Das Europische Patentamt

1
Das Europäische Patentamt
European Patent Office
The European Patent Office
Service For Industry and Public
2
Die Dienststelle Wien
European Patent Office
Patenting of Computer Implemented Inventions
examples
Turin 2006
Sabine Kruspig Director Directorate 221, Joint
Cluster Computer October 2, 2006
3
Overview
EPO Search and Examination Practice

• EPO Search and Examination Practice

• Example Applications

Example Applications

• Case Law Examples

Case Law Examples

• Categories of Claims

Categories of Claims
4
European patent convention
Article 52 (2) and (3)
EPO Search and Examination Practice
The following, in particular, shall not be
regarded as inventions

• discoveries, scientific theories, mathematical
  methods
• aesthetic creations
• schemes, rules and methods for performing mental
  acts, playing games or doing business
• programs for computers
• presentations of information

Example Applications
Case Law Examples
Categories of Claims
Only to the extent to which a European patent
application relates to such subject matter or
activities as such.
5
Search and examination practice
EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
6
Search considerations

• If one of the following cases applies, then the
  subject-matter does not have to be searched
  according to Rule 45 EPC
• Does the claimed subject-matter fall under the
  list of exclusions (Art. 52(2) and (3) EPC) ?
• Do the claims merely specify commonplace features
  relating to the technological implementation of
  business methods?
• A meaningful search was not possible
• (Art. 17(2)(a) PCT Rule 45 EPC)

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
7
No - search
EPO Search and Examination Practice

• Claims which relate to business methods or to
  commonplace technical features relating to the
  technological implementation of business methods
  will not be searched if the examiner cannot
  establish a technical problem which might
  potentially have required an inventive step for
  it to be overcome.
• (Official Journal 5/2002)

Example Applications
Case Law Examples
Categories of Claims
8
Examination procedure

• Two stage approach
• 1. Technical character of claimed invention
• Does the invention have technical
  character?
• If not there is no invention in the sense
  of Article 52(2) and (3) EPC gt The invention is
  a priori excluded
• 2. Novelty, inventive step, etc. of claimed
  invention
• Novelty are all claimed features known in
  combination?
• Inventive Step Technical problem?
  Technical contribution?
• Apply Problem and Solution approach

9
Examination procedure
Yes
No
1. Is there any technical character?
As soon as there is at least one technical
feature, the whole claim has technical character.
10
Examination procedure
No
Yes
2. Novelty?
Prior Art
Claim
Technical
Non-technical
All features of the claim must be known from a
single prior art document
11
Examination procedure
3. Inventive step?
Prior art
Technical
Non-technical
In order to have inventive step an non-obvious
technical contribution over the prior art is
necessary
12
Examination procedure
No
3. Inventive step?
Non-technical
Technical
Prior art
If there exists no technical contribution over
the prior art gt there is no inventive step
13
Example 1 US6007340

• A method for evaluating leadership
  effectiveness, comprising the steps of
• gathering target information quantifying at least
  one domain selected from the group consisting of
  having personal convictions, being visionary,
  building emotional bonds, being inspirational,
  being team oriented, being a risk taker and
  having a drive to excel
• comparing the target information with a standard,
  the standard including standard values of the
  domain and
• identifying non-standard responses of the target

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
NO TECHNICAL FEATURES AT ALL! NO SEARCH!
14
Example 2 WO01/40978

• A method for selling and booking cruise packages
  utilising a web browser program to electronically
  unicate with a cruise service web browser via a
  data communications network, the method
  comprising
• utilizing the web browser program to log onto the
  cruise service web server over the data
  communications network
• submitting to the cruise service web server
  costumer profile information relating to the
  customer
• submitting to the cruise service web server
  customer sailing preference information relating
  to the customer ...

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
SOME (COMMONPLACE) TECHNICAL FEATURES SEARCH?
NOVELTY? INVENTIVE STEP?
15
Example 3 WO97/26611

• A document delivery system, comprising
• a broadcast center that sends a document as a
  plurality of encrypted packets
• a communication link connected to the broadcast
  center for carrying the packets
• a receiving computer, connected to the
  communication link, and including a memory and a
  broadcast receiver, wherein the broadcast
  receiver decrypts each packet as it is received
  and stores only the decrypted packets in the
  memory.

