Visae Patentes

The occurrence of this blog in the IP blogoshere wasn't quite as dramatic as the eruption of Iceland's Eyjafjallajökull in spring this year.
However, for me personally it was a rather big step to integrate more or less regular blogging into my daily rountine, so that I hope that some readers could/can gain some value from my posts.

If I can trust my statistics tools, I have had about 9.500 visitors so far, mainly form the United States (20,9%), Germany (19,0%), United Kingdom (7,6%) Japan (7,3%) and Holland (6,4%).  

In my 100th posting it is certainly high time to send my Big Thanks to all of you for following my postings in the past eleven months!

My very first blog posting was launched on 18 January 2010 more as a preliminary test than as a start of a regular blogging carrier. Since then I - surprisingly - managed to post 8 to 10 pieces per month, which I consider the absolute maximum imaginable posting rate besides my main "jobs" as patent attorney in my Munich based patent law firm k/s/n/h and as a husband and father of two.

As it is explained on the blog's main page, the name "Visae Patentes" is derived from a medieval Latin root whose meaning slowly transformed from an official term for a "privilege issued in writing" (e.g. a patent) to a rather colloquial expression of getting up to nonsense, doing silly things, or messing about something. Of course, I am not saying that patents are nonsense - the name is rather meant to provoke some cognition to achieve "distinctiveness" -, but there certainly exists a fine line between useful patent regimes that really foster technical progress and other regimes that are less useful in this regard.

Many smart people (and also some less smart but more dogmatic fellows) assume that this fine line is constantly crossed by so called "software patents", since, so they say, software almost always relates to conceptual and mathematical issues (i.e. "abstract ideas" in the Bilski sense) and programming is not about inventions anyway, which is why software-implemented inventions should not be patentable at all. While I agree that pure conceptual or mathematical teachings may lie beyond that fine line, it is also clear that there exist software-implemented inventions that apparently must lie at the patentable side of that line since they represent technical improvement in the very sense of that word, e.g. a software-controlled washing machine, car brake system or the like. 

For many years now, jurisdiction around the world have tried to find appropriate legal definitions and models for that fine line, so called patent-eligibility requirements. While the EPO and Germany follow a "technicalilty" approach, the US has its machine-or-transformation test and no-abstract-idea/Bilski approach, Great Britain follows its Aerotel/Macrossan test, Canada requires a "practical embodiment", Australia a "physical effect" and Japan has a laws-of-nature requirement. In the end, all of theses approaches apper to relate to the same core issue of patent eligible subject-matter, namely to its tangible technical implementation.

As a patent attorney and computer scientist it was quite natural that in the beginning I planned to mainly report on IP software protection, but over the months I found many more interesting IP related topics that I considered worth mentioning, e.g. the exciting and important political debate on the so called EU and European Patent Court (EEUPC, EPLA) and the EU patent. Now, at the end of an eventful year, the EU patent failed (again) due to language issues and a so called enhanced co-operation of some willing EU member states appears to be the last resort. Or, rather, the latest approach of Germany and some others to quickly initiate an enhanced co-operation may also be a red herring to force stroppy Italians and/or Spaniards into the EU patent, whereas such "cooperation" may then be compensated for in some horse trading - during these days of southern European debt crisis. For now, we learned from @EUCouncilPress that the enhanced co-operation has made its way on the agenda of the EU Competitiveness Council on 10 December 2010 (cf. #EUPatent). We thus will receive some more hot news on this issue until the end of the year.

Besides such political issues, the two opinions G 3/08 (12 May 2010) of the Enlarged Board of Appeal of the EPO and Bilski v. Kappos (28 June 2010) of the US Supreme Court were most relevant for many of us. While the Bilski opinion did answer some questions but posed even more new ones, the G 3/08 opinion marked somewhat of an end point in the debate on the EPO's practice on CII. In fact, the "adapted problem/solution approach" as developed in  T 208/84 (Vicom) and T 641/00 (Comvik), a variant of the regular problem/solution approach that additionally assesses a claim's technical character and its inventiveness based on technical features, has been confirmed as established examination scheme for CIIs and there is not the slightest sign that the legislator (i.e. the European Commission) will put that question back on the agenda after the epic failure of the proposal for an EU Directive on the patentability of computer-implemented invention in July 2005. So, according to my understanding, at least before the EPO we have gained some consistency and legal certainty as to what computer-related inventions may be patentable in Europe.

To conclude my little "jubilee" post, please find below an overview on my first 99 postings as grouped in some general subjects addressed: 

EU Patent Court and EP Patent 

• Nov: The Next Attempt Towards a Cheaper EU Patent - This Time without Spain and Italy 
• Nov: Belgian Presidency Finds Things Clear Now: There will Never be Unanimity on an EU Patent 
• Nov: New Proposal for EU Patent Language Regime by Belgian Presidency to be Discussed Tomorrow
• Oct: Belgian Compromise not Sufficient to Remove Deadlock on EU Patent Language Regime 
• Oct: EU Committee Gives Political Orientation With Regard to Belgian Presidency's Proposal for EU Patent Language Regime  
• Sep: Latest Positions from Patent Judges' Symposium, EPO, EU Authorities, and AIPPI on Language Regime and Legal Compatibility of EEUPC 
• Aug: The Advocates General's Statement on the Planned Unified European Patent Court System 
• Aug: Hearing of EU Court of Justice on EU Patent System did not Address Representation before Patents Court 
• Aug: Representation Before The Future European and EU Patent Court 
• Jul: Known German Positions on the Unified EU Patent Court System
• Jul: EU Patent would be Good for Patent Offices (except German PTO) and Applicants but Bad for Attorneys 
• Jul: EU Commission's Proposal for EU Patent Language Regime is Doomed to Fail 
• Jun: EU Patent and EU Patent Court are Not in the Best Shape

