19 February 2010

The Language of the Proceedings before the EPO cannot be changed (G04/08)

According to Art 14 (3) EPC, "the official language of the European Patent Office [English, German, French] in which the European patent application is filed [...] shall be used as the language of the proceedings in all proceedings before the European Patent Office [...]". As also reported here and here, the Enlarged Board of Appeal of the EPO has now released its decision G04/08 (in French) in which it is explained that the language of proceedings according to the Art 14 (3) EPC cannot be changed.

Upon entry into the Europeant regional phase, the applicant of EP 02 759 818 requested to change the language of the proceedings from French to English and at the same time filed an English translation of the original French application on which the examination proceedings should be based. The rejection of this request was separately appealed and the competent Board of Appeal referred three questions to the Enlarged Board of Appeal, among which the following two had to be answered:

Question 1: If a PCT application has been filed in an official language of the EPO, can the applicant, on entry into the regional phase, file a translation of the application into another EPO official language with the effect that the language of this translation must then be considered as language of the proceedings? Answer: No.

Question 2: If the answer to that question is no, can EPO departments use in written proceedings an official language other than the language of proceedings used for the application? Answer: No.

The decision makes clear that (i.) the EPO authorities have to use the language of proceedings according to Art 14 (3) EPC for their communications and that (ii.) the proceedings cannot be based on a translation of the original application. However, the applicant may always prepare his submissions in an another official language of the EPO (Rule 3 (1) EPC) and he may also use another official language in oral processdings (Rule 4 (1) EPC).

13 February 2010

Guidelines for Examining CII in Japan

I just came across an English translation of the “Examination Guidelines for Inventions in Special Fields: Computer Software-Related Inventions” of the Japanese Patent Office (JPO). The most interesting part of the Guidelines appears to be Chapter 2 concerning the requirements for patentability:

The basic concept of examining statutory subject-matter is that a software-related invention must constitute “a creation of technical ideas utilizing a law of nature”. It does so if the software-driven information processing is concretely realized by using hardware resources. That is, a claimed software program must render a general-purpose computer suitable for a particular purpose by concretely identifying means or components that conduct data processing steps by which the intended purpose is realised, based on cooperatively operating software and hardware resources.

A (software-related) method for operating an information processing apparatus that is particularly suitable for an intended purpose is thus patentable, if the required information processing is concretely realized by using hardware resources. The relatively vague "laws-of-nature requirement" is thus fulfilled if the claim concretely defines those hardware resources that are utilised by the program to be protected to achieve the purpose.This definitions, however, have to clearly state the impact of the software elements on the hardware elements to obtain the wanted results.

According to this definition, even a business method represents statutory subject-matter if it is claimed as a software-related process being "concretely realized by using hardware resources" such that "technical ideas are created by utilizing a law of nature", as analysed here by the Japanese Patent Attorneys Association (JPAA).

Utilizing law of nature: This requirement sounds familiar to German ears, since it has also been set up as a requirement for patentable software programs by the German Court of Justice (Bundesgerichtshof, BGH) in 1976 in its much discussed and much cited decision “Dispositionsprogramm” in which it was declared that “a teaching for methodically acting by utilizing controllable laws of nature in order to achieve a causally understandable success has technical character”.

As could be learned from the Amicus Cuiae Brief of the Polish Patent Office regarding EPO case G3/08 before the Enlarged Board of Appeal, this ancient German definition of technical character has still also followers: 

“No program (software solution giving only the new functionality to the old hardware) can be an invention, irrespective of the form or circumstances in which the program was presented. […] This comes from the general principle of the rule of law. Here the judgement of the German Supreme Court (BGH) in the case Dispositionprogramm is of particular importance, because it directly and profoundly refers to the computer program as early as in the year of 1976."
Utilizing a law of nature is not required for statutory subject-matter according to the US and European patent practice. While US patent practice requires a new and useful process, machine, manufacture, or composition of matter, the European patent practice requires a further technical effect going beyond the normal physical interaction between a software and a computer, as declared in the EPO Board of Appeal's decision T 1173/97 (Computer program product/IBM) and as also reffered to in the second question 2b of Alison Brimelow's referral to the EPO Enlarged Board of Appeal (G3/08).

Admissible claim categories: Software-related invention may be claimed in Japan by an number of different categories:
  1. a process in whose course a sequence of operations is performed over time;
  2. a product specified by multiple functions conducted by a computer;
  3. a program which makes a computer (i.) executing a process (cf. item 1) or (ii.) operating as a means (cf. item 2);  
  4. a computer-readable storage medium storing a program that makes a computer execute a process or operate as a means (cf. item 3).
It is explicitly stated in the Examination Guidelines, that the judgement whether or not statutory subject-matter is claimed should be directed to the “significance of the matters” (i.e. the basic idea of the claim), independent on the actually chosen claim category.