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
ONLY TECHNICAL FEATURES! NOVELTY? INVENTIVE STEP?
16
Example 4 EP0887730

• A method for protecting the execution state of a
  resource for a multi-processor computing system
  wherein multiple processors contend for the
  resource, said computing system including an
  operating system, the method using a first
  spinlock and a second spinlock and comprising the
  steps
• at a first time, and prior to calling the
  resource, having the operating system acquire the
  second spinlock and then wait to call the
  resource until the first spinlock is unowned and
  
• at a second time, and prior to calling the
  resource, having the operating system acquire the
  first spinlock and wait to call the resource
  until the second spinlock is unowned, or if the
  second spinlock is owned, a processor owning the
  second spinlock is placed in a predetermined
  condition.

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
SYSTEM SOFTWARE APPLICATION, TECHNICAL FEATURES,
SEARCH
17
Example 5 WO99/30458

• A method for producing an elliptic curve point
  multiplication product,
• Q e P, using an arbitrary integer e, a point P
  on an elliptic curve
• group G defined over a field F, where G lies in F
  x F, comprising the
• steps of
• constructing a set G'
• constructing a mapping T from G into the set G',
  constructing a mapping T-1 from G' onto G, and
  constructing an operation () defined on G', such
  that (a) given P in G, T-1(T(P)) P, and (b) P
  P T-1(P' () P'), where P' T(P) 
• producing an elliptic curve point multiplication
  product Q by transforming the point P to the
  point P' using the mapping T, performing the
  operation () on the point P' to determine the
  point Q' e P', transforming the point Q' to the
  product Q using the mapping T-1 and 
• using the product Q in a cryptographic
  operation. 

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
NO TECHNICAL FEATURES! NO SEARCH!
18
Two identities/COMVIK T 641/00 Board
3.5.1 26/09/02
19
Two identities/COMVIK T 641/00 Board
3.5.1 26/09/02
Main request Method in a digital mobile
telephone system of the GSM type, in which
subscriber units (MS) are controlled by a
subscriber identity module (SIM), characterised
in that the subscriber identity module (SIM) is
allocated at least two identities (IMSI 1, IMSI
2), information thereon being stored in a home
database of the system, said at least two
identities being selectively usable, wherein
only one identity (IMSI 1 or IMSI 2) can be
activated at a time, the user when using a
subscriber unit (MS) selectively activating the
desired identity in said home database from the
subscriber unit, wherein the selective
activation is used for distributing the costs for
service and private calls or among different
users.
20
Two identities/COMVIK T 641/00 Board
3.5.1 26/09/02

• Differences over prior art
• the subscriber identity module is allocated at
  least two identities,
• said at least two identities being selectively
  usable,
• and the selective activation being used for
  distributing the costs for service and private
  calls or among different users.

21
Two identities/COMVIK T 641/00 Board
3.5.1 26/09/02
A closer look at the differences...

• distributing costs is not disclosed as a
  technical function of the system, the user
  decides and selects the desired identity

• the claimed kind of cost attributing scheme is
  rather a financial and administrative concept
  which as such does not require the exercise of
  any technical skills and competence

• technical aspects first come into play with the
  implementation of such a scheme on the GSM system

22
Two identities/COMVIK T 641/00 Board
3.5.1 26/09/02
Objective problem?

• On the basis of the classical problem solution
  approach
• to eliminate inconveniences caused by
  distributing costs for service and private calls
  or among different users

• Reformulated
• to implement the GSM system in such a way as to
  allow user-selectable discrimination between
  calls for different purposes or by different
  users.