The EPO's Approach to CII (especially G 3/08)

• Nov: Computer Program Claim not Excluded from Patentability under the EPC
• Nov: Technical Board of Appeal rejects Computer-implemented Invention in the field of Bioinformatics (T 784/06)
• Oct: Computer-Implemented B2B Information System not Inventive Due to Comvik and Despite TRIPS
  
• May: EPO Enlarged Board of Appeal found Referral on Computer-Implemented Inventions inadmissible (G 3/08)
• Feb: EPO Considers Relaxing Software Patent Rules
• Jan: Interesting CII Cases in Europe, the US and Germany

The US Approach to CII (especially "Bilski")

• Nov: US Board of Appeals (BPAI) Rejects Cryptographic M...
• Sep: Internet Advertising is an Abstract Idea says US D...
• Aug: Two Opinions of the US Board of Appeals (BPAI) on... 
• Aug: US CAFC says that a Computerized Method is not Inf..
• Jul: New Interim Guidance of the USPTO for Determining Patent-Eligibility in View of Bilski
• Jul: Further Bilski Guidance from the USPTO
• Jul: "Software per se" as New post-Bilski Ground of Rejection under 35 U.S.C. § 101
• Jul: The USPTO's Approach to Bilski
• Jul: The Blogosphere Vibrates: Bilski's Business Method Rejected but Software Remains Patent Eligible
• May: Further Bilski Rumors  
• May: Will USPTO use Section 112 more often in rejections of software patents claims?
• Jan: Patentability of an apparatus conducting a mathematical algorithm

The German Approach to CII (Federal Court of Justice, BGH)

• Nov: A Teaching Embedded in a Technical Apparatus Exhibits "Technicality" (Federal Court of Justice Xa ZR 4/07)
• Oct: Patentability Issues in the Annual Report 2009 of German Federal Patents Court
• May: Decision Xa ZB 20/08 of Federal Court of Justice (BGH) on Software-Implemented Invention Controversially Discussed
• Apr: Microsoft's controversal FAT patent upheld by German Federal Court of Justice
• Jan: Germany following the EPO approach to patentability of CII?

Protection of CII around the World

• Nov: Amazon's Canadian "One-Click" Patent Appealed by A...
• Oct: Status of Amazon's Controversial "One-Click" Paten...
• Sep: Protecting and Commercialisating an Invention not Patent-Eligible in Australia (Invention Pathways Pty Ltd)
• Aug: New Zealand Allows Patents on "Embedded Software" but Fails to Provide a Definition
• Apr: Software patents banned in New Zealand: advocacy and opponents
• Apr: Is software really comparable to books/films?
• Apr: Software patenting in developed software-producing countries
• Feb: Guidelines for Examining CII in Japan
• Jan: Comparison of British and European CII approaches
• Jan: Software Protection in India as compared to Europe and the US 

European Patent Convention

• Oct: EPO Patent Law Committee Proposes Amending Recent Amendments to Implementing Regulations
• Oct: European Patent Network Supports Filing of Search Results under Amended Rule 141 EPC
• Aug: EPO Tightens Information Disclosure Requirements
• Jul: A Communication Pursuant to Rule 161 EPC is no "First Communication" According to Rule 36 (1) EPC
• Mar: Forthcoming Changes in the EPC: Filing Divisionals
• Mar: Forthcoming Changes in the EPC: Examination
• Mar: Forthcoming Changes in the EPC: The Search Stage

Case Law of EPO (Enlarged) Boards of Appeal

• Oct: EPO Enlarged Board of Appeal Says EP Application is Pending Until Expiry of Appeal Period (G 1/09)
• May: T 1423/07 - Double Patenting is Possible According to EPC 
• Feb: The Language of the Proceedings before the EPO cannot be changed (G4/08)

Further European/EPO IP Issues

• Oct: EU Commission presents "Innovation Union" Initiative as Belgian Presidency seeks Break-Through in EEUPC Language Issue
• Sep: The Origin of the European Patent Applications Filed in 2009
• Aug: Professional Representation of non-EU Applicants before OHIM
• Aug: Former President of German Patent Bar Critically Comments on European Patent System
• Apr: How to collect annuities

Further US (PTO) Patent Issues

• Jun: US Court of Appeals explains how False Patent Marking can be Prevented
• May: USPTO Announced Program Changes for More Streamlined and Focussed Examination
• May: Increased Allowance Rate at the USPTO
• Apr: USPTO's Ombudsman Pilot Program
• Jan: USPTO on patentability of computer readable media
• Jan: Statistics on Software Patentes in the US 
• Jan: USPTO embarrassing

Further German Issues

• Oct: Today at Midnight the Last Patent of Former German Democratic Republic (GDR) Expires
• Jun: The Influence of the Internet Community on the Election of the German President
• May: Website Operators Liable for Integrated Feeds in Germany
• Mar: Utility Model Protection for Computer-related Inventions in Germany

Further International IP Issues

• Nov: Critical Statement on IP by the Holy See
• Jun: The International IP Strategist's Association
• May: Importance of Intellectual Property for Innovation and Technology Transfer
• May: Munich hosts two major IP Conventions in 2010
• Apr: White Paper on IPR protection by Chinese Courts in 2009
• Apr: WIPO World Intellectual Property Day on 26 April 2010

Open Source and Patent Critics

• Sep: Richard Stallmann interrupted EPO session at World Computer Congress in Brisbane
• Aug: In the Commercial World, FOSS Companies must Learn to Act as Businesses
• Jul: The FOSS Community's Mixed Feelings about the US Supreme Court's Bilski Opinion
• Apr: May software patenting and open source go together?
• Mar: Patent system really has had its days?  
• Jan: Red Hat promotes "open source way" by new collaborative webiste

Election of new EPO President

• Apr: Ms Brimelow's legacy and Mr Battistelli's plans 
• Mar: President of the EPO finally elected
• Feb: Election of EPO President again suspended
• Feb: New EPO President elected this week? 

