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EUROPEAN SOFTWARE PATENTS August 2019 updates

August came with four new decisions in the EUROPEAN SOFTWARE PATENTS knowledge base relating to data retrieval, graphical user interfaces, and automation:

Patentability of data retrieval concepts

In the area of data retrieval, one recent decision refused to grant a software patent on a method of conducting internet search from an instant messenging application. The Board of Appeal decided that the desire to enable users to perform explicitly defined web search queries is not a technical aim but rather a non-technical requirement. Searching for documents using keywords has a non-technical character, and this is not changed by the mere use of a computer system.

Patenting graphical user interfaces

Improvements in graphical user interfaces are sometimes difficult to protect with patents when they are closely related to the presentation of information (which is as such excluded from patentability).

In one case, the European Patent Office decided that a confirmation element which is provided independent of a concrete content of related information displayed to a user is non-technical. The argument was that providing a confirmation element independent of a concrete content of related information displayed to a user and independent of the subsequent cognitive processes or decisions of the user does not solve a technical problem and thus cannot contribute to inventive step.

Automation

By the way, if you are interested in a deeper look into how the European Patent Office examines software-related inventions, this 30-minute video gives a concise overview of the “two hurdle” approach with lots of examples.

In the field of automation, the European Patent Office considered a self-controlling documentation for validated processes non-technical. According to the Board of Appeal, the automation of a method known in the art cannot contribute to inventive step, wherein a method also has to be considered as automated when some steps still have to be carried out a human.

Likewise, another Board of Appeal decided that tracking SWAP derivatives transaction positions is non-technical, and emphasized that the pure automation in the sense of making financial information available quickly is not considered technical by the EPO.

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Self-controlling documentation for validated processes: non-technical

The European Patent Office considered a self-controlling documentation for validated processes non-technical. Here are the practical takeaways from the decision T 2315/16 (Validiertes Verfahren/IMC) of 5.7.2019 of Technical Board of Appeal 3.5.05:

Key takeaways

The automation of a method known in the art cannot contribute to inventive step. Importantly, a method also has to be considered as automated when some steps still have to be carried out a human.

The invention

The application underlying the present decision relates to monitoring of validated preparation processes. In more detail, In health care facilities, patients are allegedly repeatedly infected due to the use of contaminated medicine in their treatment. It is therefore necessary for such medicine to be reprocessed according to a validated reprocessing procedure before they are used with patients. However, especially when using complex processing agents, such as computer-controlled sterilizers or disinfection devices in combination with manual substeps, it is not possible for a user to carry out a complete review of all relevant process parameters, since the users of a documentation system for the validated reprocessing procedure are usually medical assistants, whose technical background is not sufficient for such an assessment. Hence, there is a need of a computer-implemented system for monitoring the reprocessing of medicine (cf. EP 2 685 396 A1, paras. [0002]-[0008]).

Fig. 1 of EP 2 685 396 A1

  • Translated claim 1 (main request)

Is it patentable?

During first instance prosecution, two different lines of argumentation were presented by the examining division why the claimed subject-matter would lack an inventive step:

1.1 The appealed decision contains two alternative objections under Article 56 EPC, the first of which describes the invention as pure automation of a business method by ordinary technical means. […]

1.2 The second objection is based on D1 as the closest prior art. The appealed decision regards the subject-matter of claim 1 of the main request as essentially the automation of a process known from D1 by means of a computer system. […]

Concerning the first line of argumentation, the Board in charge argued that the claimed invention is a system for monitoring the reprocessing of medicine in a validated process and therefore not a business method.

With respect to the second line of argumentation, wherein the claimed subject-matter would simply refer to an automation of a known process, the Board agreed and outlined:

1.3 According to the established case law of the Boards of Appeal, the mere automation of functions previously performed by humans is in line with the general trend in technology and is not considered inventive (see “Case law of the Boards of Appeal of the European Patent Office”, 8th edition, 2016, I.D.9.18.4).

Against this view the appellant argued as follows:

1.4 On the other hand, the appellant points out that in D1 the release is only carried out by one person and, in the case of pure automation, the release would therefore also have to take place automatically. However, an automation and the request from D1 for release by a person would be contradictory, because in the case of a fully automated release, the processing would take place according to a non-validated procedure. The appellant adds that the skilled person would already fail at the release step during automation. He would also try to automate the release by a human, but the automation of mental activities is not possible.

However, the Board in charge did not share this view and outlined:

1.5 The appellants view is clearly based on the assumption that a process is only automated if no human being is involved in any of its steps. However, this is not what the case-law and the Chamber understand by the term “automation”.

Hence, the Board confirmed the first instance decision that the claimed subject-matter lacks an inventive step and thus dismissed the appeal.

