31 January 2010

Red Hat promotes "open source way" by new collaborative website

Red Hat, Inc. believes that "the open source way can change our world in the same way the open source model has changed how software is created" and thus launched the website opensource.com in order to "shine a light on the places where the open source way is multiplying ideas and effort, even beyond technology".

On opensource.com this "open source way" is defined to be about exchange, participation, rapid prototyping, meritocracy, and comunity and thus has the power to "change our society, how we work, our government (not forgetting to mention President Obama's famous "change" campain) and how we learn".

Besides this rather theoretical and idealistic mission statements (which sound a bit like "social media marketing" at least to my ears), opensource.com also comes up with a law channel, which is about more concrete and software-related issues such as "is IP another bubble about to burst?", "the free software way" or "some thoughts on software patents and the Supreme Court", all of which coming to a conclusion being much in line with the company's well-known attitude towards patent protection and intellectual property ("so called") - but that's OK.

USPTO on patentability of computer readable media

As also reported on Patentability and IP Spotlight, the USPTO published a notice on "Subject Matter Eligibility of Computer Readable Media". Therein the problem is addressed that a claim directed to a compter-readable medium (or the like) currently is likely to be interpreted by the authorites (in the boadest reasonable way, as required according to MPEP 2111.01) as comprising non-statutory subject-matter, since the subject-matter claimed may cover "forms of non-statutory tangible media and transitory propagating signals per se" and thus has to be rejected under 35 U.S.C. 101. In this situation, the USPTO now tries to assist applicants in overcoming such (potential) rejection and suggestes the following appoach: 
A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. 101 by adding the limitation “non-transitory” to the claim.  Cf. Animals Patentability, Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation “non-human” to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. 101).
Regarding the concern that such amendment could lead to a new matter objection, it is further explained that
such an amendment would typically not raise the issue of new matter, even when the specification is silent, because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.  The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure.  See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).

30 January 2010

Germany following the EPO approach to patentability of CII?

The German Federal Court of Justice (Bundesgerichtshof, BGH) analysed in his decision X ZB 22/07 („Steuerung für Untersuchungsmodalitäten“, in German) of January 20, 2009 under which circumstances a software that is embedded in a larger technical system may represent statutory subject-matter. Some commentators assume that this decision may represent a turnaround of the BGH’s approach to assess technical character of an invention towards that of the Boards of Appeal of the European Patent Office.

EPO approach: The EPO rather strictly follows the problem-solution approach (further reading here, here, here or here) as a rather formalistic scheme for assessing inventive step of a claimed invention based, in brief, on the essential steps of

  1.  identifying features that differentiate a claimed teaching from the closest prior art document;
  2. deriving the invention’s underlying objective problem based on the identified features; and
  3. assessing whether a skilled person would really solve the derived problem by adding the identified differentiating features to the features as taught by the closest prior art.
However, in cases where the technical character of the claimed teaching is not prima facie evident, it first has to be assessed, whether the claimed teaching relates to statutory subject-matter according to Article 52 EPC, i.e. is a technical invention. After years of more or less “dialectic” discussions on which features may render a claim sufficiently technical and which may not, the EPO determined in 2004 in his decision T258/03 “Auction Method/Hitachi” that the plain executability of a computer program by a computer already renders the program sufficiently technical. That is, one may directly proceed to assessing inventive step by means of the problem-solution approach, as long as the invention at least involves the execution of a program on a processor – which virtually is always the case even for business methods that only involve data transmission via the internet.

On the first sight, this approach only shifts the examination of a claims technical character to a different stage of substantive examination, since only technical features can form a basis for granting inventive step. However, since inventive step may only be granted if a technical problem can be derived from the identified difference features, the problem-solution approach, in fact, shifts the identification of isolated technical features to a more global view on a claim’s teaching as a whole, involving the question whether the derived problem is a technical problem and whether the effect provided by the identified difference features represents a technical solution of that problem, whereas the identified difference features may comprise both technical and non-technical features.

As a consequence thereof, the EPO’s approach somewhat simplifies examining whether a method claim represents statutory subject-matter, since assessing inventive step based on a global view on the effect of a group of technical and non-technical features is in most cases easier than assessing whether or not a claim comprises technical features that can jump over the hurdle of “computer programs as such” according to Article 52 EPC.

