3

4 Part 1-1 Where do we stand re patentability of computer related invention? Overview of current practices: USA By Richard P. Beem The presenter accepts sole responsibility for any errors even while expressing thanks to colleagues Ray Ricordati and Alex Bara for their helpful input 4

5 US CII Patent Eligibility (1 of 2) 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 Judicial Exceptions Law of Nature Natural Phenomenon Abstract Idea o Fundamental Business Practices o An idea of itself o Mathematical Relationship/Formula o Method of Organizing Human Activity See USPTO 2014 Interim Guidance on Patent Subject Matter Eligibility 5

6 US CII Patent Eligibility (2 of 2) USPTO Eligibility Guidance 2014, 2015, and 2016 Updated Periodically New example claims with explanations and analysis New appendix of court decisions Tips for eligibility Technical solution for a technical problem Real world application New improvement to computers or other technical fields The problem arises in technology (no brick and mortar equivalent) 6

7 US Supreme Court Trilogy Gottschalk v. Benson (U.S. Supreme Court 1972) Cannot patent binary shift register Parker v. Flook (U.S. Supreme Court 1978) Cannot patent known formula to adjust alarm limits Diamond v. Diehr (U.S. Supreme Court 1981) Can patent method of molding and curing synthetic rubber 7

8 State Street Bank (Fed. Cir. 1998) Anything under the sun is patentable Modern US Cases Any business method is patentable as long as it produce[s] a useful, concrete, and tangible result Bilski (Fed. Cir. 2008) Machine or transformation test Bilski (U.S. Supreme Court 2010) Machine or transformation not the only test, but Bilski s software added nothing new or inventive CLS v. Alice (Fed. Cir. 2013) Divided court affirmed invalidity of certain business method claims but failed to define patent-eligible subject matter 8

9 From USPTO 2014 Guidance 9

10 Enfish v. Microsoft (Fed. Cir. 2016) Self-referential database allows different entity types in a single table Federal Circuit denounced the idea that Alice renders all CII abstract Improvement in computer capabilities not an abstract idea (Step 2A) However, claims construed narrowly and found not infringed 10

11 Bascom v. AT&T (Fed. Cir. 2016) Website filter prevents access by individuals at ISP level Claims not abstract as a whole (Step 2B), 35 USC

12 Tips for US Patent Prosecution 1. Technical details and technical problem/solution 2. Expect rejections 3. Drafting for amendments in prosecution 12

13 Part 1-2 Where do we stand re patentability of computer related invention? Overview of current practices: UK/EPO Alice is lost in Wonderland By Jonathan Moss 13

14 The UK Approach Section 1(2) Patents Act 1977 It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of (a) a discovery, scientific theory or mathematical method; (c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer; (d) the presentation of information; but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.

15 The UK Approach UK: the Aerotel approach, as modified by Symbian UK test is, in essence: Is there relevant or enough technical effect, or put another way are enough of the signposts satisfied? The real question is whether this is a relevant technical effect, or, more crudely, whether there is enough technical effect: is there a technical effect over and above that to be expected from the mere loading of a program into a computer? per Pumfrey J in Shopalotto

16 The Aerotel Test 1. Properly construe the claim. 2. Identify the actual contribution. 3. Ask whether it falls solely within the excluded subject matter. 4. Check whether the actual or alleged contribution is actually technical in nature.

17 The sign-posts from AT&T The signposts to a relevant technical effect (as modified in HTC v Apple ) are: i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; ii) whether the claimed technical effect operates at the level of the architecture of the computer, that is to say whether the effect is produced irrespective of the data being processed or the applications being run; iii) whether the claimed technical effect results in the computer being made to operate in a new way; iv) whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer; v) whether the perceived problem is overcome by the invention as opposed to merely being circumvented.

18 The EPO Approach In Europe, Art. 52 EPC requires an invention in a field of technology This requirement is satisfied by mentioning any time of (prior art) hardware in the claim (so-called further technical effect). Essentially a formality requirement for claim drafting Modified inventive step test under Art. 56 EPC: the requirement is for technical innovation. Only a contribution in the field of technology can be the basis of an inventive step. There is no definition for the term technology/technical. The test applied by the EPO is different from UKIPO, even though the law is supposed to be the same This imposes an approach to drafting that actually discloses the technical innovation explicitly. The tests naturally merges patent eligibility with [novelty] inventive step considerations.