23
Two identities/COMVIK T 641/00 Board
3.5.1 26/09/02
Headnote 1 An invention consisting of a mixture
of technical and nontechnical 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.
24
Two identities/COMVIK T 641/00 Board
3.5.1 26/09/02
Headnote 2 Although the technical problem to be
solved should not be formulated to contain
pointers to the solution or partially anticipate
it, merely because some feature appears in the
claim does not automatically exclude it from
appearing in the formulation of the problem. In
particular where the claim refers to an aim to be
achieved in a non-technical field, this aim may
legitimately appear in the formulation of the
problem as part of the framework of the technical
problem that is to be solved, in particular as a
constraint that has to be met.
25
Order management/RICOH T 172/03 Board
3.5.1 27/11/03
26
Order management/RICOH T 172/03 Board
3.5.1 27/11/03
1. An order management system for automatically
placing an order with one of a plurality of
suppliers, said order placement being performed
in a system environment having a plurality of
sections, said order system comprising a
plurality of terminal units (A-N) provided to the
respective orderers, said terminal units being
located in a respective section and including
means for inputting an order information to be
transmitted to a communication network (6)
connected to each of said terminal units, said
order information including a section code of the
orderer, and a central management unit (7)
connected to said communication network (6) for
receiving the order information continued
EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
27
Order management/RICOH T 172/03 Board
3.5.1 27/11/03
said central management unit (7) including a)
collection processing means (76) for -
managing, with respect to each orderer, order
history information and section information
and - calculating a momentary sum on the basis
of a total cost of the previous orders of a
section based on the order history information of
one of the orderers sending the order information
including the section code of this orderer and of
order information sent from said one of said
orderers and b) order permission means for
permitting execution of an ordering process when
the momentary sum is within a budget of the
section of the orderer continued
EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
28
Order management/RICOH T 172/03 Board
3.5.1 27/11/03
wherein said order management system is
configured for storing a section master file (82)
comprising said order history information and
said section information for each section
including a section code (82a) and a budget (82d)
of each section, and said collection processing
means (76) is configured for automatically
placing said order when said order information
is input by said one of a plurality of orders if
the ordering process is permitted by said
permission means.
EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
29
Order management/RICOH T 172/03 Board
3.5.1 27/11/03

• Meaning of state of the art, person skilled
  in the art

EPO Search and Examination Practice

• State of the art should be understood as state
  of technology which does not include the state
  of the art in commerce and business methods
• Any prior art which is not related to any
  technological field or field from which a skilled
  person would expect to derive any technically
  relevant information does not belong to the state
  of the art to be considered in the context of
  Articles 54 and 56 EPC
• Skilled person within the meaning of Article 56
  EPC is a technical expert, professional or
  practicioner

Example Applications
Case Law Examples
Categories of Claims
30
Order management/RICOH T 172/03 Board
3.5.1 27/11/03

• Inventive step assessment (1)

EPO Search and Examination Practice

• Person skilled in the art defined as a software
  project team which has knowledge of the
  business-related features of the order management
  method in the kind of a requirements
  specification
• Closest prior art is a distributed information
  processing system comprising general purpose
  computers at different locations and connected by
  a communication network
• Such a distributed system forms part of common
  general knowledge and does not require further
  evidence (no explicit document cited)

Example Applications
Case Law Examples
Categories of Claims
31
Order management/RICOH T 172/03 Board
3.5.1 27/11/03
An order management system for automatically
placing an order with one of a plurality of
suppliers, said order placement being performed
in a system environment having a plurality of
sections, said order system comprising a
plurality of terminal units (A-N) provided to the
respective orderers, said terminal units being
located in a respective section and including
means for inputting an order information to be
transmitted to a communication network (6)
connected to each of said terminal units, said
order information including a section code of the
orderer, and a central management unit (7)
connected to said communication network (6) for
receiving the order information said central
management unit (7) including a) collection
processing means (76) for - managing, with
respect to each orderer, order history
information and section information and -
calculating a momentary sum on the basis of a
total cost of the previous orders of a section
based on the order history information of one of
the orderers sending the order information
including the section code of this orderer and of
order information sent from said one of said
orderers and b) order permission means for
permitting execution of an ordering process when
the momentary sum is within a budget of the
section of the orderer wherein said order
management system is configured for storing a
section master file (82) comprising said order
history information and said section information
for each section including a section code (82a)
and a budget (82d) of each section, and said
collection processing means (76) is configured
for automatically placing said order when said
order information is input by said one of a
plurality of orders if the ordering process is
permitted by said permission means.
EPO Search and Examination Practice

Example Applications
Case Law Examples
Categories of Claims
32
Order management/RICOH T 172/03 Board
3.5.1 27/11/03
An order management system for automatically
placing an order with one of a plurality of
suppliers, said order placement being performed
in a system environment having a plurality of
sections, said order system comprising a
plurality of terminal units (A-N) provided to the
respective orderers, said terminal units being
located in a respective section and including
means for inputting an order information to be
transmitted to a communication network (6)
connected to each of said terminal units, said
order information including a section code of the
orderer, and a central management unit (7)
connected to said communication network (6) for
receiving the order information said central
management unit (7) including a) collection
processing means (76) for - managing, with
respect to each orderer, order history
information and section information and -
calculating a momentary sum on the basis of a
total cost of the previous orders of a section
based on the order history information of one of
the orderers sending the order information
including the section code of this orderer and of
order information sent from said one of said
orderers and b) order permission means for
permitting execution of an ordering process when
the momentary sum is within a budget of the
section of the orderer wherein said order
management system is configured for storing a
section master file (82) comprising said order
history information and said section information
for each section including a section code (82a)
and a budget (82d) of each section, and said
collection processing means (76) is configured
for automatically placing said order when said
order information is input by said one of a
plurality of orders if the ordering process is
permitted by said permission means.
EPO Search and Examination Practice