It is commonly accepted by the EPO’s Boards of Appeal that improving the performance, efficiency or quality of a technical apparatus or system represents a technical problem. A software program running on that apparatus or on an additional control unit connected to the apparatus causing such improvement will thus almost always be considered technical, even though only computational steps may be claimed. The problem solution approach thus tends to focus on influencing of hardware components as statutory subject-matter.

The “new” BGH approach: Now the BGH established a somewhat similar approach in “Steuerung von Untersuchungsmodalitäten”, which is, however, limited to those cases where the claimed method is embedded in the processing of a technical apparatus or system (see here, in German).

In the underlying patent application a method for processing relevant medical data upon a medical examination of a patient was claimed, in which a computer program selects an adequate medical imaging device for examining the patient, whereas one or more examining or measuring protocols defining the intended examination are selected from a symptom- or diagnosis-based database and are transmitted to the selected imaging device for controlling the imaging process.

In the second instance, the Federal Patent Court (Bundespatentgericht, BPatG) has rejected the application due to lack of statutory subject-matter according to § 1 III, IV PatG after an assessment of the claimed teaching as a whole, since from the selection process of the computer program, as the essence of the claimed teaching, only the transmission of the selected protocols to the selected imaging device remains for assessing the claim’s technical character, since all mental aspects of the claimed selection/decision process have to be removed as non-statutory.

In the third instance, however, the BGH remanded the BPatG’s decision due to wrong reasoning and referred the case back to the second instance. In contrast to the BPatG, the BGH found that already the steps of processing, storing and transmitting data by a technical apparatus renders the rejected claim sufficiently technical to overcome the exclusions of § 1 I PatG (!!), which very much reminds me of the EPO approach as provided e.g. in “Auction Method/Hitachi”. Further, and even more surprisingly, the BGH appears not to consider this reasoning new or at least somehow amended as compared to his previous decisions, since the present decision is seen in line with X ZB 11/98 (Logikverifikation), according to which the essential issue is whether or not a claimed method is embedded in a technical setting such that technical effects may be achieved and not, as apparently argued by the BPatG, that the technical character of a claim may be negated if this claim comprises technical an non-technical features.

In the present decision, the BGH explicitly states that the question whether or not a claim also comprises non-technicial features is completely irrelevant for assessing the claim’s technical character. The BGH’s old “Kerntheorie” (core theory), which is based on the concept of assessing the technical character of a claim’s core teaching, is explicitly said to be considered non-appropriate for assessing a claim’s technical character already since the Senate’s decision X ZB 15/98 (Tauchcomputer) in 2000.

Conclusion: The decision clarifies that a software program that is embedded in a larger technical system and that involves steps of processing, storing and transmitting data by a technical apparatus represents statutory subject-matter according to § 1 PatG, which corresponds to the EPO’s approach as presented in “auction method/Hitachi” according to which executability of a computer program by a computer is sufficient to render the claim technical.

Both concepts for assessing statutory subject-matter according to Article 52 EPC, § 1 PatG are focused on computer programs that provide technical effects in that they control a certain apparatus in a desired way, i.e. to embedded systems or the like. However, they do not allow any conclusion to and are not appropriate to assess the technical character of computer programs that only process technical data to obtain transformed technical data, e.g. CAD/CAM, simulation, data retrieval or the like, without directly controlling technical apparatuses or a system. Such inventions should of course also be considered as statutory subject-matter that may be awarded a patent, as long as they do not represent business methods, mathematical methods, sole presentations of information or the like.

29 January 2010

Comparison of British and European CII approaches

A recent post titled "Patentable subject-matter - Where are we now?" of the IPKat weblog provides a refreshing overview on and comparison of the European and British approaches to CII as patentable subject-matter. The post also sketches the ongoing controvery between the European and the Britisch point of view and provides the following conclusion:

As far as the EPO Technical Boards of Appeal are concerned, nothing has changed. However, as far as the UK Patent Office and the Court of Appeal are concerned, the EPO case law is so full of contradictions that it cannot be followed in any meaningful way. Before the recent referral was made, the situation was at an apparent stalemate, with neither side willing to give way or refer to a higher authority that might be able to resolve the conflict (leave to appeal to the House or Lords, as it then was, for the Macrossan part of the Aerotel/Macrossan decision was refused, apparently because there were no sufficiently important issues to be decided).