19 The EPO Approach Decision of the Enlarged Board of Appeal G 03/08: While the Enlarged Board is aware that this rejection for lack of an inventive step rather than exclusion under Article 52(2) EPC is in some way distasteful to many people, it is the approach which has been consistently developed since T 1173/97 and since no divergences from that development have been identified in the referral we consider it not to be the function of the Enlarged Board in this Opinion to overturn it.

20 The EPO Approach In practice, the UKIPO test can be substantially more difficult. Tendency for UKIPO Examiners to reduce the alleged contribution down to something abstract reductio ad absurdum. As such, UKIPO approach is probably more similar to that emerging at the USPTO Does this different approach between the UK and EPO matter?

21 Computer program as such? I can t explain myself, I m afraid Sir, because I m not myself you see per Alice It is, to me at least, regrettable that because these apparently simple words have no clear meaning both our courts and the Technical Boards of Appeal at the EPO have stopped even trying to understand them. However we are so far down that road that returning were as tedious as go o'er. Instead we are now engaged on a search for a technical contribution or a technical effect. Instead of arguing about what the legislation means, we argue about what the gloss means. We do not even know whether these substitute phrases mean the same thing So the upshot is that we now ignore the words computer program... as such and instead concentrate on whether there is a technical contribution. It is, if I may say so, a singularly unhelpful test because the interaction between hardware and software in a computer is inherently technical in the ordinary sense of the word. Per Lewison LJ HTC v Apple 140, 143, 147

22 Technical today, but not tomorrow? It s no use going back to yesterday, because I was a different person then said Alice It cannot be right, as Mr Beresford argues, that simply because at one point in history a process constitutes a technical contribution that the same or similar process, even if novel, will constitute a technical contribution for all time. The judge made the same point at [16] of his judgment. In short, that was then, and this application is now (if any earlier date is relevant, it cannot be earlier than the date of filing the claim). per Arden LJ, Lantana So technical contribution can change over time BUT doesn t this reveal how far we have moved from the test of what is excluded? i.e. a computer program today may not be a computer program next year?

23 Slide to unlock Slide to unlock patent ( 022) Held to be patentable subject matter in Apple v HTC [2012] EWHC 1789 (Pat) I think there was a contribution here which went beyond a computer program as such or the mere presentation of information. There is a sense in which the invention provides a technical effect outside the computer, namely an improved switch. Moreover this is a real world effect which is not limited to the presentation of information. Whilst the subject matter of the invention is obvious, the patent is not invalid for excluded subject matter. But note that the argument for inherent patentability was run from a particular piece of prior art (Neonode)

24 So how to address this in drafting - Focus the specification on inherent patentability, i.e. address what the technical contribution is. - But remember the test is substance of the invention, not the form. - Get your technical contribution argument right at the start, all the facts need to be before the Hearing Officer. - Consider whether there is need for evidence on appeal (as in Symbian).

25 Aerotel and Big Pharma - The Aerotel test is a test of patentability per se - Not yet really been followed outside of software patentability - Most antibody patents would, under same logic, be abstracted to a discovery - Is there Mutually Assured Destruction? - The perils of crowd-funding?

26 The Beginning of the End?

27 Part 1-3 Where do we stand re patentability of computer related invention? Overview of current practices: Japan By Kenichi Nagasawa 27

28 Japanese Patent System Patent Act Article 29 (1) An inventor of an invention that is industrially applicable may be entitled to obtain a patent for the said invention, Patent Act Article 2 (1) "Invention" in this Act means the highly advanced creation of technical ideas utilizing the laws of nature. 28

29 Japanese Patent System Examination Guidelines for Patent and Utility Model Part III Chapter When a claimed invention is considered as any of (i) to (v) shown below, the claimed invention is not deemed to utilize a law of nature, and thus, is not considered as a statutory "invention". (i) Any laws other than a law of nature (e.g., economic laws) (ii) Arbitrary arrangements (e.g., a rule for playing a game as such) (iii) Mathematical formula (iv) Mental activities of humans (v) Those utilizing only (i) to (iv) (e.g., methods for doing business as such) 29

30 Japanese Patent System Examination Handbook for Patent and Utility Model Annex B Chapter (2) Based on the basic ideas listed in (1), the examiner shall determine on requirements of "creation of a technical idea utilizing a law of nature" depending on whether or not "information processing by software is specifically implemented by using hardware resources" in a software related invention; that is to say, whether or not a specific information processor or an operation method thereof depending on intended use is constructed through cooperation of software and hardware resources. 30