More information

You can read the whole decision here: T 2315/16 (Validiertes Verfahren/IMC) of 5.7.2019.

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Providing a confirmation element: non-technical

The European Patent Office considered providing a confirmation element non-technical. Here are the practical takeaways from the decision T 1139/16 (Bestätigungselement/KARL STORZ) of 9.4.2019 of Technical Board of Appeal 3.5.05:

Key takeaways

Providing a confirmation element independent of a concrete content of related information displayed to a user and independent of the subsequent cognitive processes or decisions of the user does not solve a technical problem and thus cannot contribute to inventive step.

The invention

The application underlying the present decision relates to a system for controlling and/or monitoring devices during medical interventions in which, on the one hand, access to generally valid device configurations and device parameters that have been identified as optimal in a large number of comparable interventions is possible, but, on the other hand, it is also ensured that the the medical doctor has taken positive note of these during each individual intervention. Hence, the objective of the application is to avoid that configurations of medical device are used by a medical doctor without having reviewed them (cf. EP 1 995 679 A1, paras. [0001]-[0009]). This problem is allegedly solved by providing a confirmation element that allows a confirmation of parameters used for the devices during a medical intervention.

Fig. 1 of EP 1 995 679 A1

  • Translated claim 1 (main request)

Is it patentable?

The application was rejected by the first instance examining division due to lack of novelty in light of document D1. However, the Board in charge came to the conclusion that D1 does not anticipate the claimed subject-matter. However, the board argued that the subject-matter as claimed according to the main request only differs from D1 in feature (g) which reads “a confirmation element (19) is provided, by the actuation of which the predetermined parameter values for the at least one device are taken over”. According to the appellant, this distinguishing feature solves the objective technical problem of enabling a higher level of safety in a medical intervention:

1.6 Consequently, only feature (g) is new to D1. The appellant states that the distinguishing feature (g) solves the objective technical problem of enabling a higher level of safety in a medical intervention. According to the description (see page 5, last paragraph to page 6, second paragraph), feature (g) forces the treating surgeon, for example by asking “Do you agree with the selected parameter values?”, to take note of the predetermined parameters before their adoption, to critically evaluate them and to account for the suitability of the predetermined parameters for performing the specific intervention before actuating the confirmation element.

However, the Board in charge did not follow this line of argumentation and outlined the following:

1.6 (…) In its preliminary opinion, the Board pointed out that an examination or a critical evaluation of parameters as such is not of a technical nature, but of a cognitive or possibly of a legal nature. The appellant’s line of argumentation that a conscious confirmation of the parameters to be adopted contributes to a higher safety of the medical intervention therefore merely constitutes a so-called “broken technical chain fallacy” (see T 1670/07, para. 11)

Against this view the appellant argued as follows:

1.6 (…) However, the appellant further stated that a confirmation element was undoubtedly a technical feature and that the provision of a higher level of security in accordance with the invention did not require the user to be aware of it at all, but was already brought about by the creation of the confirmation element as such.

However, the Board in charge did not share this view and outlined:

1.6 This argument does not convince the Board, since the mere creation of a confirmation element independent of the concrete content of the information displayed to the user and independent of the subsequent cognitive processes or decisions of the user cannot contribute to higher security in the event of a medical intervention. It follows that the provision of a confirmation element according to feature (g) does not solve an objective technical problem.

Hence, the Board ruled that distinguishing feature (g) is only of non-technical nature and thus cannot contribute to inventive step. Hence, the Board in charge dismissed the appeal.

More information

You can read the whole decision here: T 1139/16 (Bestätigungselement/KARL STORZ) of 9.4.2019.

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Tracking SWAP derivatives transaction positions: non-technical

The European Patent Office considered tracking SWAP derivatives transaction positions non-technical. Here are the practical takeaways from the decision T 2491/12 (Tracking derivative positions / TRADEWEB) of 13.11.2018 of Technical Board of Appeal 3.5.01:

Key takeaways

The pure automation in the sense of making financial information available quickly is not considered technical by the EPO.

The invention

According to the application underlying the present decision, a derivative is a financial contract whose value is based on, or “derived” from, a traditional security (such as a stock or bond), an asset (such as a commodity), or a market index. A SWAP agreement is a type of derivative transaction where two streams of cash flows are exchanged. As such, it is allegedly unresolved in the art to provide a method that facilitates the unwinding and assignment of derivatives positions, but also allows counterparts to monitor such positions substantially in real time.

Fig. 1 of WO 2006/063352 A2
Fig. 1 of WO 2006/063352 A2

  • Claim 1 (main request)

Is it patentable?