Trade Marks and Copyright

• Sep: Icelandic Band Sigur Rós "Unsure" Whether Music in Commercials Came by Inspiration or Thievery
• Sep: US Copyright First Sale Doctrine Not Applicable to Licenses for Digital Medial Products
• Jun: Trademark protection of File Extensions in Europe
• Jun: File Extensions cannot be Trademark Protected in the US

INTA Annual Meeting 2010 in Boston

• May: Champion League Final at INTA Annual Meeting
• May: Meet the Bloggers in Boston for INTA
• Mar: INTA Annual Meeting 2010 in Boston

The German Pirate Party

• Sep: Federal Court of Justice (BGH) Rejected Former MP Tauss' Appeal On Sentence for Child Pornography
• May: The Pirate Party's Dubious Understanding of the Sentence Against Former MP Tauss for Child Pornography 
• Mar: Dangerous Closeness

Optimistic German State Secretary Peter Hintze

As reported earlier on this blog, the latest (and final) attempt to reach unanimity among the 27 EU member states with regard to a common EU patent failed because of diverting attitudes among the member states towards the language regime. The disappointing result of the extraordinary Competitiveness Council of 10 November 2010, in which the Belgian Presidency placed a final compromise text (documents 5395/10 and 15395/10 ADD1) on the table, have been summarised in a press conference by Mr Vincent Van Quickenborne: "things are clear now: there will never be unanimity on an EU patent". He said that one of the 27 delegations "apparently did not have a mandate to negotiate", so that "other avenues in the [Lisbon] treaty will now have to be considered, i.e. an enhanced co-operation between a smaller group of willing EU members.

Yesterday, German daily newspaper Frankfurter Allgemeine Zeitung published an article (automatic English translation), according to which "a low-cost EU patent is within reach", because Germany and numerous other countries are now pressing forward without the "brakemen" Italy, Spain and Poland.

According to that article, German State Secretary Peter Hintze said after Tuesday's Competition Council meeting that up to 20 EU member states had agreed on an enhanced co-operation, based on the approach that EU patent applications are filed and granted in one of the three official EPO languages (English, French, German), whereas - apart from a mandatory "courtesy translation" in English - other translations would not any more be required. While Germany is said to soon submit a formal request to start the enhanced co-operation procedure, Italy finds itself taken by surprise by that initiative. An Italian representative therefore threatened to put the language issue on the agenda of the EU summit in December, whereas, however, other delegations did not appear to be overly frightened of Italian Prime Minister Silvio Berlusconi banging on Brussel's table.

Further, Mr Hintze is reported to be optimistic that the EU patent can become reality already in the first half of 2011, which is, even for a politician, indeed optimistic.

Update: Some more information on this issue just came in from EurActiv:

Italy found itself in a political squeeze on Thursday (25 November) as several key European countries moved to create a unified patent to protect the design of products sold across their borders. [...] Sweden, Germany, the United Kingdom, Ireland, the Netherlands, Slovenia and Estonia said they will formally ask the European Commission to help them write a common patent agreement based on "enhanced cooperation" between those countries. [...] Frenchman Michel Barnier, the EU's commissioner for the internal market and services, [...] said he would act rapidly on the request for enhanced cooperation on a new patent, and present a proposal to the Competitiveness Council at its meeting on 10 December.

And with respect to Italy's (and other's) role in that epic debate: 

It was a bold and rarely used tactic to pressure Italy to drop its demand that Italian be one of the official languages of an EU patent [...], however, Italy appears ready to fight any proposal about enhanced competition on patents. "This is not possible," said Giuseppe Pizza, Italian secretary of state, claiming such action would undermine the internal market of the EU.

Surprisingly, Spain is no longer insisting that Spanish also be an official patent language, while Poland took Italy's side and requested another round of negotiations.

France, the Czech Republic and Malta all said they were prepared to explore and analyse a Commission plan for enhanced cooperation on a patent.

As reported in this post, the Federal Court of Canada issued its Amazon.com vs. Canada appeal decision on 14 October 2010 and ruled that Amazon's so called "1-click" e-commerce patent comprises patentable subject-matter, since a business method can be patented according to Canadian law if a practical embodiment is defined by the claims. In this regard, the Court found Amazon's invention qualifying for "art" under the Canadian Patent Act because

1. the system claims require a machine as an essential element of the invention and 
2. the method claims are "put into action through the use of cookies, computers, the internet and the customer’s own action" and result in a "physical effect" on those elements.

The Commissioner of Patents' decision on appeal of 2009 was thus reveresed and the case was remanded to the Patent Office for "expedited re-examination".

Now things get in motion again, since on 15 November 2010 the Attorney General of Canada (Minister of Justice Rob Nicholson) and the Commissioner of Patents filed a Notice of Appeal against the decision. The Grounds of Appeal involve that the Judge (Justice Phelan) "erred in fact and law" in finding that the claims of the 1-click application constitute patentable subject matter, in particular:

1. The Judge erred in law in his interpretation of the definition of "invention" in that
1. he erred in contruing the terms "art" and "process" so broadly as to include the 1-click invention as definde by the method claims;
2. he erred in finding that the terms "art" and "process" are not limited to an act or a series of acts performed by some physical agent upon some physical object and producing in such object some change either of character or condition;
3. he erred in construing the term "machine" so broadly as to include the 1-click invention as definde by the system claims;
4. he erred in finding that an "invention" as defined the Patent Act need not display a technological aspect.  
2. The Judge erred in fact and in law in his characterisation of the 1-click invention for the purpose of determining whether it fell within the definition on "invention" as defined in the Patent Act, in that:
1. he erred in rejecting the "form and substance" approach used for that purpose by the Commissioner of Patents;
2. he erred in not properly applying the "what has been discovered" approach as described in binding jurisprudence;
3. he erred in characterising the 1-click invention, as defined by the method claims, such that if fell within the scope of the terms "art" and "process", as used in the defintion of "invention" in the Patent Act;
4. He erred in characterising the 1-click invention, as defined by the system claims, such that if fell within the scope of the terms "machine", as used in the defintion of "invention" in the Patent Act.