31 Japan s case law Original Application(Patent ) Filing Application(2010/05/18) Office Action Rejection Appeal Registered(2011/09/22) A knowledge base system comprising: a storage unit in which a knowledge base is stored; a search unit configured to perform search to knowledge base stored in the storage unit; and an operation unit configured to perform a logic operation on the knowledge base, wherein the search unit is configured to, and wherein the operation unit is configured to count the number of attribute which has the same main identifier and has the same true-false value, as a degree of similarity, in a case where, and configured to count the number of attribute that has the same main identifier, as a degree of similarity, in a case where 31

32 Japan s case law Back up Divisional A(Patent ) Filing Application(2011/06/15 Request for trial of original application) Office Action Registered(2011/11/18) A knowledge base system comprising: a storage unit in which a knowledge base is stored; and a search unit configured to perform search to knowledge base stored in the storage unit, wherein the search unit is configured to comprise a feature extraction unit which generates the feature data or the identification data corresponding to the attribute, and a learning unit which updates the knowledge base stored in the storage unit by organizing the relation between, the feature data or the identification data generated by the feature extraction unit, and, an entity identifier included in the knowledge base stored in the storage unit, and wherein the learning unit 32

33 Japan s case law Challenge Divisional B (Patent ) Filing Application (2011/09/16 Decision of patent of Divisional Application A) Registered (2011/12/22) A knowledge base system comprising: a storage unit in which a knowledge base is stored; and a search unit configured to perform search to knowledge base stored in the storage unit, wherein the search unit is configured to perform at least one of, when identifier data or feature data is indicated, when attribute is indicated, and when entity is indicated, 33

34 Japan s case law Divisional Application C(JP ) Challenged further Filing Application (2011/12/01 Decision of Patent of Divisional Application B) Office Action Rejection Appeal Litigation rescinding the trial decision Rejected(2015/05/25) A knowledge base system comprising: a storage unit in which a knowledge base that is a subject of logic operation by the computer is stored, wherein the knowledge base is configured to, the attribute includes, the attribute identifier includes, the entity identifier is, the attribute identifier is, the feature data is, the identification data is. Essence of Judgment The claimed invention cannot be considered as creation of a technical idea utilizing a law of nature. As it is only an arbitrary arrangements or abstract idea, such as mere organizing of idea or mere defining of structure of database. 34

35 Influence of Alice case to practice US Office Action Rejection by US patent law 101 (inventions patentable): generally increased after the Alice case decreased since some 6 months ago still seeing more rejections than before Alice case some diversity depending on technology areas Some cases see while parent application, filed before Alice case, did not receive 101 rejection, its divisional application did as being post Alice. JP Office Action Almost no influence of the Alice case, regardless technology areas. 35

36 Handling of PBP Claims in Japan Definition of PBP (Product By Process) Claims Claims in which a product is specified by means of a process to manufacture the product. ex. XXX, YYY being the features, manufactured through XXX PBP claims: view of IP high court of Japan Authentic PBP Claims the Product Identity Theory Unauthentic PBP Claims the Manufacturing Process Limitation Theory * Authentic PBP Claims: PBP Claims made under circumstances where it is impossible or difficult to directly specify the product by means of the structure or feature of the product. * Unauthentic PBP Claims: PBP Claims made not under the above circumstances. * the Product Identity Theory: The technical scope of a PBP Claim should cover any of the products that are identical to the product produced by the process steps specified in the claim. * the Manufacturing Process Limitation Theory: The technical scope of a PBP claim should be limited to the product produced by the process steps specified in the claim. PBP claims: view of supreme court of Japan Only Authentic PBP Claims should be patentable with product identity theory. It is likely that Unauthentic PBP Claims potentially has invalidation grounds. 36

37 Handling of PBP Claims in Japan Reaction from industries to PBP supreme court judgment Many PBP claims already approved may be invalidated? There are cases where process is included in unauthentic PBP claims according to examiner s suggestion! Patent attorney: get angry lawyers : little concern JPO s reaction after PBP supreme court judgment 2015/06/05 The supreme court judgment 2015/06/10 Announced it would not judge on PBP claims in examinations/appeals for the time being. 2015/07/06 Announced it would treat Unauthentic PBP claims as vague. 2015/07~2016/03 Carried out study on cases identifiable as unauthentic PBP claims 2016/03/31 Revised examination handbook (Examples of Unauthentic PBP Claims were added.) treatment of PBP claims in each jurisdiction Japan US Europe Unauthentic PBP Claims treatment of PBP Claims product identity theory manufacturing process limitation theory product identity theory 37

