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

Joint Cluster Computers European Patent Office CII examination practice in Europe and the USA: Implications for Applicants and Industries Falk Giemsa, Dipl. Inf., LMU Christoph Laub, LL.M. IP, MIPLC Examiners, Directorate 2.2.21- Computers Helsinki, September 2006

Joint Cluster Computers European Patent Office CII examination practice in Europe and the USA: Implications for Applicants and Industries EPO CII-

EPO CII- 4

Property EPO CII- 5

Legal Aspects of Patent Protection EPO CII- 6 a) What can be protected? technical subject-matter, e.g. apparatuses, systems or processes b) Acquisition and term of protection registered right: requires the filing of an application search and examination (in some jurisdictions registration only) publication protection is for up to 20 years cost: - fees for application, search, examination, etc. c) Rights of the Holder the patentee or holder of a patent right can prohibit: production use distribution or sale import

EPO CII- EPO procedures 7 Procedures before the EPO grant of a European patent validation in EPO member states national patents EXAMINATION OPPOSITION maintenance revocation national courts refusal APPEAL 1. INSTANCE 2. INSTANCE national law nullity infringement proceedings European national bodies

Requirements for patentability EPO CII- European patents shall be granted for inventions which are new, Art. 52(1) EPC involve an inventive step and are susceptible of industrial application. 8

EPO CII- What is excluded from patentability? Art. 52(2) EPC The following in particular shall not be regarded as inventions a) discoveries, scientific theories and mathematical methods b) aesthetic creations c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; d) presentation of information...as long as claimed as such Article 52(3) 9

EPO CII- What is an invention? Art.52(1) EPC "there must be an invention" (Guidelines C-IV, 1.1(i) ) Y "hidden" requirement = "INVENTION" Art.52(2) EPC : non-exhaustive list of "non-inventions" or potential EXCLUSIONS Art.52(3) EPC: The items in the list of Art.52(2) EPC become exclusions only when they are claimed AS SUCH Y NOTE claimed as such = non-technical IMPORTANT: assessment of whether the claimed subjectmatter represents an INVENTION or an EXCLUSION without regard to prior art. Y The claim is considered as a whole 10

What is an invention? EPO CII- Invention - 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. T 931/95 - Pension benefit scheme - A method involving technical means is an invention within the meaning of Article 52(1) EPC. T 0258/03 - HITACHI Headnote I. 11

What is an invention? EPO CII- Invention Guidelines C-IV 1.2 Two further requirements for patentability, that are implicitly contained in the EPC: i) the invention must be such that it can be carried out by the skilled person Art.83 "A patent is a reward for the full disclosure of an invention." ii) the invention must be of "technical character" to the extent that it - must relate to a technical field R.27(1)(a) - must concern a technical problem R.27(1)(c) - must have technical features in terms of which the matter for which protection is sought can be defined in the claim R.29(1) 12

Technicality EPO CII- Technicality What is technical? No definition of the word technical is contained in the European Patent Convention (EPC). 13

EPO practice EPO CII- Technicality European Patent Convention (EPC) Guidelines for Examination in the EPO Working practice at the EPO Boards of Appeal of the EPO Case Law 14

Technicality EPO CII- Technicality Rather than attempting a general definition of "technical", the Board s present approach is to stake out, through a series of individual decisions, the grey area requiring interpretation. 15

EPO CII- Technicality Technicality Technical is... processing physical data parameters or control values of an industrial process processing which affects the way a computer operates saving memory, increasing speed security of a process, rate of data transfer etc. technical character may be implied by the physical features of an entity memory, port etc. 16

Technicality EPO CII- Technicality - Features relating to non-inventions within the meaning of Art. 52 (2) EPC are non-technical features. selling, trading, insurance choosing amongst candidates for a job order placement and management 17

EPO Practice EPO CII- EPO practice 1. If the subject matter of the claims does not comprise a technical character object under Article 52(2) and (3) EPC [possible 'no search'; double-check description] 18

EPO Practice EPO CII- EPO practice Example 1a: A method for evaluating leadership effectiveness, comprising the steps of: - gathering target information quantifying at least one domain selected from the group consisting of having personal convictions, being visionary, building emotional bonds, being inspirational, being team oriented, being a risk taker and having a drive to excel; - comparing the target information with a standard, the standard including standard values of the domain; and 19 - identifying non-standard responses of the target.