Example Applications
Case Law Examples
Categories of Claims
33
Order management/RICOH T 172/03 Board
3.5.1 27/11/03

• Inventive step asessment (2)

EPO Search and Examination Practice

• Providing an implementation of a
  business-related method on a computer system is a
  technical problem
• Legitimate to include the non-technical aspects
  and features into the formulation of the
  technical problem
• Technical features of the implementation
  (functions of the distributed system) follow
  directly from the requirements specification
• Mere automation of constraints imposed by the
  business-related aspects using conventional
  hardware and programming methods must be
  considered as obvious

Example Applications
Case Law Examples
Categories of Claims
34
Auction method/HITACHI T 0258/03 Board
3.5.1 21/04/04
EPO Search and Examination Practice
PRICE
Example Applications
MAXIMUM PRICE
Case Law Examples
Categories of Claims
DESIRED PRICE
WINNING BID
BIDDERS
35
Auction method/HITACHI T 0258/03 Board
3.5.1 21/04/04
EPO Search and Examination Practice
PRICE
WINNING BID
Example Applications
MAXIMUM PRICE
Case Law Examples
Categories of Claims
DESIRED PRICE
COMPETITIVE STATE
BIDDERS
36
Auction method/HITACHI T 0258/03 Board
3.5.1 21/04/04

• 1. An automatic auction method executed in a
  server computer comprising the steps of
• transmitting information on a product to be
  auctioned to a plurality of client computers via
  a network, each client computer belonging to a
  bidder
• receiving a plurality of auction ordering
  information pieces, each including a desired
  price and a maximum price in competitive state,
  for purchase of said product, from the plurality
  of client computers via the network
• c) storing the received auction ordering
  information pieces in the server computer for
  respective bidders
• d) setting an auction price
• e) determining whether there is any bidder who
  proposes a desired price equal to or higher than
  the auction price using the auction ordering
  information pieces stored in the server computer
• if there is no bidder in the step e), lowering
  the auction price, and repeating the step e)
  (continued)

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
37
Auction method/HITACHI T 0258/03 Board
3.5.1 21/04/04

• if there is more than one bidder at step e),
  judging whether there is more than one bidder for
  whom the auction price is less than or equal to
  the desired price such that a competitive state
  occurs using the auction ordering information
  pieces stored in the server computer
• h) if the competitive state occurs, increasing
  the auction price by a predetermined value
• i) excluding the bidder who proposes acceptable
  a price lower than the increased auction price
  and specifying the other bidder or bidders using
  the auction ordering information
• j) judging whether the competitive state occurs
  among the bidder or bidders specified in the step
  i)
• k) repeating the steps h), i) and j) and
  determining the remaining bidder as a successful
  bidder when there is no competitive state at step
  j and
• l) if no competitive state occurs in the step g),
  determining the remaining bidder as a successful
  bidder.

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
38
Auction method/HITACHI T 0258/03 Board
3.5.1 21/04/04
EPO Search and Examination Practice
3. Computerized auction apparatus.. 4. Computer
program for carrying out an auction..
Example Applications
Case Law Examples
Categories of Claims
39
Auction method/HITACHI T 0258/03 Board
3.5.1 21/04/04
EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
40
Auction method/HITACHI T 0258/03 Board
3.5.1 21/04/04
I Exclusion from patentability (Art. 52(2),(3)
EPC)
EPO Search and Examination Practice

• Method claim 1
• Reasoning for claim 3 is independent of claim
  category gt method also NOT excluded
• Rejects finding in T931/95 (Pension Benefit) that
  the use of technical means for a purely
  non-technical purpose does not necessarily confer
  technical character, because such a reasoning
  would have to rely on some weighting of the
  importance of features
• Such a determination of the core of the
  invention is inappropriate
• Wording of 52(2)(c) is also no bar to equal
  treatment of methods and apparatuses
• Therefore A method involving technical means is
  an invention within the meaning of Article 52(1)
  EPC

Example Applications
Case Law Examples
Categories of Claims
41
Auction method/HITACHI T 0258/03 Board
3.5.1 21/04/04
II Inventive step (Art. 56 EPC)
EPO Search and Examination Practice