During first instance prosecution, the appellant essentially argued that the contribution of the invention was a real-time operation:

VII. The appellant essentially argued that the contribution of the invention was a real-time operation (see point 1.2.3.4 of the statement setting out the grounds of appeal). The “configuration” of using a trading engine and a trade history database communicatively connected to each other and to counterpart computers enabled a real-time operation. The objective problem was therefore how to allow parties to monitor derivatives transactions in real time. Further details regarding the appellant’s arguments are dealt with in the reasons for the decision.

However, the examining division did not follow this line of argumentation and rejected the application due to lack of inventive step.

During appeal, the Board in charge outlined that the claimed subject-matter, despite the presence of non-technical features, is an invention in the sense of Article 52(1) EPC:

2.1 The claim is directed to a mix of technical and non-technical features. The Board does not dispute that the system according to claim 1 appears in a technical context. The system for monitoring derivatives transaction can be considered to be performed by technical means, because it involves a computer with means for storing data, means for processing data and means for transmitting and receiving data, and, therefore, has technical character. Accordingly, the claimed subject-matter is an invention in the sense of Article 52(1) EPC (see T 258/03 “Auction method/HITACHI“).

Then, the Board further argued that the COMVIK approach has to be used for assessing inventive step. Hence, it must be determined whether the invention povides a technical contribution:

2.2 However, the question of inventive step requires an assessment of whether the invention makes a technical contribution over the prior art. Features which do not make such a contribution cannot support the presence of an inventive step (see T 641/00 “Two identities/COMVIK“, Headnote I).

However, according to the Board’s findings, unwinding derivate transactions is only a business related administrative method and thus not technial:

2.3 In the Board’s view the unwinding of derivative transactions within the system for monitoring derivatives transactions pertains to a business related administrative method, i.e. to the non-technical part of claim 1.

More importantly, the Board in charge did not see the real-time aspect as argued by the appelant:

2.4 Furthermore, the Board does not consider that the “configuration” of using a trading engine and a trade history database communicatively connected to each other and to counterpart computers provide for a real-time operation as argued by the appellant (see point 1.2.3.4 of the statement setting out the grounds of appeal).

Moreover, the Board argued that the only technical features of claim 1 are those of a client-server system:

2.6 The only technical features of claim 1 which the Board can identify are those of a networked client-server system labeled with the underlying functions (trading engine, trade history database, counterpart computers etc.), which merely map the business related administrative concept of derivative transactions.

The Board therefore agreed with the decision under appeal that the closest prior art can be considered a general purpose networked computer system. Hence, the Board confirmed the first instance decision that the claimed subject-matter lacks an inventive step and thus dismissed the appeal:

2.7 […] The person skilled in the art within the meaning of Article 56 EPC, a computer expert provided with the complete description of the non-technical abstract administrative concept, would have considered the claimed implementation obvious in view of the normal skills and the general knowledge of computer programming.

2.8 Furthermore, the use of a centralised server system and the need for real-time operation were known in the art.

8.2 The claimed invention, in the Board’s view, is not directed to a real-time problem in the sense of improving a technical process, but rather to automation in the sense of making (non-technical) financial information available quickly. This automation is achieved by mapping the business related administrative concept of derivative transactions on a client-server computer system, which the Board regards as obvious for the reasons given above (see point 2).

More information

You can read the whole decision here: T 2491/12 (Tracking derivative positions / TRADEWEB) of 13.11.2018.

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EUROPEAN SOFTWARE PATENTS July 2019 updates

July came with four new decisions in the EUROPEAN SOFTWARE PATENTS knowledge base relating to graphical user interfaces, computer security, business methods and internal control:

Patents for graphical user interfaces

Improvements in graphical user interfaces are sometimes difficult to protect with patents when they are closely related to the presentation of information (which is as such excluded from patentability).

In one case, the European Patent Office refused to grant a software patent on a method of unlocking a device by performing gestures on an unlock image. The decisive argument was that giving visual indications about conditions prevailing in an apparatus or system can only be considered a technical problem if these are technical conditions. However, providing reassuring feedback – i.e. a confirmation that the user has been doing the right thing so far – was not in itself considered a technical effect.

Patentability of computer security concepts

In the field of computer security, the European Patent Office refused to grant a software patent on a method of managing booting of secure devices with untrusted software. The decision was appealed successfully and the case was remitted to the Examining Division because erasing user data outside of the security block before allowing the execution of an unsigned operating system was found to contribute to increasing the security of the claimed device.

By the way, if you are interested in a deeper look into how the European Patent Office examines software-related inventions, this 30-minute video gives a concise overview of the “two hurdle” approach with lots of examples.

Business method patents

In the field of business methods, one Technical Board of Appeal decided that an improved risk-hedging approach in credit derivative trading is non-technical. In particular, associating information with trade related data (namely trader, credit risk positions, maturity dates, delta offsets) was found not to be technical. Storage, selection, transmission and processing of such data was considered not produce a further technical effect.