EPO Practice 2. If there is a mix of non-technical and technical features: EPO CII- EPO practice "requirement specification" = instructions given to the programmer summarising the requirements of the customer e.g. a business or administrative process to be automated skilled person is aware of it prior art in a field of technology 20 normally found in description & (in summarised form) in claims

EPO CII- EPO practice EPO Practice 3. based on the technical implementation set out in the claims and description: IF: 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 [possible no-search] identify closest prior art in the field of technology OTHERWISE: search for the closest document describing the technical features. 21

EPO Practice EPO CII- EPO practice 4. Identify all the differences between the subject matter of the claim and the closest prior art a) b) if there are none object under Art. 54 no objective technical problem if the differences are not technical object under Art. 56 object. technical problem = implementation/ automation of requirements specification 22 double-check: Is there a non-obvious technical effect achieved by the non-technical features in combination with the technical features?

Legal Requirements EPO CII- EPO practice Re. Inventive Step: Guidelines C-IV 2.3.6 The examiner must establish an objective technical problem. If no such objective technical problem is found, the claimed subjectmatter does not satisfy at least the requirement for an inventive step because there can be no technical contribution to the art. 23

EPO CII- EPO practice EPO Practice 4. Identify all the differences between the subject matter of the claim and the closest prior art c) d) if differences = mix of non-technical & technical features i) formulate the objective technical problem taking into account the requirements specification e.g. "how to adapt system of CPA in order to implement the business concept" if differences are purely technical Solution: solution of the objective technical problem must require the technical features of the above identified differences. ii) if the solution of the technical problem is obvious object under Art. 56 apply classical PSA 24 double-check: Is there a non-obvious technical effect achieved by the non-technical features in combination with the technical features?

Legal Requirements EPO CII- EPO practice Guidelines C-IV 9.8.2 (Inventive Step) Technical Contribution: Features which cannot be seen to make any contribution, either independently or in combination with other features, to the solution of a technical problem are not relevant for assessing inventive step. Such a situation can occur for instance if a feature only contributes to the solution of a non-technical problem, for instance a problem in a field excluded from patentability. Technical Effect: In the context of the problem-and-solution approach, the technical problem means the aim and task of modifying or adapting the closest prior art to provide the technical effects that the invention provides over the closest prior art. 25

EPO Practice EPO CII- EPO practice 5. Check the other the requirements of the EPC 26

EPO Practice Protecting and Exploiting CII Inventions EPO CII- 27

Working Practice - real view Case Law EPO CII- EPO practice Boards of Appeal Enlarged Board of Appeal President EPC First instance Case Law Guidelines 28

EPO Practice EPO CII- EPO practice Example 1a: A method for evaluating leadership effectiveness, comprising the steps of: - gathering target information quantifying at least one domain selected from the group consisting of having personal convictions, being visionary, building emotional bonds, being inspirational, being team oriented, being a risk taker and having a drive to excel; - comparing the target information with a standard, the standard including standard values of the domain; and - identifying non-standard responses of the target. 29

EPO Practice EPO CII- EPO practice Example 1b: A computerised method for evaluating leadership effectiveness, comprising the steps of: - receiving on a computer target information quantifying at least one domain selected from the group consisting of having personal convictions, being visionary, building emotional bonds, being inspirational, being team oriented, being a risk taker and having a drive to excel; - comparing electronically the target information with a standard, the standard including standard values of the domain; and - identifying electronically non-standard responses of the target; - outputting the non-standard responses on a display screen. 30

EPO Practice EPO CII- EPO practice Technical Mixed type claim Requirement specs Closest prior art Differences Technical problem Solution obvious Yes Yes Evaluating leadership General purpose computer Data processing Adapt a computer Yes 31

EPO Practice...return EPO CII- EPO practice Requirement Specifications A computerised method for evaluating leadership effectiveness, comprising the steps of: A method for evaluating leadership effectiveness, - receiving where on a computer target information quantifying at least one domain selected from the group consisting of - having information personal a convictions, group of attributes being is visionary, received from building a potential emotional candidate; bonds, being inspirational, being team oriented, being a risk taker and having a drive to excel; - the target information is compared with a pre-defined standard; - comparing and electronically the target information with a standard, the standard including standard values of the - domain; non-standard responses are identified; - identifying electronically non-standard responses of the target; 32 - outputting the non-standard responses on a display screen.

