Review of practices at the USPTO and the EPO

Transcription

1 Review of practices at the USPTO and the EPO Olli-Pekka Piirilä Principal patent examiner, Dr. Tech. Finnish Patent and Registration Office

2 Internet of things

3 Technological paradigm Smart cities and environment Parking, lightning, waste management, air pollution, earthquake early detection, snow level, autonomous vehicles Smart home Indoor positioning, security, energy and water use, remote control Health Assistance for elderly or disabled people, patient monitoring, UV measurement and warning Industrial automation, logistics, retail Machine auto-diagnosis, maintenance, indoor air quality, item location, shipment conditions Smart agriculture Greenhouses, soil moisture, prod. quality, compost, meteorological station network

4 Multidisciplinary, hybrid G07C 5 G07C 3 G08C 17/02 G06Q 50/04 G06 Q50/08 G07C 5 G07C 3 G08C 17/02 G06Q 50/04 G06Q 50/08 G05B 19/418 G05B 23/02 G06Q 10/06 H04W 4 H04W 64 H04W 72/04 H04W 84/18 H04L 12/28 H04L 29/06 H04L 29/08 G08C 17/02 H04B 7/26 G06F 15/

5 Paradigm, brand, ecosystem, Objects equipped with sensors, actuators, and processors communicate with each other (via Internet) to serve a meaningful purpose.

6 Multi-disciplinary, layered Technical Physical layer (information gathering, sensors) Transport layer (data transfer, networks) Processing layer (storage, processing and analysis of data) Application layer (application specific services) Business layer (overall system management) Nontechnical

7 Hybrid applications at PRH Consulting colleagues (grey area; US, SIPO, EPO) Examiner Consulting colleagues (expertise record) Verifying examiner Principal examiner Verification Head of division

8 Patentability at EPO in view of IoT

9 Patentable subject matter (EPC 52(2)) EPC 52(2) gives examples of what are not considered as inventions: e.g. mathematical methods, schemes, rules and methods for performing mental acts, and computer programs as such Processing, application and business layers Weak criterion true technicality criterion: inventive step ( Comvik approach )

10 Inventive step Problem-and-solution approach (GL G.VII.5) (i) determining the "closest prior art", (ii) establishing the "objective technical problem" to be solved, and (iii) considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person*. --- * Person skilled in the art of related field of technology

11 Comvik approach (T 641/00) Mixed inventions involving technical and non-technical features: ensure non-technical* aspects are not used to support the presence of an inventive step in problem-solution approach. Determine the closest prior art and its differences to the claimed subject matter. Formulate the objective technical problem using nontechnical aspects as constraints. Is the solution provided by the invention obvious to a person skilled in the technical field? *Non-technical: not participating in the overall technical effect of the invention

12 Mathematical method, EPO GL G.VII. 5.4 Claim 1: A computer-implemented method for the numerical simulation of the performance of an electronic circuit subject to 1/f noise, wherein: a) the circuit is described by a model featuring input channels, noise input channels and output channels; b) the performance of the input channels and the output channels is described by a system of stochastic differential equations; c) an output vector is calculated for an input vector present on the input channels and for a noise vector y of 1/f-distributed random numbers present on the noise input channels; d) the noise vector y is generated by the following steps: (d1) setting the number n of random numbers to be generated; (d2) generating a vector x of length n of Gaussian-distributed random numbers; (d3) generating the vector y by multiplying the vector x with a matrix L defined according to equation E1 [explicitly specified in the claim].

13 Mathematical method, EPO GL G.VII. 5.4 A. Simulation method (mathematical method) B. of electronic circuit (technical purpose) C. carried out by computer (technical means) D. using stochastic differential equations (mathematical method) E. with noise vector generated by a given algorithm (mathematical method, steps d1 d3), where F. the algorithm particularly efficient in terms of computation time and storage resources (technical effect in combination with A E)

14 Mathematical method, EPO GL G.VII. 5.4 A. Simulation method (mathematical method) B. of electronic circuit (technical purpose) C. carried out by computer (technical means) D. using stochastic differential equations (mathematical method) E. with noise vector generated by a given algorithm (mathematical method, steps d1 d3), where F. the algorithm particularly efficient in terms of computation time and storage resources (technical effect in combination with A E)

15 Mathematical method, technical effect Considered in isolation, steps (d1)-(d3) represent a mathematical method with no technical character However, claim is limited to a computer-implemented method in which this mathematical method serves the numerical simulation of the performance of an electronic circuit subject to 1/f noise, which is considered to be a technical purpose Technical problem in view of the closest prior art: How to generate the 1/f-distributed random numbers 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?

