The European patent protection: procedure and patenting computer implemented invention in the European patent case law.

Transcription

1 INTELLECTUAL PROPERTY STRATEGIC CONSULTING The European patent protection: procedure and patenting computer implemented invention in the European patent case law. Andrea Tiburzi Partner European Patent Attorney Barzanò & Zanardo All rights reserved

2 AGENDA 1. Introduction and main message 2. The European Patent procedure 3. Focus on the Computer implemented inventions 4. Case Law Barzanò & Zanardo - Tutti i diritti riservati

3 01 Introduction Barzanò & Zanardo The speaker The main message

4 Barzanò & Zanardo - Firm overview Ing. Barzanò & Zanardo was established in The group has two head offices, located in Roma and Milan, and five branch offices, in Turin, Vicenza, Biella, Rimini and Pordenone. Currently around 190 employees work in the firm, including 65 IP consultants. Barzanò & Zanardo takes care of the intellectual property rights of Italian and foreign multinational companies and is therefore worldwide assisted by selected local agents. Currently Barzanò & Zanardo can cope with any kind of IP issue, whether it is legal, technical, financial, tax or corporate related. The European Patent protection Patenting CII inventions Giacomo Balla Ing. Barzanò & Zanardo Collection. In the centre-right part of the painting, the words Ing. Barzanò & Zanardo can be made out. On that Thursday, 13th December 1917, our firm published the nominal workings of various patents in the Italian daily newspaper Corriere d Italia 4 Introduction

5 Introduction The speaker Andrea, Doctor of Electronic Engineering, is a European Patent Attorney a Italian patent attorney and a San Marino patent attorney, also admitted before the European Union Intellectual Property Office of Alicante to handle Design registration and prosecution matters. Andrea is Barzanò & Zanardo Director responsible for electronic and software patents as well as foreign relationships for the whole group. He is also the Managing Director of the Rimini office. Andrea s key expertise lies in electronic and software patents, telecommunications and signal processing, and He is involved in drafting and prosecuting national and international patents, with particular focus in oppositions and appeals before the European Patent Office. Andrea is also an expert in economical valuation of intellectual property rights, including Know-How, for M&A transactions, transfer pricing opinion, Purchase Price Allocation and calculation of damages before Italian national Courts. He is a lecturer in several seminars concerning patent law and valuations of intellectual property rights and a member of European Patent Practice Committee of the European Patent Institute. Andrea graduated in electronic engineering at the University of Rome. He also has Masters in Corporate finance and management accounting, M&A corporate transactions and international tax. a.tiburzi@barzano-zanardo.com 5

6 Introduction Disclaimer The views and opinions expressed in this presentation are those of the author and do not necessarily reflect the official position the European Patent Office (EPO) or European Patent Institute (EPI) 6

7 The main message The European Patent protection Patenting CII inventions Patenting inventions inplemented by a computer is not a curve ball. Introduction To hit the ball, determine the contribution to produce a technical effect of any features in the context of the invention. 7

8 02 The European Patent procedure The procedure at a glance Tips for quickening the procedure Inventive step assessment

9 The European Patent procedure Overview of the EP procedure Applicant European patent application Refusal of the application Validation in the designated states European Patent Office Filing and formalities examination Search and search report together with a preliminary opinion on patentability Substantive examination Grant of a European patent Limitation or revocation proceedings Opposition proceedings Appeal proceedings Review Public Publication of the application and search report Observations by third parties possible (Article 115 EPC) Publication of the patent specification 9m Language regime 15 Giugno

10 Possible outcomes of an opposition The European Patent protection Patenting CII inventions The European Patent procedure Decision Final (1) (2) (3) Revocation Rejection of opposition Maintenance in amended form Interlocutory Proprietor Opponent Art 106 EPC - Appeal 106(3) Opponent (Proprietor) Printing fees + translations 15 Giugno