Internal control

In one recent decision, the European Patent Office confirmed that the concept of allowing a computer to access a data library without reconfiguration is technical. However, the board refused to grant a software patent because the claimed solution was found to be obvious.

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Improved risk-hedging in credit derivative trading: non-technical

This decision is a good reminder that the European Patent Office does not grant software patents on purely financial concepts. The Board of Appeal in this case decided that an improved risk-hedging approach in credit derivative trading is non-technical. Here are the practical takeaways of the decision T 1895/13 (Reducing delta values of credit risk positions/CREDITEX) of 17.1.2019 of Technical Board of Appeal 3.5.01:

Key takeaways

Associating information with trade related data (namely trader, credit risk positions, maturity dates, delta offsets) is not technical. Storage, selection, transmission and processing of such data does not produce a further technical effect.

Providing for an improved risk-hedging approach in credit derivative trading (e.g. reducing or eliminating individual delta values, optimisation using notional amounts of original trades etc.) does not have technical implications for the functioning of the data processing system.

An unspecified data format per se does not contribute to the technical character. The organisation of data in the form of a table or a spreadsheet is commonly known in the art.

The invention

This European patent application relates to electronic trading systems such as the Creditex RealTime® platform. According to the description, traders or dealers representing large financial institutions (e.g., banks and funds) routinely use electronic trading systems to enter into credit derivative transactions involving large notional amounts.

However, while being delta neutral overall (i.e., with respect to parallel shifts in the entire credit curve of a particular reference entity), a financial institution may still be exposed to short/long credit risk positions in successive maturities on the credit curve. That is, although all the positive and negative delta values may offset one another and thus add up to almost zero, the large variance of the delta positions could be problematic to the bank holding these credit positions. In addition, the bank may be exposed to default gap risk if the delta values toggles between short and long positions too quickly in successive maturities.

Against this background, the application attempts to overcome the problems associated with current risk-hedging techniques in credit derivative trading by providing techniques for reducing delta values of credit risk positions in online trading of credit derivatives.

Fig. 1 of EP 2 212 850
Fig. 1 of EP 2 212 850

Here is how the invention is defined in claim 1:

  • Claim 1

Is it technical?

Applying the established “two hurdle” approach, the board first noted that the invention as claimed was not excluded from patentability due to the presence of technical means in the claim:

The claim is directed to a mix of technical and non-technical features. The Board does not dispute that the system according to claim 1 appears in a technical context. The system involves technical means such as a processor, a user interface and a communication network and, therefore, has technical character. Accordingly, the claimed subject-matter is an invention in the sense of Article 52(1) EPC (see T 258/03 “Auction method/HITACHI“).

However, as the avid reader will already know, the second hurdle of inventive step can be overcome only based on non-obvious technical features:

However, the question of inventive step requires an assessment of whether the invention makes a technical contribution over the prior art. Features which do not make such a contribution cannot support the presence of an inventive step (see T 641/00 “Two identities/COMVIK“, Headnote I).

In the present case, most of the features of claim 1 were found to not to contribute to the technical character of the invention, namely:

The Board agrees with the contested decision at point 3.3 that the following features “per se” pertain to an administrative business related method, i.e. to the non-technical part of claim 1:

– receiving, in the online trading system of credit derivatives, a plurality of credit risk positions submitted by a plurality of trader clients, each credit risk position having a delta value and a maturity date, wherein each trader client’s submission is unknown to other trader clients;

– automatically identifying, from the plurality of trader clients, at least two trader clients who hold offsetting credit risk positions on at least two maturity dates;

– determining delta offsets to be applied to delta values of the credit risk positions held by the at least two trader clients and having the at least two maturity dates, such that an overall delta of each of the at least two trader clients’ credit risk positions remains substantially unchanged after the application of the delta offsets;

– calculating, based on the determined delta offsets, notional amounts of credit derivative trades needed to realize the delta offsets; and

– executing the credit derivative trades among the at least two trader clients.

Here is how the board argued about these features:

The contribution of the invention does not lie in a faster and more efficient information processing as argued by the appellant (see point 1 of the statement setting out the grounds of appeal). The technical infrastructure and the user interface used according to claim 1 are that of a general purpose computer which was notorious knowledge before the priority date (see for example US 2006/0036535 A1 (D1) cited in the International Search Report: figures 1, 5A, 5B, 6 and 7; para. [0036] to [0041]).