38 Handling of PBP Claims in Japan A case which category change was accepted in a trial for correction after the PBP supreme court judgment Claim before amendment A fixing member for a thermal fixing device of an electrophotographic apparatus, the fixing member comprising a base, an elastic layer of foamed silicone rubber, and a surface layer in this order, wherein the foamed silicone rubber is formed by foaming and curing a liquid silicone rubber admixture containing a silica gel as a foaming agent. Claim after amendment A process for manufacturing a fixing member for a thermal fixing device of an electrophotographic apparatus, the fixing member comprising a base, an elastic layer of a foamed silicone rubber, and a surface layer in this order, wherein the process comprising: foaming and curing a liquid silicone rubber admixture containing a silica gel as a foaming agent, and forming the foamed silicone rubber. In the past, the category change of PBP claim from object to manufacturing process was not accepted. However, there are some possibility of being accepted in the future. 38

39 Part 2 How close are the national/regional practices? Discussing four hypothetical claims 39

40 Hypothetical 1 EPO BoA T 931/95, Pension Benefits System/ PBS Partnership A method of controlling a pension benefits program by administering at least one subscriber employer account on behalf of each subscriber employer's enrolled employees each of whom is to receive periodic benefits payments, said method comprising: providing to a data processing means information from each said subscriber employer defining the number, earnings and ages of all enrolled employees of the said subscriber employer; determining the average age of all enrolled employees by average age computing means; determining the periodic cost of life insurance for all enrolled employees of said subscriber employer by life insurance cost computing means; and estimating all administrative, legal, trustee, and government premium yearly expenses for said subscriber employer by administrative cost computing means; the method producing, in use, information defining each subscriber employer's periodic monetary contribution to a master trust, the face amount of a life insurance policy on each enrolled employee's life to be purchased from a life insurer and assigned to the master trust and to be maintained in full force and effect until the death of the said employee, and periodic benefits to be received by each enrolled employee upon death, disability or retirement. 40

41 Hypo 1 US Comments (1 of 2) Today, USPTO probably would find claim ineligible Abstract idea under Step 2A Does not have significantly more under Step 2B o o Claim is only organizing human activities on a computer Data processing means is red flag for examiner to reject as ineligible 41

42 Hypo 1 US Comments (2 of 2) Fundamental economic practices using mathematical formulas to calculate subscriber data, and applying on generic computer See Alice 134 S. Ct. at 2358, see also Mayo 132 S.Ct. at 1301 Does not have significantly more No improvement to computer functionality Not a specific implementation, just do it on a computer U.S. Counterpart (U.S. Patent No. 4,750,121) Filed Oct. 3, 1985, Issued June 7, 1988 Allowed by USPTO before Alice 42

43 Hypo 1 Japanese Comments The subject claim will be judged as "not utilizing the law of nature" and will be rejected under Art.29(1) of JP law. A data processing means itself cannot deem to constitute "Law of Nature" The claim would fall into (ii) "arbitrary arrangement" or (v) Those utilizing only (i) to (iv) 43

44 Hypothetical 2 U.S. Supreme Court, Parker vs. Flook A method for updating the value of at least one alarm limit on at least one process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons wherein said alarm limit has a current value of "Bo + K" wherein Bo is the current alarm base and K is a predetermined alarm offset which comprises: (1) Determining the present value of said process variable, said present value being defined as PVL; (2) Determining a new alarm base B1, using the following equation: B1=Bo(1.0-F) + PVL(F), where F is a predetermined number greater than zero and less than 1.0; (3) Determining an updated alarm limit which is defined as B1 + K; and thereafter (4) Adjusting said alarm limit to said updated alarm limit value. 44

45 Hypo 2 US Comments US Supreme Ct. held claims ineligible in 1978 From USPTO July 2015 Subject Eligibility Guidance: Determining value of unspecified process variable is mere data gathering Adjusting alarm limit is mere post-solution activity Might be subject matter eligible if: o o o Claims explain how process variable is selected, Claims integrate formula into chemical processes in catalytic conversion, or Claims specify means of setting off alarm Failed step 2A, claim directed to abstract idea (a mathematical equation) in

46 Hypo 2 Japanese Comments The subject claim will probably be judged as one "utilizing the law of nature" under Japanese law. However, if the recited fomula is generally known, the claim will be rejected under Art.29(2), namely by lack of inventive step. 46

