Patenting ICT innovations in Europe

1/5602/03/2018 © 2018 - Andrea Perronace
Patenting ICT innovations in Europe
Brief Guide for Start-ups
Andrea Perronace, PhD
Partner
European Patent Attorney
Jacobacci & Partners

Disclaimer
The views and opinions expressed in this
presentation are those of the author and do not
necessarily reflect the official position of the
European Patent Office (EPO) or European Patent
Institute (epi).

Agenda

Basics on software eligibility at EPO

(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.
Inventions eligibility Art.52 EPC
(2) The following […] shall not be regarded as inventions
[…]:

When considered as a mere product of
programming, which is an intellectual activity,
it is considered (as such) ineligible.
As such
(all abstract activities)
Business methods,
playing games
Inventions eligibility Art.52 EPC

 This is why the European Patent Office doesn’t
officially recognize “software patents”, but it deals
with “computer-implemented inventions”:
inventions whose implementation implies the use
of a computer or other programmable logic in a
specific technology field.
Computer-implemented inventions


The invention must have a technical character, i.e. a
technical teaching, that is an instruction addressed to a
skilled person as to how to solve a particular technical
problem (rather than, for example, a purely financial,
commercial or mathematical problem) using particular
technical means.
The word “technical” is however not definable (G 3/08).
Basic eligibility criteria

However, non-technical teachings, non-technical
problems and non-technical means may enter into
the claims, if they define the framework of a
technical problem or interact with the technical
teachings/problems/means to bring technical
effects. (T 641/00 COMVIK, confirmed in G3/08).
Basic eligibility criteria – The Comvik decision

The invention program must bring a further technical effect
when running on or loaded into a computer, i.e. an effect
going beyond the "normal" physical interactions between
the program (software) and the computer (hardware) on
which it is run.
Basic eligibility criteria – The IBM computer product decision
 The normal technical effects like flow of electrical currents
are not sufficient to lend a technical character to the program
(T 1173/97 and G 3/08).

Non-eligible:
Implements only a
mathematical method and
encompasses execution as a
pure mental act - T914/02
Basic eligibility criteria

Not always clear whether a feature is
technical or non-technical:
– may depend on context
– to be decided in the course of examination
T641/00
Eligibility vs. Patentability

Input-Function-Output eligibility scheme

Which inputs are technical? Are
they taken from physical devices?
Are outputs technical or are
they suited to be used for a
technical purpose?
Which method steps and tools are
technical and does the method
solve a technical problem?
The I-F-O scheme

A technical effect may be achieved by the
functional nature of the data irrespective of its
cognitive content (T 1194/97, T 1161/04)
Processing physical data parameters (e.g. form sensors
or representing internal state of a computer) or
control values of an industrial process are technical.
Sensors, ports, memories etc. are technical means.
Unspecified data should be avoided unless there
is a clear restriction to a technical application or
purpose (T 1438/07, T 1796/11), e.g.
cryptographic communications (T1326/06).
The I-F-O scheme – Input
Hw, Sw,
Data
before a
Process

Particular application of a mathematical method
in a specific technical field is technical, as it does
not seek protection for the mathematical
method as such (e.g. method of encoding audio
information in a communication system may
aim to reduce distortion induced by channel
noise; processing which affects the way a
computer operates).
The I-F-O scheme – Function (I)
Hw, Sw,
Data,
Math in
a Process

Involvement of data processing (e.g. computer)
or data transmission means (e.g. antenna,
internet) or interaction with environment (e.g.
moving a robot arm, placing a probe) does
confer technicality (G3/08, T912/05; T258/03).
The I-F-O scheme – Function (II)
No abstract and subjective activity (e.g.
clustering diamonds in n-dimensional space:
non-technical, T619/05)
Hw, Sw,
Data,
Math in
a Process

No need to have a physical output, but output
data must serve a technical purpose (e.g. security
of a process, rate of data transfer, control of
robotic components)
Technical purpose may be achieved by the
functional nature of the data irrespective of its
cognitive content (T 1194/97, T 1161/04)  cf.
INPUT
The I-F-O scheme – Output (I)
Hw, Sw,
Data,
after a
Process

Output to a device or physical network is per se
technical (e.g. a display or over-the air transm.). But
no display of non-technical conditions of the system
or indication to the user, e.g. business (T528/07)
The I-F-O scheme – Output (II)
Position of a control button on the screen: non-
technical, user preference T478/06
Graphic design of menus and their layout: non-technical
aspects of a menu-driven control system T244/00
Hw, Sw,
Data,
after a
Process