16 Mathematical method, technical effect A. Simulation method (mathematical method) B. of electronic circuit (technical purpose) C. carried out by computer (technical means) D. using stochastic differential equations (mathematical method) E. with noise vector generated by a given algorithm (mathematical method, steps d1 d3), F. algorithm particularly efficient in terms of computation time and storage resources (technical effect in combination with A E)

17 Patent-eligibility at USPTO in view of IoT

18 Patentability requirements U.S. patent law Subject matter eligibility and utility ( 101) EPC Invention requirement (Art. 52) and industrial applicability (Art. 57) Novelty ( 102) Novelty (Art. 54) Non-obviousness ( 103) Inventive step (Art. 56) Suffiency of disclosure and clarity ( 112) Suffiency of disclosure (Art. 83) and clarity (Art. 84) U.S.: separate (and independent) assesment for all the requirements EPO: Novelty/inventive step/industrial applicability not defined for non-inventions

19 Patent eligibility (USPTO, 101) Whoever invents or discovers any new and useful process, machine, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, Supreme Court: exceptions Laws of nature Natural phenomena Abstract ideas

20 Abstract ideas and patent-eligibility Abstract ideas (MPEP (a)(2)) methods of organizing human activities/mental process fundamental economic practices mathematical relationships/formulas Processing, application and business layers in the IoT diagram, in particular.

21 Early exmple (Supreme Court, 1981) Diamond v. Diehr Industrial process for molding raw synthetic rubber into cured precision products Measuring of temperature inside the closed molding machine Optimal opening determined by Arrhenius equation Press opening accordingly Arrhenius equation (mathematical formula, abstract idea) Overall process performs patent-eligible function

22 Patent eligibility test Supreme Court (Alice Corp. v CLS Bank, 2014) 1. Is the claim in one of the statutory categories? 2. Is the claim directed to ineligible subject matter (laws of nature, natural phenomena and abstract ideas)? 3. Does the invention recite elements, either in isolation or combination with the non-patent ineligible elements, that provide significantly more than the abstract idea itself ( inventive concept )?

23 Amdocs Ltd. v. Openet Telecom, Inc. US B1 1. A computer program product embodied on a computer readable storage medium for processing network accounting information comprising: a) computer code for receiving from a first source a first network accounting record; b) computer code for correlating the first network accounting record with accounting information available from a second source; and c) computer code for using the accounting information with which the first network accounting record is correlated to enhance the first network accounting record.

24 Amdocs Ltd. v. Openet Telecom, Inc. District court: Claim 1 is directed to the abstract idea of "the concept of correlating two network accounting records to enhance the first record Amounts to nothing significantly more than instruction to apply the abstract idea of correlating two network accounting records using some unspecified, generic computer hardware

25 Amdocs Ltd. v. Openet Telecom, Inc. Mayo v. Prometheus: At some level, all inventions [ ] embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas. Appropriate level of abstraction? correlating two network accounting records to enhance the first record? receiving initial information for correlating that initial information with additional information, and for using that additional information to enhance the initial information?

26 Amdocs Ltd. v. Openet Telecom, Inc. District court: Claim 1 is directed to the abstract idea of "the concept of correlating two network accounting records to enhance the first record Amounts to nothing significantly more than instruction to apply the abstract idea of correlating two network accounting records using some unspecified, generic computer hardware Federal Circuit Technological problem massive record flows which previously required massive databases avoid congestion in network bottlenecks still allows data to be accessible from central location Unconventional technological solution enhancing data in a distributed fashion

27 Amdocs Ltd. v. Openet Telecom, Inc. Dissenting opinion (Judge Reyna) Claims that fail to recite how a desired goal is accomplished do not recite an inventive concept The phrase distributed architecture does not appear in the claim language General v. specific claim features

28 Inventive concept Amdocs Ltd. v. Openet Telecom, Inc. Generic components, including network devices and gatherers which gather information. However, the claim s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality. BASCOM v. AT&T Ordered combination of limitations can provide the inventive concept

29 Inventive concept DDR Holdings LLC v. Hotels.com LP necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks Enfish LLC v. Microsoft Corp. et al. they are directed to a specific improvement to the way computers operate, embodied in the selfreferential table

30 IoT-related inventions at EPO and USPTO EPO Restriction of mathematical method to a technical field Motivation by technical considerations of the internal functioning of the computer Technical measurements and technical use of the processed measurement data Algorithm effectivity in connection with adequately defined technical purpose (e.g. simulation of electric circuits) USPTO Technological solution to a problem rooted in technology Ordered combination or configuration of elements designed to solve the specific technological problem Use of particular hardware or tangible elements Particular set of devices and a particular environment Specific operations and detailed algorithms (e.g. cryptographics)

31 Thank you!