EPO Practice...return EPO CII- EPO practice Differences A computerised method for evaluating leadership effectiveness, receiving comprising the the information steps of: on a computer; - electronically receiving a comparing computer target the information with quantifying a standard; at least one domain selected from the group consisting of having personal - electronically convictions, being identifying visionary, non-standard building emotional responses; bonds, being inspirational, being team oriented, being a risk taker and having a - outputting drive to excel; the non-standard responses on a display screen. - comparing electronically the target information with a standard, the standard including standard values of the domain; and - identifying electronically non-standard responses of the target; - outputting the non-standard responses on a display screen. 33

EPO Practice...return EPO CII- EPO practice Objective technical problem adapt the general purpose computer so that the requirement specifications are implemented and can be performed electronically and the resulting information is displayed on a screen. 34

EPO CII- EPO practice EPO Practice Example 2a: Method for purchasing and payment of goods and services, preferably audio and/or video data provided on a provider's platform in a computer network, like the Internet, comprising the steps: - taking a customer's order for goods and services, preferably an order for audio and/or video data files; - providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and - debiting a mobile telephone account of the customer. 35

EPO Practice EPO CII- EPO practice Technical Mixed type claim Requirement specs Closest prior art Differences Technical problem Solution obvious Yes Yes Ordering and paying for goods Platform for downloading audio files from the Internet Debiting mobile phone account none n.a. 36

EPO Practice...return EPO CII- EPO practice Requirement Specifications Method for selling/purchasing and payment audio and/or of goods video and data services, provided preferably on audio the Internet, and/or video data provided on a where provider's platform in a computer network, like the -Internet, a customer's order is taken, -comprising ordered audio the steps: and/or video data files are delivered; - and taking a customer's order for goods and services, - preferably a mobile telephone an order account for audio of and/or the customer video data is debited. files; - providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and - debiting a mobile telephone account of the customer. 37

EPO Practice...return EPO CII- EPO practice Differences Method for purchasing and payment of goods and services, preferably audio and/or video data provided on a provider's platform in a computer network, like the Internet, comprising the steps: - taking a customer's order for goods and services, preferably an order for audio and/or video data files; - providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and - debiting a mobile telephone account of the customer. 38

EPO Practice...return EPO CII- EPO practice Objective technical problem no objective technical problem can be identified There is no inventive step involved. 39

EPO CII- EPO practice 40 EPO Practice Example 2b: Method for purchasing and payment of goods and services, preferably audio and/or video data provided on a provider's platform in a computer network, like the Internet, comprising the steps: - taking a customer's order for goods and services, preferably an order for audio and/or video data files; - providing a download of ordered goods and services, preferably of audio and/or video data files, for the customer; and - debiting a mobile telephone account of the customer, whereby the purchase data sent to the telephone company are at least partially encrypted by a password.

EPO Practice EPO CII- EPO practice 5. Check the other the requirements of the EPC 42

Joint Cluster Computers European Patent Office CII examination practice in Europe and the USA: Implications for Applicants and Industries EPO CII-

EPO CII- Everything under the sun made by man is patentable " (US Supreme Court in Diamond v. Chakrabarty, 1980) 44

EPO CII- A Comparative Approach 45

EPO CII- What does it mean - Statutory Subject Matter?!? 46

EPO CII- Patent eligibility / Patentability Patent Examination (of CII) applies two kinds of Filters: 1. Is the claimed subject matter eligible for Patent Protection? 2. Is the claimed subject matter new and inventive? 47

Examination practice The USPTO approach EPO CII- Statutory Law US Code, Chapter 35 "Patent Law" 48

EPO CII- Case Law 1972: The mathematical formulas involved had no substantial practical application (Gottschalk. v. Benson) 1981: A physical and chemical process [...] constitutes patentable subject matter (Diamond v. Diehr) 1998: The question of whether a claim encompasses statutory subject matter is directed to [...] its practical utility (State Street) 49

Examination practice The USPTO approach EPO CII- Patent egilibility Filter 1: Patent Egilibility 1. Is the claimed subject matter eligible for Patent Protection? 51

EPO CII- Statutory SM Examination practice The USPTO approach Concordance Table: EPC Articles 52(1), 54 Article 52(2),(3), Rule 29 Case Law Article 56 35.U.S.C. Section 101 Patent Eligible Section 103 (a) 52

Examination practice The USPTO approach EPO CII- Statutory SM Statutory Limitations: US Code Section 101, 35 U.S.C. 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. 53

Examination practice The USPTO approach EPO CII- Statutory SM Statutory Limitations: US Code USEFUL??! 54

Examination practice The USPTO approach EPO CII- Statutory SM Statutory Limitations: Case Law The claimed invention as a whole must accomplish a practical application.that is, it must produce a useful, concrete and tangible result. The purpose of this requirement is to limit patent protection to inventions that possess a certain level of real world value. (State Street) 55

Examination practice The USPTO approach EPO CII- Statutory SM Non-Statutory Subject Matter doctrine for CII Natural Phenomena Laws of Nature Abstract Ideas 56