Exemplary case law on software eligibility

 Use of devices
 Specific data
 Input parameters correlated
to acquisition means
 Image processing
 Not a mental act only
 Physical output quantities
 Further technical effect
(program)
Provided with technical character  eligible
(and eventually patentable as well)
A not famous but educational example
I
F
O

Examples from case law
Case I F O Eligible
T229/00
Endosonics
Ultrasound
image
Removal of blind
spots by specific
signal amplification
and processing
Ultrasound
image
without blind
spots
YES (inv.)
T1188/04
SHARP
Pointer device
manipulating
icons
Change processing
conditions for the
file ass. to first icon
Differently
processed
file
YES (inv.)
T598/07
Cardionetics
Sensor data,
n-dimensional
vectors
Neural network for
classification heart
cycles
Abnormal
heart cycles
diagnosis
YES (inv.)

Patentability Flow-Chart

Closest prior art
Difference
Technical effect
Technical problem
Inventive step
The problem-solution approach is basically the same as for
any other type of invention:
Problem-solution approach - general
I-F-O analysis
T641/00
G3/08

Problem-solution approach - Difference
Difference consists in
technical features only
YES NO
See next slideContinue usual problem-
solution approach

Analyze relation between non-technical
and technical features
Determine effect …
No effect
could be
determined
Determined
effect is not
technical
Mixture of
technical and non-
technical aspects
Determined
effect is
technical
No technical problem solved
Lack of inventive step
See next slide
Problem-solution approach – Effect and Problem (I)

Mixture of
technical and non-
technical aspects
Determined
effect is
technical
Problem-solution approach – Effect and Problem (II)
Determine effect …
See next slide
Non-technical aim may be
included in the problem
Determine
technical problem
...

Problem solved …
In an inventive way
(no strict design equivalence)
For reasons not
involving technical
considerations
Presence of
inventive step
In a non-
inventive way
Lack of
inventive step
Technical problem
circumvented
rather than solved
Problem-solution approach – Solution

Examples from case law
Case
Technical
effect
Non-
technical
aim
Circumvention
Inventive
step
T27/97
cryptography
encryption NO NO
NO, prior art
is equivalent
in the result
T1255/06
Measuring Temp.
Less
computation
NO NO
YES, different
algorithm
T 1884/13
Online poker
More server
occupation
More
revenues
YES, changing
the rules allows
more hands per
player
NO

Patentability of Search Engines

Search Engines - patentability
Situation of Applications, grants and case-law
1. How many applications have been filed up to now?
2. How many applications have been granted up to now?
3. How many BoA cases have been decided up to now?
4. How many BoA cases have been recognized as grantable?

Search on esp@cenet on 24.02.2018:
 Title: «search engine»
 Publication: «EP» / AND «B1»
Search in BoA online database on 24.02.2018:
 Free text: «search engine»
https://worldwide.espacenet.com/
https://www.epo.org/law-practice/case-law-appeals/advanced-search.html

1. 178 European Patent Applications (0,08%)
2. 21 European Patents granted (11%)
3. 20 Point 2’s cases decided by the BoA (11%)
4. 5 Point 3’s cases granted after appeal (25%)
Situation of Applications, grants and case-law

Decision of Examining Division:
- Lack of clarity
- Lack of novelty of claim 1 of a main request
- Added subject-matter, lack of clarity and no inventive step for
claim 1 of each of three auxiliary requests.
Closest prior art:
Weaver, A.C.: "The Internet and the World Wide Web", Industrial
Electronics, Control and Instrumentation 1997, IECON 97, 23rd
Case T 2416/12 decided on 10.7.2017 - WO9941694 A1

Case T 2416/12 of 10.7.2017 - WO9941694 A1
CLIENT BROWSER
PURCHASE
PRIOR ART
FLIGHT-PURCHASE
ASSOCIATION
SERVER
INTEREST

Case T 2416/12 of 10.7.2017 - WO9941694 A1
SE
INTEREST
PURCHASE
HIT
TRACKING
Search
HIT
SERVER

Case T 2416/12 of 10.7.2017 - WO9941694 A1
SE
INTEREST
PURCHASE
RELEVANT HITS
LIST
TRACKING
HITS
Search

Case T 2416/12 of 10.7.2017 - WO9941694 A1
- Non-technical features:
- Input:
- Interest (but in relationship with query);
- Bidding data (but in relationship with query and page)
- Function: Purchase (but in relationship with webpage)
- Output: List of online shops (but connected to webpages)