11 The European Patent procedure Requirements Patentability Patentable/Not patentable subject-matter (Art. 52 EPC) Novelty (Art. 54 EPC) Inventive step (Art. 56 EPC) Susceptibility of Industrial application Disclosure of the invention (Art. 83 EPC) Clarity, conciseness and support by the description (Art. 84 EPC) 11

12 The European Patent procedure Problem-solution approach for assessing the Inventive Step Novelty (Art. 54 EPC) Inventive step (Art. 56 EPC) à Problem-solution-approach Industrial applicability Based on Rule 42(1)(c) EPC (Content of the description) and developed by the BoA 12

13 Problem-solution approach for assessing the Inventive Step Prior art includes: The European Patent procedure European patent applications, the dates of filing of which are prior to the date of filing of the Opposed patent, and which were published on or after that date, shall be considered as comprised in the state of the art (Art. 54(3) EPC) These documents, however, shall not be considered in deciding whether there has been an inventive step of the opposed patent 13

14 The European Patent procedure Problem-solution approach for assessing the Inventive Step Item Steps How to (a) Identifying the closest prior art, The closest prior art is the most promising spring board for reaching the claimed subject matter (b) Assessing the technical effect achieved by the The technical effect can be derived by the claimed invention when compared with the differential technical features "closest state of the art" established, (c) Deriving from the achieved technical effect the The "objective" technical problem is derived by objective technical problem to be solved by the the technical effect. No pointer to the solution claimed invention, and (d) Examining whether or not a skilled person, starting from the closest state of the art, would have arrived to the claimed technical features for solving the technical problem (obviousness test) Could-would approach (Any hints or prompts to combine two pieces of prior art should be submitted and discussed) 14

15 03 Focus on the Computer implemented inventions Definitions Eligibility The «modified» problem-solution approach for CII

16 Focus on CII CII: some definitions Computer programs Sequence of computational steps performed by a computer Language of a program (code) Software Often used as a synonym for computer program Usually by SW in which a SW is stored (DVD, CD...) are intended Algorithm Systematic procedure for accomplishing a task in a number of steps Concept at the basis of a program EPO definition of CII: Inventions involving programs for computers can be protected in different forms of a "computer-implemented invention", an expression intended to cover claims which involve computers, computer networks or other programmable apparatus whereby at least one feature is realised by means of a program. 16

17 Focus on CII EPO official definition of CII Inventions involving programs for computers can be protected in different forms of a "computer-implemented invention", an expression intended to cover claims which involve computers, computer networks or other programmable apparatus whereby at least one feature is realized by means of a program. 17

18 Focus on CII CII: some definitions Algorithm I M P L E M E N T A T I O N Specific circuits Program for a standard computer with specific circuits Program for a standard computer 18

19 Main concepts to explore when dealing with CII The European Patent protection Patenting CII inventions Focus on CII Eligibility Further technical effect Patentability (ass. of inventive step) CII 19

20 Focus on CII Eligibility: Patentable inventions before EPO Article 52 Patentable inventions (1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application. 20

21 Eligibility. What is not an invention (Art. 52(2 and 3)) Focus on CII Discoveries Scientific theories Mathematical methods Aesthetic creations Schemes Rules Methods for performing mental acts Playing games Doing business Programs for computers Presentations of information 21

22 Focus on CII Eligibility and the role of prior art: what a cup has to do with CII? Prior art G3/08 Claimed subject matter: eligible? 22

23 Focus on CII Eligibility and the role of prior art Commonly known technical means in a claim are sufficient to confer technical character and fulfill the requirements of Art 52 (2 and 3) EPC E.g. computer, a computer network, a readable medium carrying a program 23

24 The European Patent procedure Further technical effect. What about a computer program per se? Normal and further technical effect: a possible reference model User A Tech. system Application software Sensor s 1 N System software Hardware Transistor level Internet Application software User B System software Hardware Transistor level Further technical effect Further technical effect Normal technical effect In T 1173/97 & T 0935/97 (IBM) the Board strived to find a general trade off for allowing patent on SW, avoiding to allow any kind of patent. A computer program claimed by itself 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 between program (software) and computer (hardware) 24