47 Hypothetical 3 EPO BoA T 641/00, Two identities/ COMVIK Method in a digital mobile telephone system of the GSM type, in which subscriber units (MS) are controlled by a subscriber identity module (SIM), characterized in that the subscriber identity module (SIM) is allocated at least two identities (IMSI 1, IMSI 2), information thereon being stored in a home database of the system, said at least two identities being selectively usable, wherein only one identity (IMSI 1 or IMSI 2) can be activated at a time, the user when using a subscriber unit (MS) selectively activating the desired identity in said home database from the subscriber unit, wherein the selective activation is used for distributing the costs for service and private calls or among different users 47

48 Hypo 3 US Comments U.S. Counterpart (U.S. Patent 6,212,373) Filed Jan. 9, 1997, Issued Apr. 3, 2001 Allowed by USPTO before Alice Simply using computer to implement mathematical formula for distributing costs for service and private calls possibly ineligible under Alice and Mayo Might survive under Step 2B of Alice test Problem rooted in technology (SIM cards, mobile phones) Non-conventional use: previous SIM was tied to one and only one user Reduces number of phones to service two users 48

49 Hypo 3 Japanese Comments The subject claim will probably be judged as one "utilizing the law of nature" under Japanese law. Especially, if claims are written as including SIM, selectively activating unit, manual operation unit to select identity as such. Accordingly, this case would be judged with inventive step (similar to significantly more) but under Art.29(2) but Art. 29(1) as eligible. 49

50 Hypothetical 4 EPO Enlarged Board of Appeal G 03/08 Suppose a patent application claims a cup carrying a certain picture (e.g. a company logo). We assume that no effect beyond information, brand awareness or aesthetic pleasure is ascribed to the picture. 50

51 Hypo 4 US Comments Possibly eligible under 101 Likely not patentable as utility patent under

52 Hypo 4 Japanese Comments The subject matter of this case is no "invention" under Art. 2(1) of Japanese Law, namely no (highly advanced) creation of technical ideas utilizing the laws of nature. Thus this case will be rejected under Art.29(1). If the picture itself is novel and contributing business, it is possible to obtain a design right or a trademark in Japan. 52

53 Part 3 Possible avenues for harmonization? 2017 Sidney Study Question 53

54 AIPPI Q132 (2003) Computer implemented inventions should be eligible for patent protection and should not be treated more restrictively than other inventions Agreed! 54

55 Summary of Discussion European Approach Only contributions to the field of technology in terms of patent law are taken into account when assessing inventive step (Art. 56) UK Approach Initial step of considering what the invention is by way of abstraction US Approach Expect rejections in CII cases under 101 (abstract idea) and 103 (obviousness/inventive step) 101 requires significantly more than an abstract idea is this an inventive step test? Section 103 requires considering claim as a whole Japanese approach Art.29(1), i.e. "invention shall use the law of nature" is not broad (strict) as US's "Abstract Idea" caused by Alice, or UK approach, but somewhat closer to EPO approach. Difficult to reconcile? 55

56 Avenues for Harmonization? Is it useful to require certain claim formats of other formal requirements? For example: Computer program stored on a computer-readable medium? Hardware to be mentioned in the claim, even in hardware is known in the prior art ( further technical effect )? 56

57 Avenues for Harmonization? Should there be a catalog of per se ineligible subject matter (abstract ideas, laws of nature, algorithms )? If so, how should it be defined? Should patent eligibility depend on what the claimed subject matter looks like? For example: a car (although just the design of the car has changed)? a computer program (although the claimed algorithm reduces the CO2 emission of an engine by 10%)? Should it one look at whether the actual contribution comes from an area of technology? Should one look at the invention as a whole, or as a category? Efforts to define technology unsuccessful? 57

58 Avenues for Harmonization? What if 35 U.S.C. 101 were amended, thus: Whoever invents [or discovers] any new and useful process, machine, manufacture, or composition of matter may obtain a patent o Would striking discoveries help to eliminate abstract ideas, laws of nature, etc.? o Eligibility should be limited to [technical] inventions o Note: U.S. Constitution authorizes patents for discoveries, see Art. I, 8, Cl. 8 What is Art. 52 EPC were amended, thus: European patents shall be granted for contributions (inventions) which are new, which involve an inventive step, which are susceptible of industrial application, and which are in the field of technology. Would that wording reflect the current EPO practice? Japan? 58

59 Additional thoughts for Sydney 2017? Can AIPPI reach a consensus that will be adopted internationally? That would be an amazing feat! 59

60 Part 4 Q & A 60