• Uses COMVIK approach (T641/00) in that only those
  features are taken into account which contribute
  to a technical character
• Starts from prior art D6/D2 (Remote Dutch
  auctions on a computer network)
• Features a) to c) accepted as technical, but well
  known from D6
• Features d) to l) no technical character, except
  possibly for feature h)
• Applicant argued that the adaptation of the known
  auction method overcomes propagation delay
  problems, thereby solving a technical problem
• Not accepted by the Board The solution only
  concerns the auction rules which is not a
  technical solution to the described delay problem
• Even if a modified business scheme has some
  noticeable technical implications, it cannot
  contribute to the technical character of the
  claimed subject-matter and has to be disregarded
  for inventive step

Example Applications
Case Law Examples
Categories of Claims
42
Auction method/HITACHI T 0258/03 Board
3.5.1 21/04/04
What can be concluded from this?
EPO Search and Examination Practice

• ON THE EXCLUSION FROM PATENTABILITY
• Equal treatment of method and apparatus claims
  re-established
• Features having technical character are
  sufficient for non-exclusion from patentability
• Rather broad interpretation of the term
  invention in Article 52(1) EPC (act of writing
  with a pen on paper qualifies as invention)
• Examples for non-inventions purely abstract
  concepts devoid of any technical implications
• Entry hurdle of invention-requirement has again
  been lowered

Example Applications
Case Law Examples
Categories of Claims
43
Auction method/HITACHI T 0258/03 Board
3.5.1 21/04/04
What can be concluded from this?
EPO Search and Examination Practice

• ON INVENTIVE STEP
• Fully in line with COMVIK only features which
  contribute to a technical character are to be
  considered when assessing inventive step
• Even if modified business steps have implications
  on the functioning of a system, they cannot be
  taken into account for assessing inventive step
  because they do not constitute a technical
  solution
• Prior art (D6, D2) has been used by the Board for
  the inventive step argumentation, but no
  criticism of the first instance reasoning which
  did not use any document
• In the future inventive step assessment will be
  even more important

Example Applications
Case Law Examples
Categories of Claims
44
Visual assessment system/COMPARATIVE VISUAL
ASSESSMENTS T 0125/04 Board 3.5.1 10/05/05
45
Visual assessment system/COMPARATIVE VISUAL
ASSESSMENTS T 0125/04 Board 3.5.1 10/05/05

• Claim 1
• A comparative visual assessment system
  comprising
• an input device,
• an output device,
• a computer system, the computer system connected
  to the input device and the output device, the
  computer system having a user interface connected
  to a comparative visual assessment engine, the
  comparative visual assessment engine comprising
• means for assigning a plurality of weights to a
  corresponding plurality of components
  representing a subject,
• means for assigning a plurality of scores to the
  corresponding plurality of components
  representing the subject,
• means for determining a functional score for each
  of the plurality of components,
• means for determining an angle to be used for an
  output to the output device of a vector for each
  of the plurality of components,
• means for assigning the functional score to a
  horizontal length of the vector for each of the
  plurality of components, and
• means for displaying the vector on the output
  device.

46
Visual assessment system/COMPARATIVE VISUAL
ASSESSMENTS T 0125/04 Board 3.5.1 10/05/05
Claim 10 A method of displaying a plurality of
vector strings on an output device comprising the
steps of ...
47
Visual assessment system/COMPARATIVE VISUAL
ASSESSMENTS T 0125/04 Board 3.5.1 10/05/05
I Exclusion from patentability (Art. 52(2),(3)
EPC)

• System claim 1 and method claim 10
• The Examining division considered that using a
  computer for processing data and presenting
  results to a user in a graphical form, i.e. as a
  vector diagram chart, in order to aid the user to
  make a comparative visual assessment, is
  presentation of information as such.
• Such a program processes data which is neither
  related to the operating parameters of a device
  (non-technical data), nor affect the
  physical/technical functioning of the device
  (just supply visual information) and do not solve
  a technical problem (merely presents the data in
  a vector diagram chart).
• The Board agreed with the facts but not with the
  conclusion. Based on decisions T931/95 (IBM) and
  T258/03 (HITACHI) both claims are considered to
  be inventions within the meaning of Article 52(1)
  EPC.