We shall wait and see - and regularly observe the blogoshere. 

The Codd Bottle

On February 4, 2010, the Federal Court of Justice (Bundesgerichtshof, BGH) ruled in a second-instance nullity action that it is sufficient for "technicality" (or a technical character) of a claim if the respective teaching is "embedded in a technical apparatus" (cf. Xa ZR 4/07, Glasflaschenanalysesystem ("glass bottle analysis system"), automatic translation see here).

This decision has been issued by the Xa. (10th auxiliary) Civil Panel under Chief Judge Peter Maier-Beck which has also issued the much discussed decision Xa ZB 20/08 ("Dynamische Dokumentengenerierung") in favour of patentability of a software-related invention, namely a client-server system for dynamically generating structured documents such as XML or HTML documents (see earlier post).

The patent in suit, European patent EP 643 297, relates to  a system for analysing, monitoring, diagnosing and/or controlling a process for manufacturing packaging glass products.

Independent claim 1 reads:

1.   An analytical system (1) for analyzing, monitoring, diagnosing and/or controlling a process for manufacturing packaging glass products (4) said analytical system (1) being provided with an infrared-sensitive sensor system (24) and a digital processor (30) connected therewith, said infrared-sensitive sensor system (24) detecting infrared radiation emitted by warm products in the section directly after the glass-shaping process, and said digital processor (30) determining the energy distribution in the material of the shaped product and energy differences between different parts of the shaped product by means of information from the products obtained with said infrared-sensitive sensor system wherein said energy distribution and/ or energy differences are compared with criteria, obtained by means of a mathematical reference model, for determining deviations in glass distributions and causes leading to thermal stresses in the product.

Independent claim 11 is directed to an "apparatus for producing packaging glass products [...] provided with an analytical system according to [claim 1]".

In the first-instance nullity action before the Federal Patent Court (Bundespatentgericht, BPatG), the plaintiff (and accused infringer in a parallel infringement suit) argued lack of inventiveness and insufficient disclosure, but the Patent Court dismissed the case (BPatG 4 Ni 10/05 (EU) of 08.11.2006). The plaintiff then appealed the decision but substantiated in his grounds of appeal only the alleged lack of inventiveness - but not insufficient disclosure. In that situation, the Court of Justice ruled that the appeal was inadmissible to the extent of the unsubstantiated ground for invalidity, i.e. the alleged insufficient disclosure.

With respect to the remaining lack of inventiveness attack, the Court of Justice took the same position as the Patent Court, namely that the claimed subject-matter is inventive over the cited prior art. Within the assessment of inventiveness, the Court of Justice also had to address the question, whether or not independent claim 1 involves "technicality" (i.e. a technical character) and found that the claimed "analytical system" exhibits the required technicality just offhand, since it is sufficient for the requirement of technicality that the teaching in question is embedded in a technical apparatus.

This ruling is perfectly in line with the Court of Justice's decision X ZB 22/07 („Steuerung für Untersuchungsmodalitäten“) of January 20, 2009, according to which a software that is embedded in a larger technical system may represent statutory subject-matter (see earlier post). That decision was assumed to represent a turnaround of the Court of Justice's approach to assess technical character of an invention towards that of the Boards of Appeal of the European Patent Office, which has been generally confirmed by the EPO's Enlarged Board of Appeal on May 12, 2010 in the opinion on referral G 3/08 (see earlier post).



(The above-depicted "Codd Bottle" was invented in 1872 and patented by Hiram Codd and enclosed a marble and a rubber washer/gasket in the neck. Such bottles were filled upside down, and pressure of the gas in the bottle forced the marble against the washer, sealing in the carbonation. The bottle was pinched into a special shape to provide a chamber into which the marble was pushed to open the bottle.)

Signature of Queen Elizabeth I (1533-1603)

In early October 2010, the US Board of Patent Appeals and Interferences (BPAI) issued three interesting decisions relating to computer-implemented inventions in the US, namely (i.) Ex parte MacKenzie, App. No. 10/183,900, (ii.) Ex parte Kelkar, App. No. 10/629,448, and Ex parte Venkata, App. No. 11/182934. A brief overview of these opinions can be found on Dennis Crouch’s Patently-O blog. 

In Ex parte MacKenzie (Appeal No. 2009-7332), the applicant presented independent method claims 1 and 9 and corresponding independent apparatus claims 17 and 18. Theses claims sought protection for a technique for sharing the DSA signature function, so that two parties can efficiently generate a DSA signature with respect to a given public key but neither can alone. The Board rejected the claims under 35 U.S.C. § 101, since the method was directed to an abstract idea, as affirmed by the US Supreme Court in Bilski v. Kappos, and remanded the case to the examiner for further prosecution. 

Rejected claim 1 reads as follows:

1. A method for use in a device associated with a first party for performing a signature operation on a message substantially based on the digital signature algorithm (DSA), the method comprising the steps of:

• generating in the first party device a first component associated with the signature operation based on assistance from a device associated with a second party, wherein the assistance from the second party device is received as a first message from the second party device;
• transmitting the first component to the second party device;
• generating in the first party device a second component associated with the signature operation based on further assistance from the second party device, wherein the further assistance from the second party device is received as a second message from the second party device, wherein the second message comprises results generated using the transmitted first component; and
• outputting a form of the first component and the second component as a result of the DSA signature operation.