Case T 2416/12 of 10.7.2017 - WO9941694 A1
- Differences with respect to prior art:
 Browsing history, bookmarks, cookies and shop baskets
not mentioned in D1 nor mentioned in the application
 D1 on client, invention search engine on server
 D1 does not imply the use of tracking by the search
engine within the meaning of claim 1
 In D1, no final booking interaction, no complete tracking
 Invention stores association data between interest and
purchase page

Case T 2416/12 of 10.7.2017 - WO9941694 A1
- Effect:
- Benefit both for the search engines and for the
consumer doing product searches, because
- The ranking "is based on whether they found what
they wanted“
 Mixture of technical and non-technical aspects

Case T 2416/12 of 10.7.2017 - WO9941694 A1
- Technical problem:
- Providing a online shopping web search engine for
selecting one or more search hits from among a
plurality of hits based on a user interest and online
purchase data
 Underlying commercial effect may remain, T 641/00
COMVIK

Case T 2416/12 of 10.7.2017 - WO9941694 A1
- Solution:
- Tracking web surfing up to arrival page
- Storing association between arrival page and
query interest, if arrival page is a purchase page
- Selecting and sorting hits based (at least) on the
association
 Technical solution, no circumvention

Case T 2416/12 of 10.7.2017 - WO9941694 A1
 Inventive, because D1 does not hint at using
these tools and specific surfing data (purchase
page) and associations
 Remittal to Examining Division
 Intention to grant (R. 71(3))

Advanced Case Law – Presentations of
information

Need to be assessed:
 What (information) is presented to a user?
 How is the information presented to a user?
 Why is the information presented to a user?
 Effects relying on thought process of the users
 Effects relying on skills and preferences of the user
 Data input (as done by a user)
Presentation of information – What, How and Why
Advanced Case Law – Info presentations

Presentation of information – Examples on What-How-Why
Eligible:
 User interface convincingly assisting the user in performing
a technical task in a human-machine interaction process (T
336/14)
 Visualization of a current internal state prevailing in a
dynamic technical system which enables the user to
properly operate the technical system (T 115/85, T 362/90
and T 887/92)

Non-eligible:
 An information show (e.g. audio or visual) in medical
diagnosis in order to assess the patient’s medical condition
 Static info for memorizing or recalling information (T
1073/13), or cognitive warning about external states
 Diagrams for conveying only cognitive information (T
125/04)

Eligible:
 Arrangements of objects stemmed from technical
considerations overcoming physical limitations of the
computer screen, e.g. display of miniature, low-definition
images side by side for efficient search and retrieval of
images (T643/00)
 A feature determining the number of transition images for
a seamless visualization (T 509/07)

Non-eligible:
 Arrangement of objects on screen space merely following the
same layout principles as in layout design of a magazine cover
(T 1562/11)

Eligible:
 Data input mechanism, possibly relying on some format or
sequence of actions (T 125/04)
 Data input in response to presented information (GUI
enabling mechanisms)
.
Presentation of information – Examples on effects and data input

Non-eligible:
 It merely accommodates subjective user preferences (T482/02)
 The alleged effect cannot be realized for all the users due to
subjective interests, skills or preferences (T 1567/05)
 Data input merely facilitating mental decision-making proc. (T
1741/08).
Presentation of information – Examples on effects and data input

Software Patenting Strategy at EPO

Conclusions
A fairly well-defined and stable jurisprudence at EPO
Ongoing revision of the CII guidelines
A model followed in other jurisdictions (e.g. China)
Well-defined eligibility/patentability assessment flow
Some issues for the user-machine interaction technology
Need for thoughtful drafting and prosecution strategy

FARE IMPRESA CON I RISULTATI DELLA RICERCA
Il principale evento in Italia sul Technology Transfer

Andrea Perronace. European patent attorney. Andrea
received a master’s degree in Physics in Rome and a Ph.D. in
Physical Chemistry in Paris, and has worked for the European
Commission in Brussels. Experienced in patent and design
prosecution and litigation, he is epi ICT Thematic Group full
member involved in EPO Guidelines Group as well.
aperronace@jacobacci.com

Patenting ICT innovations in Europe

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