The contribution lies rather in the way of associating information with trade related data (namely trader, credit risk positions, maturity dates, delta offsets). Such data, however, in the Board’s view, is not technical, since it is cognitive data, not functional data (see T 1194/97 Data structure product/PHILIPS, OJ EPO 2000, 525). Storage, selection, transmission and processing of such data are merely implementations of administrative measures following a financial concept, such as would be performed by a human trader, when mitigating credit risk positions, making use of general purpose computer functions (e.g. storing and retrieving information in electronic form) without creating a further technical effect.

The present invention may provide for an improved risk-hedging approach in credit derivative trading (e.g. reducing or eliminating individual delta values, optimisation using notional amounts of original trades etc.) and therefore an improved financial concept. Those measures, however, do not appear to have any technical implication for the functioning of the data processing system and its interactive graphical user interface (GUI), since the underlying operations are carried out by a conventional networked data processing system (such as exemplified in D1, see above).

By the way, if you are interested in a deeper look into how the European Patent Office examines software-related inventions, this 30-minute video gives a concise overview of the “two hurdle” approach with lots of examples:

The applicant had also argued that it was a technical feature of the invention that each client’s submission is unknown to the other trader clients. However, without success:

In contrast to the appellant, the Board does not consider the feature that each client’s submission is unknown to the other trader clients to be technical since such a limitation of data flow is not achieved by technical measures, but is a constraint of the underlying administrative/financial concept.

The same applied ultimately to the aspect of automating the processing of the financial data. As the skilled reader will know, the mere automation of something is regularly considered obvious by the European Patent Office:

The fact that the steps of receiving, identifying, selecting and calculating complementary offsetting credit risk positions are performed automatically and are scalable is an obvious consequence of using a computer system with commonly known database and network technology.

Therefore, the board decided that claim 1 of the main request did not involve an inventive step.

The applicant also tried an auxiliary request which defined that the credit risk positions can be uploaded by the trader clients using a spreadsheet format:

Claim 1 of this request additionally incorporates features of dependent claims 2 and 3 of the main request by further specifying that the plurality of trader clients are invited to upload the plurality of credit risk positions to the electronic trading system of credit derivatives in a spreadsheet format.

The Board concurs with the contested decision that an unspecified data format per se does not contribute to the technical character of the claim and that organisation of data in the form of a table or a spreadsheet was commonly known in the art (see point 8 of the decision under appeal).

In addition, a trading system comprising a standardized interface that allows processing of credit derivatives in a compact and uniform format was known in the art, including the use of tables (see e.g. D1, para. [0013], [0045] or [0046], [0069] to [0071] with figures 11, 14, and 15A to 15D).

The additional features therefore do not involve an inventive technical contribution.

More information

You can read the whole decision here: T 1895/13 (Reducing delta values of credit risk positions/CREDITEX)

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Allowing a computer to access a data library without reconfiguration: technical

In this recent decision, the European Patent Office confirmed that the concept of allowing a computer to access a data library without reconfiguration is technical. However, the deciding board refused to grant a software patent because the claimed solution was found to be obvious. Here are the practical takeaways of the decision T 1180/13 (Partitioned data library III/HEWLETT PACKARD) of 25.4.2019 of Technical Board of Appeal 3.5.05:

Key takeaways

Allowing a computer to access a data library without reconfiguration is technical.

The invention

This European patent application relates to a partitioned data library that is to be attached to a data storage area network. To allow existing software to access the partitions without first being reconfigured, the partitions are set up to emulate existing data libraries for which the software has already been configured.

Fig. 1 of EP 1 324 185 A2
Fig. 1 of EP 1 324 185 A2

Here is how the invention is defined in claim 1 of the main request:

  • Claim 1 (main request)

Is it technical?

Since claim 1 of the main request was found to contain added subject-matter, the board decided on inventive step only with regard to the first auxiliary request. Claim 1 of the first auxiliary request is directed to a data library adapted to be attached to a storage area network. The library contains a number of partitions, each partition including at least one data transfer element and at least one data storage element slot. The partitions share at least one media transport element for moving media between slots and data transfer elements. The library includes a library controller that restricts movement of media between slots to slots assigned to the same partition.

Each of the data transfer elements, data storage element slots and media transport elements is assigned an “internally unique element address”. The library controller assigns a different “logical unit designation” to each partition and an “external element address” to each of the data transfer elements, data storage element slots and media transport elements.

Regarding inventive step, the board held that the invention differed from the closest prior art in the following features:

  • internally unique element addresses are assigned to the data transfer elements, the data storage element slots and the media transport elements;
  • external element addresses are assigned to the data transfer elements and the data storage element slots;
  • the library controller maps the internally unique element addresses to the external addresses; and
  • for each partition, the number of data transfer elements, the number of data storage element slots and the external addresses correspond to the respective numbers and element addresses of an existing data library model from a plurality of existing library models.

The board had no doubt that these features indeed provide a technical effect and thus formulated the objective technical problem as follows:

These features have the effect that a computer configured to access a data library of the existing data library model need not be reconfigured to access the claimed data library.