Besides the fact, that the unpatentability of abstract ideas was recently reaffirmed by the US Supreme Court in Bilski v. Kappos, the Board’s decision specifically relied on the findings that

• subject permitted within 35 U.S.C. § 101 must fall within one of the four exclusive statutory categories, machine, manufacture, process, or composition of matter;
• a “signal” cannot be patentable subject matter because it is not within any of the four categories (In re Nuijten, see also here and here);
• the Supreme Court has held that excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas (Diamond v. Diehr, see also here);
• An idea of itself is not patentable (Gottschalk v. Benson, see also here and here);
• a claim that recites no more than software, logic or a data structure (i.e. an abstraction) does not fall within any statutory category (In re Warmerdam); and
• abstract software code is an idea without physical embodiment (Microsoft Corp. v. AT&T Corp., see also here and here).

With this background in mind, the Board entered a new ground of rejection under 35 U.S.C. § 101 as being directed to non-statutory subject matter, because the claims relate an abstract process.

The Board observed that the preamble of above claim 1 recites a “method […] for performing a signature operation on a message substantially based on the digital signature algorithm (DSA)” and that

the claimed invention is directed to software per se, abstract ideas, abstract intellectual concepts and the like, including mathematical variables as software components, such as the claimed first component and second component and a mathematical algorithm, such as the claimed [method].

The Board further concluded that

the claimed method sets forth abstract intellectual concepts embodying the invention, which is fundamentally directed to a mathematical algorithm. To the extent recited in claim 1, the first and second components appear to be variables in a mathematical equation (DSA algorithm) that is presented in combination with a nominal claim to generic structures, such as the claimed “devices.

Analogously, corresponding independent apparatus claims 17 and 18 were also concluded to merely represent a mathematical algorithm (the DSA) in combination with generic structures, such as an apparatus, processor, and memory that are each modified by a statement of intended use. The board thus emphasised that clever claim drafting involving the nominal addition of generic structures cannot circumvent the “abstract idea” principle articulated by the Supreme Court in Bilski v. Kappos, so even when a claim appears to apply an idea or concept in combination with a nominal claim to generic structure(s), one must ensure that it does not in reality seek patent protection for that idea in the abstract.

Moreover, claims 17 and 18 were found to be limited neither to a tangible practical application in which the application of the mathematical algorithm results in a real-world use nor to encompass not substantially all practical applications of the mathematical algorithm (cf. Ex parte Gutta, see also here).

[Vincent Van Quickenborne on the press conference of 10 Nov 2010]

Two days ago I reported on the Belgian Presidency's latest compromise text for a EU patent language regime based on documents 5395/10 and 15395/10 ADD1 of 8 and 9 November 2010, respectively. This compromise was hoped to have the potential to break the deadlock and lead to a historic deal at an extraordinary Competitiveness Council on 10 November 2010.

The results of the brave Belgian attempt to reach a historic deal has been announced to the curiously waiting European SME's and IP professionals in a press release of the President of the Council, Mr Vincent Van Quickenborne, Minister for Enterprise and Streamlining Policy of Belgium: 

Most [i.e. not all] delegations have shown greater flexibility than ever before, because the Council understands the importance of securing an EU patent system [...]. I would like to express my sincere gratitude to all those delegations who have made efforts and shown flexibility to bring us so far. We have left no stones unturned. However, in spite of the progress made, we have fallen short of unanimity by a small margin.

As reported on IPJur, Mr Vincent Van Quickenborne explained in a press conference, that 26 of 27 delegations "were in negotiation modus" while "one delegation apparently did not have a mandate to negotiate". As a matter of the fact that the Lisbon treaty requires unanimity in all language issues, "other avenues in the (Lisbon) treaty" will now have to be considered, i.e. the enhanced cooperation. Mr Van Quickenborne also said on the press conference that "things are clear now: there will never be unanimity on an EU patent".

It is reported on EurActiv that Mr Van Quickenborne's latest efforts appeared to have swayed Poland and Portugal, while Italy and especially Spain remained reluctant. While Andrea Ronchi, Italy’s Minister for European Policies, said that "we understand this is a matter of urgency, but the matter will require further in-depth discussion", Diego Lopez Garrido, the Spanish state secretary for the European Union, was cited as "we cannot accept discrimination". Apparently, Mr Lopez Gerrido (who probably lead the one delegation not being in negotiation modus) did not even consider the new proposal's idea of a transitory period, since he argued that after six years or so the EU Patent most likely would be reduced to the 'Munich' three languages system (as suggested by the European Commission on 30 June 2010), which the Spanish Government finds inacceptable.

The most likely "other avenue in the Lisbon treaty" now appears to be an enhanced co-operation, i.e. an EU legislative agreement among a small group of EU members. Although such a mechanism has been permitted already in the Amsterdam Treaty of 1999, it has not yet been used since it is considered somewhat against the EU philosophy. In fact, the Schengen agreement and the EURO, which also are in force only in certain member states, have not been implemented by an enhaced co-operation but by other legal mechanisms. But there is also an obstacle to this option. While only nine member states have to agree to take part in the enhanced co-operation, it needs to be authorised by a qualified majority of member states, whereas it is unknown if that can be achieved. That is, one cannot be overly enthusiastic about the prospect of success of this option either.

Regarding this option, the IAM blog knows that "a group of countries, the UK, Sweden, the Netherlands, Slovenia and Ireland (though not, it seems Germany and France), wrote to the Commission to signal [the enhanced cooperation] as a way forward. There are, however, significant obstacles to it actually happening as member states representing 62% of the EU population would have to agree to it. If Spain plus Italy and, say, Poland said no then that would be a very big obstacle to get over."