25 The European Patent procedure Inventive step. Mixed type claims Three groups of features are possible in a claim (Guidelines G- VII, 5.4) a) Technical features as such b) Non-technical features as such c) Features which, when taken in isolation, are non-technical, but do, in the context of the invention, contribute to producing a technical effect serving a technical purpose, thereby contributing to technical character of the invention 25

26 Inventive step. The concept: easy with Furier Transform! Focus on CII 26

27 Inventive step. Mixed type claims: assessment of technical contribution of any feature Focus on CII Case by NO GUIDANCE AVAILABLE case Assessment 27

28 The European Patent procedure Inventive step. Dealing with mixed type claims: T641/00 Comvic. Interplay between eligibility and patentability Check if it s inventive Technical character Non technical character Claim Closest Prior Art 28

29 Focus on CII Select features which contribute to the technical character based on technical effects achieved (context of the invention) There are differences No Raise an objection under Art. 54 Yes Select closest prior art is with focus on the features contributing to the technical character Differences make any technical contribution No Raise an objection under Art. 56 Identify the differences from the closest prior art Determining the technical effect(s) of these differences in the context of the claim, identifying from these differences the features which make a technical contribution and those which do not Yes The objective technical problem is formulated on the basis of the technical effect(s) achieved by these features. In addition, if the differences include features making no technical contribution, these features, or any non-technical effect achieved by the invention, may be used in the formulation of the objective technical problem, e.g. as a constraint that has to be met Obvious for a skilled person (could-would approach)? 29

30 Inventive step. Modified problem-solution approach The European Patent protection Patenting CII inventions Focus on CII Tech. feature as such, but it does not contribute to tech. character in the context of the invention. Usually it is addressed as a partial problem Claim/ Subject-matter (feature itemization) Features contributing to tech. character inthe context of the invention Features non contributing to tech. character inthe context of the invention Closest prior art document Additional document Technical feature as such Technical feature as such Non Technical feature as such Non technical feature as such (e.g. a math formula) Technical feature as such Technical feature as such Technical feature as such Non Technical feature as such Non tech feature not disclosed in prior art used for the formulation of the obj. tech problem, e.g. as a contraint Non tech feature not disclosed in prior art used for the formulation of the obj. tech problem, e.g. as a constraint 30

31 E n t r y i n n e w m a r k e t Evolution The European Patent protection Patenting CII inventions Focus on CII Case Law Evolution in CII T641/00 COMVIK approach for the application of the problem solution approach in the assessment of inventive step Dealing with mixed type claim Formulation of the objective technical problem in CII T1173/97 & T 0935/97 Abandonment of the contribution approach for the assessment of the eligibility Further technical effect requirement for a computer program per se G3/08 No definition of technical Explanation of the abandonment of the contribution approach No requirement that one feature has to cause physical effect on physical entity outside the computer T 31

32 The European Patent procedure Some news as of TODAY! Position of EPO for AI and ML AI and ML are not patentable as such, as the EPO observations for mathematical algorithms as such apply 32

33 04 Case Law Type of claims available Some interesting cases

34 Focus on CII Different claims are available for allow the enforcement 1. A device comprising a processing unit configured to 2. A data processing method, the method comprising the following steps: 3. A Method 4. A computer program comprising instructions which, when executed by data processing apparatus, causes the apparatus to perform a method according to any one of claims 2 to A computer readable medium storing a computer program according to claim 3. 34

35 T 1670/07 Business method The European Patent protection Patenting CII inventions Case Law It is legitimate to have a mix of technical nontechnical features Non-technical features can be the dominating part of the claim Non-technical features can be used in the formulation of the objective technical problem (constraints) 35