The way that patentable subject-matter is decided at the EPO is in fact largely the same (with a few modifications and refinements along the way) as it has been for the past 25 years. The referral to the Enlarged Board is therefore, in the view of this author as well as other more eminent commenters on the issue, unlikely to have any effect if, as seems likely to happen, the referral is judged to be inadmissible under Article 112(1)(b). Even if the Enlarged Board do decide to answer some or all of the questions, it seems likely that they will merely refer to the current line of reasoning being followed by the lower Boards of Appeal as being correct, and will refrain from making any definitive statements on where the boundary of patentability should lie.

In the UK, the situation remains more difficult to assess given the difficulty of reconciling five different, equally binding, Court of Appeal judgments. For now, examination at the Patent Office continues to follow the Aerotel/Macrossan four-step test, with the qualification applied by the later decision of Symbian. Perhaps once the Enlarged Board arrive at their decision, some clarity will return to the UK approach, but this might require a trip to the Supreme Court to sort out the issues properly.

Although there has been much discussion of the differences between how patentable subject-matter is dealt with in the UK and European Patent Offices, it should be remembered that, in the great majority of cases, the same result will nonetheless be achieved.
It is generally expected that the EPO Enlarged Board will come to a decision within the next few months. Regardless of what this decision is, it should help to resolve at least some of the differences between the EPO and UK approaches. The author, who predicts that the Enlarged Board will rule the referral as being inadmissible, suspects that the issue is unlikely to be fully settled for quite some time to come, if at all.

20 January 2010

Patentability of an apparatus conducting a mathematic algorithm

Besides the Bilski case (see here and here), in which the Machine-or-Transformation-Test (MOT) is used to verify whether or not a method claim represents statutory subject-matter, the decision ex parte Gutta of the US Board of Patent Appeals (BPAI) recently determined criteria to verify the same for an apparatus claim.

The application particularly relates to a business method an apparatus for conducting the same, whereas the business method claims have already been rejected due to not meeting the Bilski standard (i.e. the MOT-Test). What is interesting about this decision is the fact that the apparatus claims have been rejected under § 35 USC 101 (non-statutory subject matter) based on the reasoning, that the apparatus may be reduced to the underlying mathematical algorithm which, as such, is not patentable (see here and here). This ruling will surely influence the USPTO's practise on examining apparatuses conduction a CII, e.g. computers or the like.

The ruling of the BPAI was base on a new test, according to which an apparatus is only patantable if at least one of the the two following questions can be positively be answered:

  1. Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., not a mere field-of-use label having no significance)?
  2. Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”
Claim 14 of the application, which is directed to a "system for identifying one or more mean items for a plurality of items" structually only mentioned a memory and a processor, the latter being configured to "compute a variance of the symbolic values of the plurality of items relative to each of the items" and to "select the at least one mean item having a sysmbolic value that minimizes the variance", that is, to execute a pure mathmatical algorithm.

The BPAI thus found that for this subject-matter each of the above two questions has to be answered negatively, since the claim is neither "limited to a tangible practical application in which the mathematical algorithm is applied that result in a real-world use”, nor is the claim limited such that it does "not encompass substantially all practical applications of the algorithm".

Noteworthy, claim 19, which is directed to an article of manufacture comprising a computer-readable program code (for identifying the mean item having the symbolic value minimizing the variance) embodied on a computer-readable medium, has been accepted since the "computer-readable medium" (RAM, ROM or the like) represents a tangible entity. Hence, ex parte Gutta (again) opens the way to protect pure software (or mathematical algorithms) as stored on a computer-readable medium, which vaguely reminds Europeans of the EPO Board of Appeal decision T 1173/97 "computer program product/IBM" from 1998.

Statistics on Software Patentes in the US

In his posting "patent facts and stats" Mr Philip Brooks reported on interesting figures regarding US software patents. Basically, the studies were focussed on

  1. the number of US patents that are software/internet patents;
  2. annual percentage of US patents that are declared invalid via litigation; and
  3. annual percentage of US software patents that are declared invalid via litigation.
Regarding question 1, noteworthy increases in the number of annually filed software patentes have occurred in the years 1998 (+140%) and 2006 (+60%).