Only recently I reported that, due to predominant national interests, the October meeting of the Competitiveness Council did not bring any improvement to the deadlock between the trilingiual language regime as proposed by the EU Commission on 1 July 2010, and alternative solutions, such as the multilingual language system supported by Spain and Italy (see provisional conclusion of the Council).

Particulary, the latest compromise (non-paper) proposed by the Belgian EU Presidency was "not considered sufficient to remove the deadlock" by the parties, whereas the Belgian Presidency was reported to not loosing hopes that the Competitive Council can still find a fair compromise in this November.

In this situation, it was reported today that the well-informed EurActiv network has seen a new compromise text proposed by the Belgian Presidency, which is hoped to have the potential to break the deadlock and lead to a historic deal at an extraordinary Competitiveness Council on 10 November 2010 (tomorrow).

The key element of the new proposal appears to be an open-ended transitional period during which translations of EU patents should be available only in English, but not in French or German, whereas the permanten regime, upon which English, French and German will become the three fully-fledged official languages for the EU patent, will enter into force only after the transitional period has ended.

In decision  T 979/06 of 21 September 2010, Technical Board of Appeal 3.5.04 of the EPO had to decide on sufficient disclosure (Art. 123 EPC), clarity (Art. 84 EPC) and inventive step (Art. 56 EPC) of an invention relating to reducing luminance flicker in a video image sequence by means of a computer-implemented method. Claims 1 and 11 of the main request read:

1. A method of reducing luminance flicker in a video image sequence comprising a plurality of video images produced by a camera, comprising:

• digitally filtering on a per pixel basis, using a  finite impulse response filter of maximum length N+1, temporally successive video images of the video image sequence; said digitally filtering comprising:
• adjusting a filter length, measured in terms of a number of pixel values, corresponding to a current image pixel value of the finite impulse response filter to increase the filter length 
• if an absolute difference between the current image pixel value and a correspondingly spatially disposed previous pixel value of respective current and previous temporally spaced successive images of the video image sequence is less than a threshold value up to the maximum filter length of N+1, and 
• otherwise setting the filter length to one, measured in terms of a number of pixel values.

11.  A computer program comprising computer program code means adapted to perform all the steps of claims 1 to 4 when the program is run on a computer.

Oral proceedings were held on 5 March 2009 in the absence of the appellant. At the end of the oral proceedings, the chairman announced that the proceedings would be continued in writing.

The Board informed the appellant in a Communication dated 26 March 2010 that it had formed the opinion that the subject-matter of claims 1 to 10 of the main request was patentable and that the Board intended to stay the appeal proceedings until the opinion of the Enlarged Board of Appeal in case G 3/08 was available, since requested claims 11 and 12 were directed to a computer program.

The G 3/08 opinion: The referral G 3/08 of former EPO President Alison Brimelow comprised four questions, among which question 1 related to claim categories and thus to the instant case:

Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

The referral claimed a divergence between decisions T 1173/97 (Computer program product/IBM), placing the emphasis on the function of the computer program rather than the manner in which it is claimed (e.g. as computer program, computer program product, or computer-implemented method), and T 424/03 (Clipboard formats I/MICROSOFT), which placed emphasis on the manner in which the computer program was claimed. Following the reasoning of the latter decision, only a claim of the form "computer program for method 'X'" could possibly be excluded from patentability as a computer program as such, whereas claims of the form "computer implemented method 'X'" or "computer program product storing executable code for method 'X'" would not be excluded, irrespective of the nature of the method 'X'.

The opinion of the Enlarged Board of Appeal in case G 3/08 was issued on 12 May 2010. Regarding the above question and the two decisions cited in the grounds of the referral, the Enlarged Borad explained that

• the assessment whether or not a claim directed to a computer program is excluded from patentability should be determined independent of prior art;
• T 1173/97 had deliberately abandoned the former "contribution approach", according to which the further technical effect required from a computer program to avoid exclusion had to be new, and that this choice stands as the established case law and cannot be overturned; 
• T 1173/97 and T 424/03, in fact, took different views on the exclusion of claims to a program on a computer-readable medium but this, however, represents legitimate development rather than a conflict in case law;  
• the present position of case law is that a claim relating to a computer program can avoid exclusion under Art. 52 (2), (3) EPC by explicitly mentioning the use of a computer or a computer-readable storage medium; and
• a claim which specifies no more than e.g."Program 'X' on a computer-readable storage medium" will overcome the exclusion of Art. 52 (2), (3) EPC but will lack an inventive step pursuant Art. 56 EPC.

The instant decision: The present Board thus concluded that the Enlarged Board of Appeal found, inter alia, that there was no (real) conflict between T 1173/97 and T 424/03 and that the definition of the "further technical effect" given in decision T 1173/97 stood as the established case law.

Regarding instant claims 11 and 12, the board then examined whether the subject-matter of claims 11 and 12 has a technical character because the claimed program, when run on a computer, causes a "further technical effect", as required by T 1173/97. It was observed that computer programs of claims 11 and 12 have the effect that, when run on a computer, luminance flicker in a video image sequence comprising a plurality of video images produced by a camera (and input into the computer) is reduced. The board thus concluded that this effect is a "further technical effect" as required by established case law, such that the computer programs of claims 11 and 12 are not objectionable under Art. 52 (2), (3) EPC.

I just came across the very interesting decision T 784/06 of an EPO Technical Board of Appeal, relating to the rather new scientific discipline of  bioinformatics, i.e. the application of computing and mainly statistical methods to DNA sequencing, e.g within the framework of the Human Genome Project.

Not only that this decision presumably is the first bioinformatics case dealt with by a Technical Board of Appeal, it also demonstrates the EPO approach towards computer-implemented inventions (although with some "twists"), as presented in T 641/00 (Comvik, 1992) and recently confirmed in G 3/08 by the Enlarged Board of Appeals (see also here and here). Some supplementary information on patenting of bioinformatics inventions can be found on Phamalicensing.com.