48
Visual assessment system/COMPARATIVE VISUAL
ASSESSMENTS T 0125/04 Board 3.5.1 10/05/05
II Inventive step (Art. 56 EPC)

• System claim 1
• Starts from already known computer systems
  capable of assisting customers by processing and
  displaying information about products.
• Features d) to f) are acknowledged as known in
  the description. Furthermore, these steps relate
  to activities falling under the concept of
  information modelling as such (T49/99) and
  therefore will not be considered for inventive
  step.
• Features g) and h) determine the way the
  information is presented and are new. Feature i)
  is trivial.
• Effect of features g) and h) inform a customer
  about the properties of a product. Intellectual
  effect on a human being, not a technical effect.
  The specific manner of representation (vector
  diagram) was conceived exclusively with regard to
  a human being's mental capabilities and does not
  relate to any technical format or structure of
  the information processed, nor is linked to the
  internal functioning of the system (4.5-4.6).
• Based on T641/00 (COMVIK), these features cannot
  support the presence of inventive step as they
  lack any technical contribution.

49
Visual assessment system/COMPARATIVE VISUAL
ASSESSMENTS T 0125/04 Board 3.5.1 10/05/05
Catchword In general, the task of designing
diagrams is non-technical. This is so, even if
the diagrams arguably convey information in a way
which a viewer may intuitively regard as
particular appealing, lucid or logical.
50
Text processor/WALKER T 0049/04
Board 3.4.03 18/10/05

• 1. A method for enhancing text presentation from
  a machine readable natural language text based on
  reader specific parameters including at least the
  viewing field dimensions comprising
• parsing said text into punctuation and parts of
  speech for extracting text specific attributes,
• storing said text specific attributes in relation
  to the parts of speech to produce an enriched
  text,
• applying primary folding rules followed by
  secondary folding rules to said enriched text,
  applied in order of a folding rule rank thereby
  dividing said text into text segments said
  folding rules having at least said punctuation
  attributes and parts of speech attributes as
  inputs and visual attributes as outputs,
• applying secondary folding rules until a limit is
  reached, this limit preferably being the minimum
  line length, and,
• wherein the visual attributes include the
  displaying of the text segments in new lines,
  (continued)

51
Text processor/WALKER T 0049/04
Board 3.4.03 18/10/05

• applying text segment horizontal displacement
  rules to said text segments to determine a
  horizontal displacement for each text segment,
  said horizontal displacement rules including
  parts of speech as inputs and visual attributes
  of horizontal displacement as outputs to produce
  an enhanced text, and
• displaying said enhanced text by cascading the
  text segments in lines down and across a display.

52
Text processor/WALKER T 0049/04
Board 3.4.03 18/10/05
I Exclusion from patentability (Art. 52(2),(3)
EPC)

• The Examining division considered that there was
  no technical problem beyond that of the mere
  application of an algorithm for formatting text.
  However, the Examining division did not refuse
  the application based on Article 52(2) (3) EPC.
  
• Board the method steps are to be implemented on
  a computer although this is not explicit from the
  claims. According to T258/03 (HITACHI) this is an
  invention within the meaning of Article 52(1)
  EPC.

53
Text processor/WALKER T 0049/04
Board 3.4.03 18/10/05
II Inventive step (Art. 56 EPC)

• Technical problem provide a technical tool for
  enhancing natural language text presentation on a
  computer display.
• Solution display the text in shorter text
  segments on separate lines according to
  predefined rules (folding rules)
• Comments on decisions T643/00 (CANON) and T125/04
  (COMPARATIVE VISUAL ASSESSMENTS).
• View of the Board technical aspects cannot be
  ruled out in the design and use of a graphic
  interface. Furthermore, a feature which relates
  to the manner how the "cognitive content", such
  as images, is conveyed to the user can very well
  be considered as contributing to a technical
  problem.
• Means for analysing the text and dividing it into
  text segments relates to the physical arrangement
  of the overall image structure of the displayed
  text with a view to solving the technical
  problem. Therefore, the claimed features are
  technical.

