Demonstrating Technical Effect in Software Cases

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Demonstrating Technical Effect in Software Cases

• By
• Keith Beresford

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Todays Discussion

• Why technical effect?
• Software inventions cases in general
• Software implemented business methods
• The Draft EC Directive

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Purpose

• All I want to know is what was in Gods mind
  when he created the world. The rest is detail.
  (Einstein)

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Purpose of Patent System

• To encourage new technologies
• To encourage improvements in technology
• To encourage dissemination of knowledge

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Achieving the Purpose

• A bargain between inventor and public
• For the inventor
• A monopoly for limited time
• Covering all ways of implementing the invention
• For the public
• Invention enters public domain

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Creating the Bargain

• Letters Patent Open Letter
• Statute of Monopolies 1623
• outlawed most monopolies
• permitted monopolies for new technology
• Present Law
• European Patent Convention
• Patents Act 1977

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The Essentials of a Modern Patent Law

• Defines what may be patented
• Sets out how to obtain a patent
• Requires a (published) specification
• describing invention and implementation
• defining the apparatus or process monopolised
  (the claims)
• Defines the rights of the patent owner

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The Nature of the Monopoly

• The right to prevent others from defined
  activities
• Making, selling or using the product or machine
• Importing the product or machine
• Performing the process
• Supplying items for use in infringement

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Patentable Inventions Are Technical

• This applies to all fields
• It equally applies to software
• A software patent specification must therefore
  explain the technical character of the invention
• Technical problem and solution analysis

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The Patentable Daisy

• Diesel engines are patentable
• Novelty a daisy embossed on the engine casing
• Aesthetic effect only
• unpatentable
• Technical effect (e.g. improved cooling)
• patentable
• Technical effect must be disclosed

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Summary

• Specification describes invention and
  implementation
• Claims define the apparatus or process
  monopolised
• in Europe a combination of technical features
• The law defines activities prohibited
• Technology described enters public domain when
  monopoly ends

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Computers and Software

• Three Entities
• Hardware
• Data
• Software
• control signals determining processes performed
  on data

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The Essential Components of a Computer

• Central processing unit (CPU)
• processes electrical signals representing data
• Mass storage (e.g. hard disk)
• stores data and software (programs)
• Random access memory (RAM)
• stores data signals for processing by CPU
• stores control signals (program) for controlling
  CPU
• Input and output units

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Technical Features in GeneralStructures and
Functions

• In the mechanical or electrical fields
• the components of the apparatus
• the functional interaction between them
• In the computer field
• the components of the apparatus
• the components of the program
• the functional interaction between them
• processes within the computer

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Technical Structures in Software Cases

• The hardware? The network?
• Functional program modules and their location on
  the network
• Tables, pre-stored data, their structure and
  location on network
• Structure of user interface
• Data structures received, stored, processed and
  output

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Technical Functions in Software Cases

• The receipt of data
• Processes within the computer
• the generation and flow of commands (control
  signals)
• the flow and transformation of data
• the functional modules called into play and their
  responses to events
• The output of data

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Non-technical Features

• Human beings
• Human activities
• mental activity
• manual activity (as distinct from technical
  processes taking place as a result of manual
  activity)
• Human institutions e.g.
• a bank
• pension fund

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Contents of the Software Patent

• The hardware
• The pre-stored data, tables etc.
• The functional modules of the program
• The data input for processing
• The steps performed by the functional modules
• The processed data output
• The benefits achieved

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Claims in a Software Patent

• An apparatus or system claim
• computer containing the novel software
• A process claim
• the process which the program performs
• A program claim
• storage medium or signal carrying program

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Examples Of Patented Software

• Image Processing - improved image
• Computer Graphics - easier image manipulation
• Natural Language Processing - generating internal
  data structures or commands in response to
  natural language input
• Business Management System - improved screen
  interface

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More examples

• Speech recognition software
• Trading network
• file distribution to minimise network traffic
• Expert systems for process control
• Neural networks
• Word processors
• Data base management

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A Few General Examples of Technical Effect

• Higher speed
• More economical use of memory
• More efficient database search strategy
• More effective data compression algorithm
• Improved user interface

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An Example of a Good Disclosure

• EP 068,093 B (IBM)
• Word Processor Network

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Another Good ExampleBusiness Management System -
Improved User Interface Giving User Convenience
When Entering Data into Different Kinds of File

• EP 209,907B (Sohei)
• Decision T 92/0769

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The Sohei Claim (abbreviated)

• A computer system for plural types of independent
  management comprising a digital processing
  unit and memory unit
• the memory unit includes five different kinds of
  file
• means for performing five different specified
  functions on the files
• means for causing display of user interface

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Sohei Reasoning

• The technical contribution
• to provide, in the memory, the aforementioned
  five files and to cause the processing unit to
  perform the aforementioned five functions would
  clearly require technical considerations
• The description necessary
• Structure of the program
• Functions within the computer

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A Non-technical ExamplePension Scheme per se

• EP 332,770 (Halley)
• Decision T 95/0931
• (Application Refused)

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The Pension Scheme Specification

• No disclosure of computer system or structure and
  functionality of software for managing the scheme
• One reference to computer for making certain
  calculations.
• No technical features disclosed, no basis for
  claims reciting technical features
• No technical effect disclosed

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The Draft EC Directive

• Probably no significant change in what can be
  patented
• Will only permit claims to the programmed
  computer or the process
• No claims to program on a carrier (e.g. disc)
• Proposal not properly thought out
• practical effects irrational

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Dealings with the Programmed Computer under
Draft Directive

• Infringement in
• manufacture and sale of computer containing
  program
• import and export of computer containing program
• performance of the program (use of the program)

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Dealings with the Program on a Carrier under
Draft Directive

• Indirect infringement by selling disc for use
  in the country in which there is a patent
• Export of disc not direct or indirect
  infringement
• no royalty collectable on exported discs
• royalty collectable on discs for use in country
  with patent
• Irrational situation

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THATS IT