The problem to be solved may therefore be formulated as how to modify the data library of document D4 so as to allow a computer to access the data library without reconfiguration.

In the end, however, the claimed solution to this problem was found to be obvious:

The skilled person, starting from document D4 and faced with this problem, would consult document D2, which discloses a data library that has a virtual configuration different from its physical configuration and is presented to host computer systems as a conventional data library with a physical configuration identical to the virtual configuration (see abstract). Document D2 explains that this avoids “complicating the set-up, maintenance, or creation of application software utilizing the library” (column 9, lines 30 to 40).

To achieve this goal, the library’s response to host commands must be altered (column 9, lines 44 to 49). In particular, to correctly deal with a SCSI move medium command as shown in Figure 10, the library’s controller has to “remap source and destination addresses from the virtual configuration seen by the host to the appropriate physical resources allocated to that host” (column 9, lines 58 to 62; column 7, lines 10 to 25).

In other words, the library controller maps external element addresses corresponding to the configuration of the “conventional data library” to the internally unique addresses corresponding to the actual physical configuration of the data library (and vice versa). And it is self-evident that for the virtual configuration to correspond to the physical configuration of a conventional data library, the virtual configuration needs to define the same number of data transfer elements and data storage element slots.

Hence, document D2 discloses a SCSI-based solution to the problem posed which is applicable to the SCSI-based data library of document D4 and corresponds to the solution proposed in claim 1. The skilled person would therefore apply the teaching of document D2 to the data library of document D4 and thereby arrive at the subject-matter of claim 1 without the exercise of inventive skill.

Therefore, the board decided that claim 1 of the first auxiliary request does not involve an inventive step.

More information

You can read the whole decision here: T 1180/13 (Partitioned data library III/HEWLETT PACKARD) of 25.4.2019

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EUROPEAN SOFTWARE PATENTS June 2019 updates

June came with four new decisions in the EUROPEAN SOFTWARE PATENTS knowledge base relating to graphical user interfaces, computer simulations and business methods:

Patents for graphical user interfaces

Improvements in graphical user interfaces are sometimes difficult to protect with patents when they are closely related to the presentation of information (which is as such excluded from patentability).

In one case, the European Patent Office acknowledged that precomputing user habit information for a graphical user interface of a mobile device is technical. However, this difference over the prior art was found to be obvious, since in the art of computing, “precomputation” was found to be a well known method of speeding up program execution.

On the other hand, the European Patent Office granted a software patent on a method of representing missed approach information in a perspective view on a cockpit display. Here, the argument was that enabling a pilot to abort a landing in due time if necessary, thereby improving safety, is technical.

Patentability of computer simulations

The field of computer simulations continues to be an exciting area in terms of patentability, last but not least because of the pending referral G1/19 in which the EPO Enlarged Board of Appeal will have to make a stance concerning the patentability of computer-implemented simulation methods.

In the meantime, the European Patent Office granted a software patent on a method for designing an optical system that satisfies a certain algebraic condition. The board took the view that the criteria for technical character presupposes that the claimed subject-matter relates to a physical entity or a physical activity.

By the way, if you are interested in a deeper look into how the European Patent Office examines software-related inventions, this 30-minute video gives a concise overview of the “two hurdle” approach with lots of examples.

Business method patents

In the field of business methods, one Technical Board of Appeal had to deal with a patent application relating to an automated exchange system designed to execute matching of combinations of financial instruments. Despite the focus of this invention on a financial use case, the board found that implementing the financial matching concept in a way which improves real-time and latency constraints in the matching unit is indeed a technical problem that has to be taken into account in the inventive step assessment.

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Matching unit comprising two computer entities directly connected to a shared memory storing pre-calculated values: technical

The European Patent Office considered a matching unit comprising two computer entities directly connected to a shared memory storing pre-calculated values technical. Here are the practical takeaways from the decision T 1072/11 (Matching unit comprising two computer entities directly connected to a shared memory storing pre-calculated values/NASDAQ) of 18.6.2019 of Technical Board of Appeal 3.5.01:

Key takeaways

Using known computer processors and memory for special tasks may be considered as “non-notorious”. Thus, prior art has to be considered for assessing inventive step.

The invention

The invention underlying the present decision relates to an automated exchange system designed to execute matching of combinations of financial instruments. According to the application, in many electronic exchange systems today it is possible to trade so-called combination orders implying the trade of two or more contracts. Such a contract may be set up as a separate instrument. Oftentimes, the ratio between the elements to be sold and bought of such a contract cannot be expressed by natural numbers. In an automated exchange system, the bottleneck is the matching unit used for calculating the ratios which results in a very high workload on the underlying computer processor. That is the reason why presently no system performs such calculations. Hence, the goal of the application is to provide a system and method that is able to use formulas to derive the volume and/or price of a combination order to reduce the risk for the party entering such a transaction.