54
Text processor/WALKER T 0049/04
Board 3.4.03 18/10/05
Catchword Following T643/00 rather than T125/04,
the presentation of natural language text on a
display in a manner which improves readability,
enabling the user to perform their task more
efficiently, relates to how, i.e. by what
physical arrangement of the text, cognitive
content is conveyed to the reader and can thus be
considered as contributing to a technical
solution to a technical problem reasons 4.5 to
4.7
55
Clipboard formats/MICROSOFT T 0424/03 Board
3.5.1 23/02/06

• 1. A method in a computer system having a
  clipboard for performing data transfer of data in
  a clipboard format, said method comprising the
  steps of
• providing several clipboard formats including a
  text clipboard format, a file contents clipboard
  format and a file group descriptor clipboard
  format,
• selecting data that is not a file for a data
  transfer operation,
• using the file contents clipboard format to hold
  said data by
• converting said selected data into converted data
  of said file contents clipboard format and
  storing the converted data as a data object,
• using the file group descriptor clipboard format
  to hold a file descriptor holding descriptive
  information about the data that is to be
  encapsulated into a file during the data transfer
  operation,
• completing the data transfer by
• providing a handle to said data object,
• using said handle to paste said data of said data
  object to a data sink,
• using said descriptive information to enable the
  computer system to create a file at the data sink
  and encapsulating the data object into said file.

56
Clipboard formats/MICROSOFT T 0424/03 Board
3.5.1 23/02/06
Claim 5 Computer readable medium having
computer-executable instructions adapted to cause
the computer system to perform the method of
claim 1
57
Clipboard formats/MICROSOFT T 0424/03 Board
3.5.1 23/02/06
I Exclusion from patentability (Art. 52(2),(3)
EPC)

• Method claim 1
• Reasoning based on T258/03 (HITACHI) which states
  that a method using technical means is an
  invention within the meaning of Article 52(1)
  EPC. A computer system including a memory
  (clipboard) is a technical means (5.1).
• The board emphasized that a method implemented in
  a computer system represents a sequence of steps
  actually performed and achieving an effect, and
  not a sequence of computer-executable
  instructions (i.e. computer program) which just
  have the potential of achieving such an effect
  when loaded into, and run on, a computer.
• Therefore the claim category of a
  computer-implemented method is distinguished from
  that of a computer program.
• The claimed method steps solve a technical
  problem by technical means in that functional
  data structures (clipboard formats) are used
  independently of any cognitive content (T1194/97
  PHILIPS) and provide a computer with the further
  functionality of assisting the user in
  transferring non-file data into files (5.2).

58
Clipboard formats/MICROSOFT T 0424/03 Board
3.5.1 23/02/06
I Exclusion from patentability (Art. 52(2),(3)
EPC)

• Computer-readable medium claim 5
• The subject-matter of claim 5 has technical
  character since it relates to a computer-readable
  medium, i.e. a technical product involving a
  carrier (T258/03 HITACHI). The computer-executable
  instructions have the potential of achieving a
  further technical effect, i.e. enhancing the
  internal operation of the computer by
  facilitating the exchange of data among various
  application programs. This further technical
  effect goes beyond the elementary interaction of
  any software and hardware data processing
  (T1173/97 IBM) and thus the computer program
  recorded on the medium is not considered to be a
  computer program 'as such' (Art. 52(2)(3) EPC).

59
Clipboard formats/MICROSOFT T 0424/03 Board
3.5.1 23/02/06
II Inventive step (Art. 56 EPC)

• Windows 3.1 disclosing two clipboard formats
  (bitmap and text) was seen as closest prior art
  source. Windows 3.1 is known also to use (file)
  handles. Parts of features a), c), d), e) are new
  over Windows 3.1.
• D2 discloses scrap objects which can be created
  by using a clipboard mechanism, i.e. data items
  are selected and extracted from a document and
  through the clipboard they are transferred to the
  application where the user wishes to add the
  extracted information, and there, they are saved
  as a scrap object. Unlike the clipboard the scrap
  objects hold extracted information persistently.
  D2 does not disclose the two specific clipboard
  formats of method claim 1.
• The Board considered that the scrap objects of D2
  are solving the problem of avoiding data loss
  when the user e.g. overwrites data into the
  clipboard and that D2 is not suggesting expanding
  the number of clipboard formats as proposed in
  claim 1.
• In contrast to the Examining Division, the Board
  considered that D2 does not implicitly disclose a
  "file contents clipboard format" although the
  definition for this clipboard format is given in
  the application to be "a format for holding data
  that is to be encapsulated into a file".