Originally filed and granted Claim 1 of EP 0 736 107 relates to a method of determining the genotype at a locus within genetic material obtained from a biological sample, the method comprising:

1. reacting the material at the locus to produce a first reaction value indicative of the presence of a given allele at the locus;
2. forming a data set including the first reaction value;
3. establishing a distribution set of probability distributions, including at least one distribution, associating hypothetical reaction values with corresponding probabilities for each genotype of interest at the locus;
4. applying the first reaction value to each pertinent probability distribution to determine a measure of the conditional probability of each genotype of interest at the locus; and
5. determining the genotype based on the data obtained from step (D).

An essentially parallel device claim 22 was directed to device for determining the genotype at a locus within genetic material obtained from a subject executing the method according to claim 1. 

Technical features: The proprietor (Beckman Coulter, Inc.) held that all steps A to E are technical, while the opponent (Roche Diagnostics GmbH) argued that steps B to E relate to pure mathematical operations and thus have to be considered non-technical.


Patentability: As to the general question of patent-eligibility according to Art. 52 (2), (3) EPC, such a claim has to be considered having the required technical character, since for determining whether or not a claim exhibits a technical character (i.e. the claim does not relate to a mathematical method, mental act, or computer program as such) the presence of non-technical features is irrelevant.

Adapted problem/solution approach: It is established case law that non-technical features relating e.g. to mental activities, mathematical operations, or commercial steps cannot contribute to novelty and inventiveness of a claim because such features are deemed to be in the prior art. Since, by definition, non-technical features are known by the skilled person, however, they may be considered when deriving the objective technical problem from the technical differences between the instant claim and the closest prior art. This so-called adapted problem/solution approach was developed in T 208/84 (Vicom) and T 641/00 (Comvik) and recently confirmed by the Enlarged Board of Appeal's opinion on case G 3/08.

Tangible technical result: For assessing inventive step, the Board of Appeal had to observe whether the mental activities of steps B to E are non-technical features or whether theses steps interact with technical step A "so as to yield a tangible technical result", whereas the term "tangible result" appears a bit strage in a Board of Appeals' argumentation regrading non-technical features of a computer-implemented invention, since this term has not yet been used in the pertinent case law.

In fact, it was the famous US CAFC decision "State Street Bank" which found that "a claim is eligible for protection by a patent in the United States if it involved some practical application and it produces a useful, concrete and tangible result". The so called "useful, concrete and tangible result test" for assessing patent-eligible subject mater was later substituted by the "machine or transformation test" in the CAFC decision In re Bilski which, in turn, was rejected by the US Supreme Court in its Bilski vs. Kappos ruling (see my earlier postings here and here). 

Non-technical features: The Board of Appeal observed that steps B and C of are indeed very generally formulated, whereas the specification is in this respect no more generous than the claims in terms of information and the “Summary of the Invention” is no more that a mere repetition of the claims and an outline of the flow of data treatment with no concrete details.

According to the invention, the probability distributions of steps C and D are generated using a program written in C whose listing is shown in Appendix A of the specification. With regard to this computer program, the Board observed that it concerns

an unspecified embodiment wherein the data treatment is carried out using computer processing employing a computer software called "GetGenos". This section does not provide a truly useful example of how to proceed within the framework of the outlined method. In fact, the mathematical reasoning starting from an actual experimental value determined according to step A and ending with the determination of a precise genotype according to step E is not described in detail. Moreover, it fails to supply a reasonably complete and sufficient description of the software "GetGenos" especially developed by the inventors to produce GBA data [...].

This deficiency is remedied neither by the mathematical formulae referred to […] nor by the mere code lines written in C language contained in Appendix A […], which […] serve the purpose of generating probability distributions. No informational content can be attributed to the constants, variables and functions mentioned therein.

Based on this observations the Board of Appeal took the position that, based on the disclosure, a skilled person cannot "understand how to proceed from the first reaction value collected in step A through steps B, C and D to the determination on a probabilistic basis of the genotype of step E" and concluded that "no interaction can be established between the technical activity of step A with the mental activities of steps B to E leading to a tangible technical result, as required by the case law".

Lack of inventive step: The Board concluded that steps B to E only relate to a general manner of data analysis and are thus to be ignored in assessing inventive step, so that the claimed method of determining the genotype was technically only limited by "the general and broad wording of step A". Such a method, however, could easily be identified in the cited prior art. The Board thus concluded that the claimed subject matter does not meet the requirements of Art. 56 EPC and revoked the patent.

Comments: It comes as a surprise, that the Board argued that steps B to E are non-technical based on the finding that no reasonably complete and sufficient disclosure exists that may clarify an interaction with technical step A "so as to yield a tangible technical result". In my opinion, this argumentation rather relates to insufficient disclosure according to Art. 83 EPC, which even was raised by the opponent as a ground for opposition pursuant Art. 100 b EPC. If the lack of disclosure really is decisive for features B to E being non-technical, the immediate question arises whether a more complete disclosure could have potentially prevented this objection.

It appears that the Board somewhat relied on the case law for patentability of mathematical methods (cf. Case Law of the Boards of Appeal, 6th ed. 2010, section I.A.2.2.2), according to which

a basic difference between a mathematical method and a technical process can be seen [...] in the fact that a mathematical method or a mathematical algorithm is carried out on numbers [...] and also provides a result in numerical form, the mathematical method or algorithm being only an abstract concept prescribing how to operate on the numbers. [...] In contrast, if a mathematical method is used in a technical process, that process is carried out on a physical entity (which may be a material object but equally an image stored as an electric signal) by some technical means implementing the method and provides as its result a certain change in that entity. [...] Even if the idea underlying an invention may be considered to reside in a mathematical method, a claim directed to a technical process in which the invention's method is used does not seek protection for the mathematical method as such (see also T 208/84, T 1161/04).