Regarding the two remaining questions, the average annual numbers of upheld patents in infringement proceedings iwere estimated at 54% and  58%, depending on the sudy. However, the comparable figures for software patentes have not been found statistically significant, which is a pitty since this would have allowed to draw some interesting conclusions on the quality of software patents in the US as compared to all US patents.

18 January 2010

Software Protection in India as compared to Europe and the US

The posting "Patenting of Software - an Insight" formerly published on Mshared.com gives a nice overview on software protection by patents versus copyright as well as an outline on the current CII practice in India as compared to that in Europe and the US, whereas the conclusion is drawn that:

India for its part seems to have adopted the more conservative approach of the European patenting norms for software. But the Ordinance definitely has its use and relevance in today’s India, particularly for our growing domestic semi- conductor industry. This, along with judicial tempering might definitely ensure a judicious use of patent protection while allowing the industry to grow through innovations and inventions, thereby, mitigating the risks of trivial patents chocking the life out of real innovations and inventions. This is the reason a patent should always be treated as a “double edged sword”, to be wielded with caution and sensitivity. Now whether, in reality this will be implemented on a rigid basis or will become broad in scope through application (as in the U.S.), and, more importantly, whether the Ordinance would, in fact, result in increased innovation and inventions in the software industry, remains to be seen.

USPTO embarrassing

On the Forum on Modernizing Government President Obama said that "believe it or not, in our patent office - now, this is embarrassing - this is an institution responsible for protecting and promoting innovation - our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system…” and analysed that this was one reason for the fact that average patent procecution takes “roughly three years”, as reportet by the IPKat. As far as I am able to tell from my practice, neither is the average patent procecution as quick as three years nor can I believe that the initial processing of electronically filed applications may be major problem when it comes to long procecution times before the USPTO.

Interesting CII Cases in Europe, the US and Germany

This "Blawg" is basically dedicated to the pros and cons of software protection through IP rights (i.e. so called "software patents" or, more corectly expressed, "computer-implemented inventions") and will thus try to follow the ongoing (worldwide) discussion in this highly controversal field of IP practice and politics.

This year we will see important developements (or setbacks, depending on the viewpoint) in this field. In fact, 2010 may bring a turning point or consolidation in the discussion on CIIs since important cases are pending both in Europe and the US. 

In Europe it's pending case G3/08 being a referral to the Enlarged Board of Appel of the EPO in which the Board has to decide on the following questions:

  1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?
  2. Can the exclusion be bypassed by tying the claimed invention to a piece of hardware?
  3. Must a claimed feature cause a technical effect in the real world in order to contribute to the technical character of the claim?
  4. Does the programming of a computer necessarily involve technical considerations?
The enormous interest of the public, NGOs, professionals and industry is documented by the fact that more than 100 Amicus Curiare Briefs have been filed by third parties, many of which expecting a decision on the merits. However, a number of Briefs - especially those from patent law experts - also raise the issue that the refferal may not be permissble since the requirements of Article 112 EPC are not met. Such concerns are based on the question whether or not really "different decisions" were issued by "two [different] Boards of Appeal". This concern has, inter alia, been raised in the Briefs of Emeritus Professor Straus of Max Planck Institute for Intellectual Property (cf. here) and the"Patentanwaltskammer" i.e. the German Patent Bar Association (cf. here).

For the United States patent practice the outcome of the case In re Bilski, which presenty is pending at the US Supreme Court, is expected to be groundbreaking. In this case the highest US court has to decide on the question whether or not the patentability of a process claim can exclusively be verified by the Machine-or-Transformatin-Test (MOT) requiring that a process
  1. is tied to a particular machine or apparatus; or
  2. transforms an article from one thing or state to another.
Good collections of related material have been compiled by AwakenIP or on Finnegan's Bilski page. An oral hearing on Bilski's and Warsaw's petition  has already been held on November 9, 2009. To learn a bit on the two men who originated this debate, you may be interested in this interview with Mr. Bilski and Mr. Warsaw. 

Futher interesting developments having impacts on US and German CII practice are ex parte Gutta (cf. decision by the US Board of Patent Appeals) and the decision X ZB 22/07 of the German Federal Court of Justice (Bundesgerichtshof) addressing similar questions. I may later refer to these two cases in more detail.