Fig. 1 of WO 03/105044 A2
Fig. 1 of WO 03/105044 A2

  • Claim 1 (main request)

Is it patentable?

The EPO’S first instance examining division rejected the present application due to lack of inventive step in view of D1 (US 6098051 A1), a publication introduced during the examination proceedings with the summons for oral proceedings before the first instance. However, the Board in charge does not agree to this assessment. At first, the Board outlined that the claimed subject-matter refers to a mixed-type invention and thus provides technical character:

2.1 The independent claims are directed to a mix of technical and non-technical features. The Board does not dispute that they appear in a technical context. Even the method can be considered to be performed by technical means, because it involves a first and second computer processor as well as a memory, i.e. means for processing and storing data and, therefore, has technical character. Accordingly, the claimed subject-matter is an invention in the sense of Article 52(1) EPC (see T 258/03 “Auction method/HITACHI“).

Then, the Board identified several differences over D1 and formulated a technical problem as follows:

2.5 D1 does not disclose the following features of claim 1:

– the second entity is located within the matching unit,

– a calculation of matching data values required in the matching process by the second computer entity,

– a shared memory directly connected to the second computer entity and- storing calculated matching data values calculated by the second computer entity in the shared memory.

2.6 The underlying objective technical problem is considered to be to implement the financial matching concept in a way which improves real-time and latency constraints in the matching unit.

Furthermore, according to the Board, it is not notorious to use known processors, co-processors as well as memory in the claimed way:

3. The Board is aware of computer processors comprising a coprocessor as well as first and second level cache memory, which have been used for special tasks already before the priority date of the present application, including improving processing power and dealing with real time constraints. However, the Board is not convinced that this has been notorious knowledge of the skilled person. Therefore a look into the prior art is necessary.

However, the Board outlines that it believes that a further prior art search is required before inventive step can be assessed and thus remitted that case back to the examining division:

3.3 Thus, present claim 1 cannot be definitively assessed for inventive step without knowledge of the relevant documented prior art. Thus, the main request requires a search for relevant prior art. Hence the matter must be remitted for an additional search and further examination.

4. According to Article 111(1) EPC the Board may exercise any power within the competence of the examining division (which was responsible for the decision under appeal) or remit the case to that department for further prosecution. It is thus at the Board’s discretion whether it examines and decides the case or whether it remits the case to the department of first instance. As it appears necessary for a further search to be carried out, the Board considers that in the present case remittal is the more appropriate course of action. […]

More information

You can read the whole decision here: T 1072/11 (Matching unit comprising two computer entities directly connected to a shared memory storing pre-calculated values/NASDAQ) of 18.6.2019.

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Designing an optical system with certain mathematical properties: technical

The European Patent Office granted a software patent on a method for designing an optical system that satisfies a certain algebraic condition. Here are the practical takeaways of the decision T 0471/05 of 6.2.2007 of Technical Board of Appeal 3.4.02:

Key takeaways

The criteria for technical character presupposes that the claimed subject-matter relates to a physical entity or a physical activity.

The invention

This European patent application relates to the activity of designing an optical system. This is done such that substantially all light rays imaged by the optical system between two predetermined points on the optical axis of the system satisfy an algebraic condition specified in the patent claim.

Fig. 1 of EP 0 932 845
Fig. 1 of EP 0 932 845

Here is how the invention is defined in claim 1 of the main request:

  • Claim 1 (main request)

Is it technical?

Since claim 1 concerned a method for designing an optical system essentially such that a mathematical formula is satisfied, the question at hand was whether the claimed subject-matter is excluded from patentability per se. In this respect, the board noted:

Thus, the claim merely formulates a series of mathematical and optical abstract concepts without properly requiring a physical, technical implementation. In particular, neither the claimed design method nor the resulting “design” requires a technical activity or a technical entity – let alone a “physical” activity or entity within the meaning of decision T 453/91 (point 5.2 of the reasons). It follows that the subject-matter for which protection is sought (Article 84 EPC, first sentence) is the mere “design” of an optical system and encompasses purely abstract and conceptual implementations excluded from patent protection pursuant to Articles 52(1), (2) and (3) EPC. More particularly, the claimed method can be carried out as a purely mental act or as a purely mathematical design algorithm and, consequently, encompasses embodiments falling within the category of methods for performing mental acts as such and within the category of mathematical methods as such both expressly excluded from patent protection under Article 52(2)(a) and (c) in conjunction with Article 52(3) EPC.