That is, mathematical operations are to be considered technical if  the claim specifies what physical entity actually is represented by the mathematically processed data, i.e. if the processed data itself is technical, such as control parameters of a technical process or the like. 

A richer disclosure that clearly specified the concrete relationship between technical step A and mathematical steps B to E as well as some technical effects of those steps could certaily have helped to argue that steps B to E interact with step A in a technical way ("so as to yield a tangible technical result") and thus have to be considered when assessing inventive step.

Similar points were raised by the IPKat, who thinks that "the Board's reasoning relating to the non-technical parts of the claims being insufficiently described seems to be a bit unusual and tends to put the whole decision in a strange light" as well as by well-know CII specialist Stefan Steinbrenner (see his pdf summary on the EPLAW blog):

This finding arrived at by reasoning an absence of interaction from a lack of detailed disclosure is somewhat surprising, in particular since it seems to lose sight of the intended focus on the solution of a technical problem. The decision thus [...] does not answer the question of whether such mathematical steps more or less necessarily performed by computer processing might in principle make technical contributions in biotechnology [...]. Nor do we know for the moment how a "tangible technical result" can reliably be achieved or how specific the disclosure must be to establish the required interaction.

The Holy See (Sancta Sede) - not to be confused with the Vatican City over whose independent territory the Holy See is sovereign - is a subject of international law just as other states. Its possession of full legal personality in international law is shown by the fact that it maintains diplomatic relations with 178 states and that it is a member state in various intergovernmental international organizations, such as the United Nations and the WIPO.

At the meeting of the WIPO General Assemblies on 21 September 2010, H.E. Archbishop Silvano M. Tomasi, Permanent Representative of the Holy See to the United Nations, held a speech on the Holy See's view on intellectual property rights in the context of economic development of poor countries, which he also published on his blog Nunzio-UN.

In fact, this topic appears to be on the Holy See's agenda, since Pope Benedict XVI.'s third Encyclical Letter "Caritas in veritate" of 29 June 2009 already disused the impact of technological progress, economic development, and globalisation on the economical and social situation of poor countries (see also here and here). Under the headline "human development in our time" (chapter II, § 22) modern intellectual property rights are compared with a number of causes of worldwide wealth inequalities, such as corruption and illegality, exploitation of workers and the like: 

The world's wealth is growing in absolute terms, but inequalities are on the increase. In rich countries, new sectors of society are succumbing to poverty and new forms of poverty are emerging. In poorer areas some groups enjoy a sort of “superdevelopment” of a wasteful and consumerist kind which forms an unacceptable contrast with the ongoing situations of dehumanizing deprivation. [...] Corruption and illegality are unfortunately evident in the conduct of the economic and political class in rich countries, both old and new, as well as in poor ones. Among those who sometimes fail to respect the human rights of workers are large multinational companies as well as local producers. International aid has often been diverted from its proper ends, through irresponsible actions both within the chain of donors and within that of the beneficiaries. Similarly, in the context of immaterial or cultural causes of development and underdevelopment, we find these same patterns of responsibility reproduced. On the part of rich countries there is excessive zeal for protecting knowledge through an unduly rigid assertion of the right to intellectual property, especially in the field of health care. At the same time, in some poor countries, cultural models and social norms of behaviour persist which hinder the process of development.

In his speech in front of WIPO, Monsignore Tomasi again emphasised the concerns of the Holy See (i.e. Pope Benedict XVI.) that an excessive IPR regime driven by rich countries would not lead to economic growth in poor countries, since theses countries may not have the scientific resources to create IP or the industrial resources to transform IP into competitive products and prosperity:

Economists recognize several mechanisms through which Intellectual Property Rights (IPRs) may stimulate economic development: these are interdependent so that a broad view of incentives associated with IPRs is appropriate. They devote much attention to this issue, but evidence to date is fragmented and somewhat contradictory, in part because many of the concepts involved have not yet been measured. A stronger system of protection could either enhance or limit economic growth. While strengthening IPRs has potential for enhancing growth and development in the proper circumstances, it might also raise difficult economic and social costs. Indeed, developing economies could experience net welfare losses in the short run because many of the costs of protection could emerge earlier than the dynamic benefits. This situation explains why it is often difficult to organize a convergence of interests in favor of reform of intellectual property in developing countries.

The adoption of stronger IPRs in developing countries is often defended by claims that this reform will attract significant new inflows of technology, a blossoming of local innovation and cultural industries, and a faster closing of the technology gap between developing and developed countries. It must be recognized, however, that improved IPRs by itself is highly unlikely to produce such benefits.

These few observations want to underline the conviction that the main goal of the international community in developing a fair regime of intellectual property rights should aim toward the good of all, the pursuit of more equitable international relations, especially with regard to poorer and more vulnerable people.

While the concerns expressed in the Encyclical and by Monsignore Tomasi appear comprehensible in view of the anticipated north-south patent conflict, e.g. with respect to patents for urgently needed medicines such as HIV drugs (see also here, here, and here), the situation of IP on technology may look different, since research and creating, protecting and commercially exploiting knowledge is a perfect tool for developing countries to become industrialised societies with reasonable standards of living, functioning education system and efficient health care. It is one of the pillars of modern patent system that monopolies are granted to protect economically poorer but innovative entities from the economic powerful that would otherwise be able to obstruct their economic development.

For that reason, Monsignore Tomasi is right to say that "the raison d’être of the protection system of intellectual property is the promotion [...] of inventive activity for the sake of the 'common good'". However, and that's how I understand the Hols See's statements, to foster the "common good" also by means of IPR, it is necessary that the (western) world better understands the potential of intellectual property for supporting social progress instead of focusing too much on IP as a tool to maximise profits.