Template 2015

Patent protection on Software

Software as an asset for technology transfer 29 September 2015

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Art 52(1) - Patentable inventions

“Art 52(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.”

• subject-matter must have technical character • more precisely ‘technical teaching’ – i.e. an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means

Art 52(2) - Patentable inventions

“Art 52(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, … (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) …”

• negative definition • EPC does not include a definition for what’s an invention, but excludes subject matter which is not an invention

Art 52(3) - Patentable inventions

“Art 52(3) Paragraph 2 shall extend the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.”

• Established EPO practice: – subject matter of claim is assessed as a whole – if at least some of the subject-matter is not excluded, then the claim is not excluded

• BUT … also inventive ?

Art 56 - Inventive step

“Art 56 An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.”

• Established EPO practice: – non-contributing features can not be considered when evaluating inventive step – non-technical features ≈ special class of non-contributing features – Enlarged Board decision in 2010: • Status quo • Confirmation of COMVIK approach

T 0844/09 (5/02/2013) • COMVIK approach applied: – « According to established jurisprudence, – an invention consisting of a mixture of technical and non- technical features – and having technical character as a whole – is to be assessed with respect to the requirement of inventive step by taking account of – all those features, which contribute to said technical character – whereas features making no such contribution cannot support the presence of inventive step. »

RESULT

• Only few computer-implemented inventions are excluded from patentability under Art 52(2)(3) EPC

• Inventive step = main objection of EPO against computer- implemented inventions

What does this mean in practice?

• Evaluation of inventive step – Closest prior art (CPA) – Difference between invention and CPA Technical – Effect of difference character? – Problem related to the effect – Is the same problem solved in the same way to reach the same effect?

T 1003/09 – Google Inc (29 April 2015) • Technology The invention relates to database technology.

• Technical character? – Claim 1 directed to • A computer-implemented method for viewing changes to an original optimization plan for a query to a database – YES (Art 52)

T 1003/09 – Google Inc • Inventive? – Difference = • Defining a virtual table… • Replacing … the reference to the original table with a reference to the virtual table • Replacing in the new optimization plan a reference to the virtual table with a reference to the original table. – Effect: faster – Contributing to the technical character? – YES  Inventive  granted patent

Key Conclusion

Is the prejudice “software is not patentable in Europe” justified ?

NO !!! As long as the novelty is in a technical solution for a technical problem, under current EPO practice, a computer-implemented invention is patentable at the EPO !!!

© GEVERS 2015 www.gevers.eu 13 Conclusions under EPC Case Law Learnings: Technical vs Non-Technical features Technical Non-Technical . Relation to Hardware / Computer / Device . Invention is no more than an . Controlling (of a technical process) economical or organisational . Level of operating system concept . Reduction in processing time (e.g. auction method) . Reduction of memory capacity or system . Pure abstract concept resources . Theory without a technical . Processing of measuring results application . Simulation of technical process . Specific application in a technical domain (for example: engineering, physics, electronics)

What is an Invention according to US Law?

• USPTO: “Anything under the sun made by man” as long as it is novel, useful, and unobvious. – Excludes laws of nature, physical phenomena, and abstract ideas – Invention = conception + reduction to practice

© GEVERS 2015 www.gevers.eu 17 US Case Law Key Decision: Alice Corp. Pty. Ltd. v. CLS Bank Int’l (decided on June 19, 2014) • Alice patent covers a system and method for reducing “settlement risk” in financial transactions – Central computer creates “shadow accounts”, – credits and debits those balances with transactions through the course of the day, and – permits transactions to proceed only when the shadow balances remain above zero. • CLS Bank operates a network which settles about $5 trillion of transactions a day – CLS systems for settlement allegedly infringe the Alice patent.

US Case Law Key question Alice Corp. Pty. Ltd. v. CLS Bank Int’l (decided on June 19, 2014)

• Is the claimed subject matter

excluded as an abstract idea?

© GEVERS 2015 www.gevers.eu 19 US Case Law – Supreme Court Decision by US Supreme Court Alice Corp. Pty. Ltd. v. CLS Bank Int’l (decided on June 19, 2014) Proper test requires two steps: 1. Determining whether the claims at issue are directed to a patent-ineligible concept, and 2. Analyzing the claim elements to determine whether an inventive concept is present that transforms the abstract idea into a patent- eligible application

Apply test – step 1

• Claims in Alice are directed to the abstract idea of intermediated settlement, which is a “fundamental economic practice long prevalent in our system of commerce”.

Apply test – step 2 • Inclusion of a computer in the claims does not change the analysis. • A “new and useful” application of the abstract idea is required to render the claims patent eligible. • The Alice claim elements simply recite the concept of intermediated settlement as performed by a generic computer. • Thus lack the “inventive concept”. © GEVERS 2015 www.gevers.eu 22 United States

RESULT of this recent decision • The line between – what is merely an abstract idea and – what is an inventive concept that transforms an abstract idea into a patent-eligible application is rather murky.

Patent eligible Patent ineligible . Claims to improved computer . Claims characterized as technologies merely using a computer to apply an abstract idea . Claims to solving technological . Guidance by the USPTO: problems - Fundamental economic practices . Claims that include an inventive - Methods of organizing human application of an abstract idea activities - An idea of itself - Mathematical relationships

European patent application US patent application . Excluded if program for computer . Excluded if abstract idea. as such. . In Practice: COMVIK Approach . In Practice: 2-step test ------contributing------abstract idea------technical------inventive concept------

Huge opportunities for Technology Transfer Offices to create VALUE by patents in Europe and United States

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