Examination practice The USPTO approach EPO CII- Patentability Filter 2: Material Patentability 2. Is the claimed subject matter new and inventive/non-obvious? 57

EPO CII- Patentability Examination practice The USPTO approach Concordance Table: EPC Articles 52(1), 54 Novel 35.U.S.C. Section 101 Article 52(2),(3), Rule 29 Case Law Article 56 Section 103 (a) 58

Examination practice The USPTO approach EPO CII- Patentability Statutory Limitations: US Code Section 101, 35 U.S.C. 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. 59

EPO CII- Patentability Examination practice The USPTO approach Concordance Table: EPC Articles 52(1), 54 Article 52(2),(3), Rule 29 Article 56 Inventive 35.U.S.C. Section 101 Case Law Section 103 (a) Non-Obvious 60

Examination practice The USPTO approach EPO CII- Patentability Obviousness Section 103, 35 U.S.C. A patent may not be obtained [...] if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious [...] to a person having ordinary skill in the art. 61

EPO CII- Patent Examination, Comparison: EPC - U.S.C. 62 Step 1 Comparison EPO - USPTO Comparative Patent Examination: EPO Approach Examine the claim. Does the claimed subject matter prima facie lead to a technical effect? USPTO Approach The application is classified whether it is statutory per se, i.e. useful process, machine, manufacture, or composition of matter, or any useful improvement thereoff? Statutory

Comparison EPO - USPTO Comparative Patent Examination: EPO CII- Step 1 EPO Approach USPTO Approach technical useful Patent Examination, Comparison: EPC - U.S.C. 63

Comparison EPO - USPTO Comparative Patent Examination: Step EPO Approach USPTO Approach EPO CII- 1 technical useful Patent Examination, Comparison: EPC - U.S.C. 2 Determine the prior art Determine the prior art 64

Comparison EPO - USPTO Comparative Patent Examination: Step EPO Approach USPTO Approach EPO CII- 1 technical useful Patent Examination, Comparison: EPC - U.S.C. 2 prior art prior art 65

EPO CII- Patent Examination, Comparison: EPC - U.S.C. 66 Step 1 2 3 Comparison EPO - USPTO Comparative Patent Examination: EPO Approach technical prior art Establish the techn contribution (caused by the difference) between the claimed invention and the closest prior art. USPTO Approach useful prior art Establish the overall - difference between the claimed invention and the closest prior art. Patentability

Comparison EPO - USPTO Comparative Patent Examination: EPO CII- Step 1 EPO Approach technical USPTO Approach useful 2 prior art prior art Patent Examination, Comparison: EPC - U.S.C. 3 Techn. contribution difference 67

Comparison EPO - USPTO Comparative Patent Examination: EPO CII- Step 4 EPO Approach Identify the technical effect of the difference USPTO Approach Apparatus/Product: No technical effect requirement. Process: Practical application in the Technological arts Patent Examination, Comparison: EPC - U.S.C. 68

Comparison EPO - USPTO Comparative Patent Examination: Step EPO Approach USPTO Approach EPO CII- 5 Deduce the objective problem from the difference. Is it a technical problem? No Problem necessary. Is the distinction between prior art Functional? (Data Structures) Patent Examination, Comparison: EPC - U.S.C. 70

Comparative Patent Examination: Step EPO Approach USPTO Approach EPO CII- 1 technical useful 2 prior art prior art 3 techn. contribution difference Patent Examination, Comparison: EPC - U.S.C. 4 5 technical effect techn. problem - Distinction is functional 71

Comparative Patent Examination: EPO CII- Patent Examination, Comparison: EPC - U.S.C. Step 6 EPO Approach Is there an indication in the prior art which would prompt the skilled person to solve the problem in the way the invention solves it? Grant USPTO Approach Distinctions is assessed and resolved [...] by a person of ordinary skill in the art. Decisive question: Would invention been obvious? Grant 72

Comparative Patent Examination: EPO CII- Patent Examination, Comparison: EPC - U.S.C. 73 Step 1 2 3 4 5 6 EPO Approach technical prior art techn. contribution technical effect techn. problem Problem - skilled person Grant Statutory Patentability USPTO Approach useful prior art difference - Distinction is functional descriptive Invention - skilled person Grant

EPO CII- Subject Matter Examination practice The USPTO approach Practically, the USPTO distinguishes between three kinds of CII Subject Matter 1) MACHINES / DEVICES 2) PROCESSES 3) DATA STRUCTURES (incl. Programming Code aaand Business Methods) 74

Examination practice The USPTO approach EPO CII- Statutory Subject Matter 1) MACHINE / DEVICE Claims are always statutory! 75