36 (c) (a) Technical features (third auxiliary request) as such (highlighted in yellow). Distributed system. It is apparent that the non technical features are definitively more then the technical ones. It is not forbidden. (b) (a)-(c) are the differences with respect to the closest prior art document. (a) and (b) are modification of the business method à no tech purpose, no tech. effect. They are constraint Objective tech. problem has to be formulated on the basis of the tech. effect of (c) Skilled person not deemed to have any expertise in business-related matters. He is expert in information technology who gains knowledge of the businessrelated features as part of the formulation of the technical problem to be solved How to modify the method of D1 to implement in a technically efficient manner the non-technical business concept defined by differences (a) and (b)

37 T 1227/05 Mathematical method The European Patent protection Patenting CII inventions Case Law 37

38 Use of a computer is a technical feature Math method as such non technical. Limited to a computerimplemented method for simulating performance of electronic circuit subject to 1/f noise: considered technical purpose CPA differs for a different math model. Obj. Tech. Prob.: how to generate the 1/f-distributed random umbers used in the numerical simulation of the performance of an electronic circuit subject to 1/f noise in a manner which requires less computer resources. It involves an inventive step

39 T 598/07 Neural network The European Patent protection Patenting CII inventions Case Law 39

40 No exception under A. 53 (c) EPC. For the Board independent claim 28 merely provides an indication as to whether the n dimensional vector formed from a regular heartbeat is within or outside the regular heartbeat n dimensional volume. The claim's wording does not actually and does not need to incorporate the deductive decision phase of establishing a diagnosis for curative purposes Use of a apparatus is a technical feature. The corresponding method claim has been granted Use of a neural network and an abstract data space by a vector space

41 T 0690/11 Grafic User Interface The European Patent protection Patenting CII inventions Case Law 41

42 Technical features as such (highlighted in yellow). In a nutshell, the main purpose of the appeal was to determine whether or not these features were technical or, in the context of the invention, capable of providing a technical contribution

43 T 0690/11 Grafic User Interface Appellant No synergistic effect of the featrures This group of features concerned «what» information was to be dysplaied, not «how» Mere presentation of information, noo technical character The European Patent protection Patenting CII inventions Respondent Case Law There is synnergy There is tech. Character as there are shown functional data integral to the operation of the dyalisis system 43

44 T 0690/11 Grafic User Interface The European Patent protection Patenting CII inventions Case Law 44

45 T 0258/03 Auction method The European Patent protection Patenting CII inventions Case Law Concerns a Dutch-modified auction method: allows participants to having to give bids online which solved the technical problem known from the prior art of lacking synchronization and different delays within the network used by the bidders 45

46 Technical features as such (highlighted in yellow). However, they were considered standard and known from D6 (piece of prior art). In any case, to carry out the method technical means, regardeless the «degree of banalityof the technoical features of the claim». The claim fulfils Art. 52(1).

47 T 0258/03 Auction method The European Patent protection Patenting CII inventions Case Law 47

48 Tell me and I forget. Teach me and I remember. Involve me and I learn. Benjamin Franklin

49 Thank you Ufficio B&Z di ROMA Via Piemonte, Roma, Italia Tel Fax Ufficio B&Z di VICENZA Via del Commercio, Vicenza, Italia Tel Fax Ufficio B&Z di MILANO Via Borgonuovo, Milano, Italia Tel Fax Ufficio B&Z di TORINO C.so V.Emanuele II, Torino, Italia Tel Fax Ufficio B&Z di BIELLA Via Lamarmora, Biella, Italia Tel Ufficio B&Z di RIMINI Via E. Rodriguez Senior, Rimini, Italia Tel Fax b-zrimini@barzano-zanardo.com Ufficio B&Z di PORDENONE Polo Tecnologico Via Roveredo 20/b Pordenone, Italia Tel Fax b-zpordenone@barzano-zanardo.com barzano-zanardo.com