60
Clipboard formats/MICROSOFT T 0424/03 Board
3.5.1 23/02/06

• Catchword
• The claim category of a computer-implemented
  method is distinguished from that of a computer
  program. Even though a method, in particular a
  method of operating a computer, may be put into
  practice with the help of a computer program, a
  claim relating to such a method does not claim a
  computer program in the category of a computer
  program
• A computer-readable medium is a technical product
  and, thus, has a technical character

61
T0928/03 - Video Game

• Applicant Konami Co.
• publication number 0844580
• Keywords
• "Visualisation of a possibly concealed graphic
  indicator in an
• interactive video game - exclusively addressing a
  mental
• process (no)"
• "Shape of graphic indicator - merely aesthetic
  creation (yes)"
• "Specific implementation of game rule
  requirements - technical
• contribution (yes)"
• "Inventive step (yes)"
• Examining Division refused for lack of inventive
  step
• Remittal to first instance for grant

62
T0928/03 - Video Game
EP0844580

Even when the player character P2 has come out of
the area of display so that the guide G3 has
become invisible, a portion of the guide G3 is
displayed on the end of the display area so as to
properly indicate the direction in which the ball
is to be passed by the player character P1.
63
Categories of Claims

• Method of operating a data-processing system
• Apparatus
• Program (T1173/97) carrier, signal
• Data-structure (T1194/97)
• Data ?
• Further claims ?

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
64
Categories of Claims

• A method of operating a data-processing system
  comprising steps A, B, ... .
• A data processing apparatus/system comprising
  means for carrying out the method of claim1
• A data processing apparatus/system
  comprising means for1 carrying out step A, means
  for carrying out step B, ...
• A computer program product adapted to perform
  the method of claim 1.
• A computer program comprising software
  code adapted to perform steps A, B, ... when
  executed on a data-processing apparatus/system.
• A computer readable storage medium/data carrier
  comprising the program of claim 1.
• A computer readable storage medium/data
  carrier comprising instructions to cause a
  data-processing apparatus/system to carry out
  steps A, B, ... when loaded into said
  data-processing apparatus/system.
• Data structures, and signals.

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
65
Method
EPO Search and Examination Practice

• A method of operating a data-processing system
  comprising the steps ofstep Astep B ...
• Steps may be defined functionally, but should be
  realisable without inventiveness (no claiming by
  result)
• Steps should be defined in terms of what the
  system does, not what the user does e.g.
  instead of selecting a second object, in
  response to the selection of a second object.

Example Applications
Case Law Examples
Categories of Claims
66
Apparatus (1)

• Long formulation
• A data-processing system comprisingmeans
  adapted to carry out step Ameans adapted to
  carry out step B ...
• Means for may be used (interpreted as means
  adapted to T410/96)
• Such a claim, even if directed to a computer or
  a data processing system, is in fact a hybrid
  claim to apparatus for carrying out certain
  specified method steps. (T410/96)
• Avoid putting method steps in apparatus claims
  (i.e. not means which carry out ...)

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
67
Apparatus (2)

• Short formulation defined by reference to
  another category (is nonetheless
  independent)A data-processing system
  comprising means adapted to carry out each of the
  steps of claim 1
• an independent claim which partially draws its
  features from preceding claims of a different
  category (T410/96)

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
68
Program
EPO Search and Examination Practice

• A computer program comprising code adapted to
  perform the following steps when executed on a
  data-processing systemstep Astep B ...
• Only allowable if the equivalent method claim
  would be allowable (T1173/97)
• Carrier and signal claims allowable
  preferably dependent

Example Applications
Case Law Examples
Categories of Claims
69
Data Structure

• Data structure defined in terms which inherently
  comprise the technical features of the system in
  which the structure is operative (T1194/97)
• Example (if it were new !) A linked list data
  structure comprising an address of a node,
  whereby a node consists of a data field and a
  further address which may be null or the address
  of a further node.
• Claims which define a data structure only in
  terms of the subjective informational content are
  NOT allowable (A database comprising target
  customer age, weight, sex and favourite football
  club.)

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
70
Data?

• No case law currently not accepted.
• Generally claimed in form Data (image, text
  database, ...) produced by the method of claim
  1. Note that product by process guidelines
  (C-III 4.7b) anyway apply and that such data
  claims often lack novelty.

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
71
Further Claims?

• An architecture for a software system ...
• A framework for a software system ...
• A markup language ...
• A web page
• An information model comprising entities and
  relationships ...
• Generally these claims are considered as relating
  to abstract subject matter which is considered a
  non-invention (Article 52(2) EPC)
• No case law (but see T49/99)

EPO Search and Examination Practice
Example Applications
Case Law Examples
Categories of Claims
72
European Patent Office
http//www.european-patent-office.org/ Patlib -
293 patent information centres in all member
states of the EPO http//patlib.european-patent-of
fice.org/ Computer-implemented
inventions http//cii.european-patent-office.org/
Sabine Kruspig skruspig_at_epo.org