Examination practice The USPTO approach EPO CII- Statutory Subject Matter 2) PROCESS Claims (1) A post-computer process activity results in a physical transformation outside the computer (2) A pre-computer process activity results in practical application [...] confined to the internal operations of the computer 76

Examination practice The USPTO approach EPO CII- Statutory Subject Matter 3) DATA STRUCTURES...are regarded descriptive Functional descriptive material" "Non-functional descriptive material" 77

EPO CII- Comparison: EPC - U.S.C. EPC and U.S.C. Regimes are comparable regarding Material/Primary Law Case Law/Secondary Law The patent examination practice The patent prosecution procedures 78

Empirical study of the impact of the different regimes regarding statutory subject matter EPO CII- Empirical Study 79

Empirical study EPO CII- Empirical Study The EPO consequently refuses CII applications which do not satisy statutory and material legal requirements The Sample: Out of 42 EPO nonstatutory - Refusals12 Family members were identified which have been GRANTED by USPTO 80

Empirical study EPO CII- Empirical Study However: The granted US family patent claims were usually narrower than the refused EPO application claims. 81

Empirical study EPO CII- Empirical Study The Virtual Examination approach: Apply ex-post EPO Patent - Eligibility rules to granted US patents! "re"-examine the US version of the EPO family documents. 82

Empirical study EPO CII- Empirical Study 4/12 US family patent grants would equally have passed the EPC Statutory Subject Matter requirements according to the current examination approach. Eligibility!! Patentability Applicants appear better off with "Hitachi"! 83 WHICH Applicants?!

Empirical study EPO CII- Empirical Study Example: Applicants/Industries for: -) Business Methods -) common Data Processing Technology WHICH Applicants?! 84

Withdrawal and Refusal statistics EPO CII- EPO CII statistics 85 Field of "Business Methods"* * ECLA: G06F17/60, G07F19

Withdrawal and Refusal statistics EPO CII- EPO CII statistics 86 Field of general Digital Data Processing* * ECLA: G06F ( 17) / ( 60)

Withdrawal and Refusal statistics EPO CII- EPO CII statistics 87 Field of "Business Methods"* * ECLA: G06F17/60, G07F19

Withdrawal and Refusal statistics EPO CII- EPO CII statistics 88 Field of general Digital Data Processing* * ECLA: G06F ( 17) / ( 60)

Withdrawal and Refusal statistics EPO CII- EPO CII statistics Overall EPO Joint Cluster Computers Examination-outcomes 89

EPO CII- Economic implications The EPO obviously handles his statutory threshold requirement more carefully/rigidly. Advantage for whom? The US market / The EU market? 90

EPO CII- Economic implications Patent Value indicators: Forward citations Family size Licensing statistics Value estimation of patent holder (Turnover/Patent) Legal Stability!! 91

EPO CII- Analysis: US / EP Average Forward citations of a conventional CII Patent Average Forward Citations of the 12 US CII patents Average Family size of a conventional EPO patent Average Family size of the 12 studied US CII patents 92

EPO CII- Average Forward citations of a conventional CII Patent Average Forward Citations of the 12 US CII patents Average Family size of a conventional EPO patent 7,9 counts 10,1 counts counts! Analysis: US / EP Average Family size of the 12 studied US CII 8,5 patents counts 13,3 93

EPO CII- 94

EPO CII- concerns the presumption of validity of a legal title 95

EPO CII- Even in the field of CII the EPO does not impose an artificial hurdle for "An Invention" (Statutory Subject Matter). European Patent protection is therefore available for all industries provided the material EPC patent egilibility- and patentability requirements are met. 96

EPO CII- Predictability The EPO CII examination practice is highly predictable due to well defined examination rules. 97

EPO CII- Predictability The requirements of a technical difference and the solution of a technical problem for CII provides for patent protection which supports innovation, competitiveness and economic growth for the benefit of the citizens of Europe. (from EPO Mission Statement) 98

Joint Cluster Computers European Patent Office http://www.european-patent-office.org/ http://patlib.european-patent-office.org/ Patlib - 293 patent information centres in all member states of the EPO http://cii.european-patent-office.org/ EPO Microsite regarding CII

Joint Cluster Computers Non-EPO sources: Comparative CII Laub: Software Patenting: Legal Standards in Europe and the US in view of Strategic Limitations of the IP Systems: http://www.blackwell-synergy.com/toc/jwip/9/3 Laub: Patentfähigkeit von Softwareerfindungen: Rechtliche Standards in Europa und in den USA und deren Bedeutung für den internationalen Anmelder: http://rsw.beck.de/rsw/shop/default.asp?site=grur-int