Examples: The claim “computer comprising an input means to input document data, a processing means to process the inputted document data and an output means to output the processed document data, wherein the said computer prepares a summary of the inputted document by using the said processing means” defines a flow of information for transforming document data into a summary. However, this claim does not realise the intended purpose based on cooperatively operating software and hardware resources, since the “processing means” (which I suspect to be a software element) does not cooperate with a hardware element in order to prepare the summary.

Apparently, the above claim wording is too abstract to ever represent statutory subject-matter. The claim in fact merely states the intended result. As far as I understand the Japanese requirements, however, even transforming a text into its summary may be regarded as statutory subject-matter, if the claim specifies features (if possible) that define more detailed processing steps conducted by the “processing means” in cooperation with concrete hardware elements (e.g. CPU, memory, registers, or the like). If such more concrete technical teaching would also involve an inventive step is a different question.

In the same way, the claim “computer to calculate the minimum value of y=f(x) in the range of a≦x≦b” merely defines an intended result of a mathematical operation but does not define on a technical level, how this result is achieved by using hardware resources. In the terminology of the Japanese Guidelines, this claim does not specify cooperative operation of software and hardware either.

On the other hand, clear “creations of technical ideas utilizing a law of nature” would be e.g.
  • control of an apparatus (rice cooker, washing machine, engine, hard disk drive, etc.), or processing with respect to the control; or
  • information processing based on the physical or technical properties of an object (rotation rate of engine, rolling temperature, etc.).
In both cases the scope goes beyond the pure execution of a software program (i.e. the normal physical interaction between a software and a computer) in that an apparatus is controlled or object properties are measured. This, however, would be perfectly in line with the “further technical effect” as required by the EPO  Boards of Appeal in T 1173/97 (Computer program product/IBM).

Conclusion. The Japanese way to examine patentability of software-related invention appears to be more liberal that the Europrean (and German) way, since it is sufficient in Japan to state in a claim how exactly software elements interact or cooperate with hardware elements to achieve a result, which should be possible in most cases which do not exclusively relate to pure mathematical operations.The crucial examination step will then be to check whether or not the claimed cooperation between software and hardware elements is novel and inventive.

04 February 2010

EPO Considers Relaxing Software Patent Rules

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03 February 2010

Election of EPO President again suspended

On the EPO webside it was announced today that also the third attempt to elect a new President of the EPO at the 121st meeting of the Administrative Council from 2 to 3 February 2010 did not reach a conclusion, i.e. none of the three candiates was able to collect a three-quarters majority of the votes. Instead it was decided that the election procedure should continue on 1 March 2010, where Benoit Batistelli, Roland Grossenbacher, and Susanne Sivborg will run for President again.

Apparently, there are no official rules that might shorten an undicidable voting process if none of the candidates reaches the required majority. The only thing one can say ist that this surely increases the likeliness that in the end there might be some kind kind of compromise (or "horse trading"), similar to the idea that Alain Pompidou and Alison Brimelow should share the regular term of office when the Administrative Council could not decide on one of them back in 2003. Referring to this deadlock situation, the IPKat thinks that

this is making the Administrative Council look increasingly ridiculous. After three attempts, surely some bright spark could come up with a better idea than just to carry on with what looks like a slow war of attrition.
The post of President of the European Patent Office falls vacant alredy on 1 July 2010, so not much time left (if any) for a President elect to promote his focus and agenda. As a matter of precaution, the current President, Alison Brimelow, was given an extension of mandate until the end of 2010, whereas it is expected that she will step down if the next President is ready to take over. The term of office is five years, and it may be renewed.

01 February 2010

New EPO President elected this week?

Under the headline "Fresh round of voting for next EPO President", the Administrative Council of the European Patent Organisation announced today that it will once again vote to elect the EPO President after the votings at the 119th and 120th Council Meetings in October and December 2009, respectively, ended with no result, as none of the candidates managed to obtain the required qualified majority of three-quarters of the votes cast by the Organisation's member states:

At an extraordinary meeting in Munich on 2/3 February, delegations of the 36 member states of the Organisation will vote to nominate a successor to EPO President Alison Brimelow.

The candidates for the presidency are Susanne Ǻs Sivborg, Director General of the Swedish Patent and Registration Office, Benoît Battistelli, Director General of the French National Institute of Industrial Property, and Roland Grossenbacher, Director of the Swiss Federal Institute of Intellectual Property.