The appellant argued that the claimed method defines an activity that requires the use of technical means, involves technical considerations, results in an optical system design and produces technical information in the form of the specifications of an optical system having predetermined technical characteristics, and pertains to the technical field of optical design. However, this did not convice the board:

However, this line of argument does not persuade the Board. The criteria for technical character of a claimed invention discussed in decision T 619/02 implicitly presuppose that the claimed subject-matter defining the matter for which protection is sought relates to a physical entity or a physical activity (see for instance point 2.1, first paragraph, and points 2.3.1, 2.4.1 of the decision). It cannot be denied that the method defined in claim 1 of the main request can be carried out using some physical means (e.g. a block of optical material to be gradually shaped into an optical system so as to satisfy the algebraic condition specified in the claim), or using some technical means (e.g. a computer to determine the optical specifications of the optical system design), or in the form of a physical activity that results in a physical entity (e.g. when the claimed step of “making a design of the optical system” is implemented by the manufacture of the design as actually claimed in claim 5), and that such implementations of the claimed method constitute physical, technical activities not excluded from patent protection (see for instance decisions T 914/02, point 2.3.3 of the reasons, and T 258/03, OJ EPO 2004, 575, point 4.7). Nonetheless, contrary to the appellant’s contention, the claimed method does not require the use of technical means and, as noted above, the method is not restricted to physical, technical implementations, and the fact that the claimed method encompasses non-excluded implementations such as those mentioned above does not overcome the fact that the claimed method also encompasses excluded subject-matter (T 914/02, points 2 and 3, and T 388/04, OJ EPO 2007, 16, point 3 of the reasons; see also T 453/91, point 5.2, and T 930/05, points 3.1 and 4.5). Thus, as long as the claimed design method is not confined to physical, technical implementations, the claimed subject-matter encompasses embodiments excluded from patentability under Articles 52(1) to 52(3) EPC and is not entitled to patent protection under the EPC.

Therefore, the board concluded that claim 1 of the main request is excluded from patent protection under Articles 52(1), (2) and (3) EPC.

In a second auxiliary request, the appellant added that the claimed method is carried out “using an optics design program”. This claim version overcame the exclusion:

Thus, claim 1 of the second auxiliary request defines an activity in which the design conditions defined in the claim are input into an optics design program to determine the design parameters of optical systems satisfying the design conditions expressed in the claim. In addition, the determination by the optics design program of the resulting design specifications requires implicitly that the optics design program is run in some form of hardware such as a computer. It follows that the claimed method defines an activity involving inherently and necessarily the use of such hardware fed with the optics design program and the claimed design conditions, i.e. defines a physical, technical activity.

By the way, if you are interested in a deeper look into how the European Patent Office examines software-related inventions, this 30-minute video gives a concise overview of the “two hurdle” approach with lots of examples:

Regarding inventive step, the board was apparently satisfied that the claimed subject-matter, including the mathematical formula, defines technical subject-matter, since it examined in detail whether these features were rendered obvious by the prior art at hand:

The Board, however, cannot follow the conclusion drawn by the examining division. First, the line of argument of the examining division relies on a parameter q algebraically interpolating between the Abbe and the Herschel conditions, i.e. relies on hindsight knowledge of the specific algebraic condition defined in the claimed invention and therefore on an ex post facto analysis. Second, even assuming that the skilled person would have considered the possibility of obtaining a compromise between the two antagonistic conditions different from that proposed in document D1, the Board notes that there is an infinite number of ways of reaching a compromise between the two conditions. In particular, there is an infinite number of mathematical functions interpolating between the two algebraic conditions [1] and [2]; even restricting such interpolating functions to parametric functions, there is an infinite number of such interpolating parametric functions, the one-parameter algebraic interpolations given by the appellant in the statement of grounds of appeal (see point V above) constituting just some examples. In fact, there are even infinite ways of compromising the two conditions with the algebraic function defined in the claim when – contrary to the requirements of the claimed design – the condition is only satisfied by some light rays, or by substantially all light rays but with different values of the parameter q.

In addition, the algebraic condition defined in the claimed invention does not constitute an arbitrary selection of just one from among infinite possibilities of mathematically interpolating between conditions [1] and [2], but, according to the disclosure of the invention, the claimed condition constitutes the selection of a specific mathematical interpolation that guarantees the achievement of an advantageous balance between field size and axial excursion (page 3, lines 15 to 25), thus allowing for a relatively large volume in image space where aberrations stay relatively low (pages 9 to 12 of the application).

In view of the above, neither the available prior art nor the general common knowledge in this field suggest the design requirements defined in claim 1 and the technical improvements achieved therewith.

Therefore, the Board decided that claim 1 of the second auxiliary request involves an inventive step.

More information

You can read the whole decision here: T 0471/05 of 6.2.2007

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