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Tuesday, 9 February 2010

Patent4U Patentics found to be not patentable


The IPKat was puzzled and intrigued by a recent decision from the UK IPO (O/021/10).  The decision relates to UK patent application GB0716959.2 (published as GB2453318), filed in the names of Marc and Idan Zuta, who together run an Israeli company known as Patent4U Limited. The company claims to be able to "personally assist and participate in the various aspects to promoting your business. From defining your invention, R&D to participating in business meetings and asisting [sic] in raising investments", which all sounds very helpful.  Part of Patent4U's services involve something they call 'Patentics', a system that apparently applies a "scientific basis and methodology" to the process of applying for patents.  Patent4U appear to have viewed this process as being sufficiently important to justify an attempt at patenting it, at least in the UK and the US.

(right: part of the Patentics system)

Part of the problem with trying to get a patent in the UK is to claim an invention that passes the requirements of patentability, including passing the test of what you claim not being excluded under section 1(2).  When the application was filed, this meant passing the now well-known four step Aerotel/Macrossan test.  One of the independent claims of the application was aimed at exactly this problem, and claimed the following:
"45. A method for communicating inventions and drafting a patent application addressing the UK IPO requirements, comprising:
a. The invention is disclosed in dialog between inventor and agent, using communications over the internet;
b. Prepare a description of the invention using a mathematical equation with Standard terms;
c. search the prior art, convert possibly relevant prior art to mathematical equations, and translate the terms therein are into Standard terms;
d. compare the invention with prior art using a computer and software which can read and process the mathematical formulas for the above inventions, detecting differences from each of the prior art references;
e. If the actual contribution versus one or more of the prior art is not significant, repeat steps (a)-(d) to re-define or narrow the scope of the invention so as to address the identified most relevant prior art;
f. The above steps (a)-(e) are repeated until an invention crystallizes which convincingly differs from the prior art in some precisely defined aspects, then continue; or no such invention is found, then Exit;
g. the results of the computer comparison of the invention with prior art in (d) above are reviewed to check whether the differences from prior art fall solely within the excluded subject matter;
h. The above steps are repeated, the results of the computer comparison of the invention with prior art in (d) above are reviewed to check whether at least one of the differences from prior art is technical in nature;
i. Take Corrective steps if possible and repeat steps (a)-(h), else stop the procedure, Exit."
Given that the applicants had apparently found such a sure-fire way of defining an invention in such a way that it would pass the Aerotel/Macrossan test, the IPKat was somewhat surprised to see that the claimed invention did not itself pass the same test.  The hearing officer in this case stated:
"Claim 45 is essentially about trying to ensure that a patent claim describes an invention that defines a contribution over the prior art, and that that contribution is one which is not solely within excluded matter. The method relies upon describing the invention in a particular form which in turn allows the analysis of the contribution to be performed by a suitably programmed but otherwise conventional computer, but the underlying steps in the method are those followed as a matter of course during the processing of any patent application on the borderline of patentability. In short, the contribution is a means of automating part of the patenting process with the end result being, hopefully, a description of an invention which is patentable. This contribution falls solely within the field of computer programming." (paragraph 18)
Unfortunately (and rather strangely), the applicants refused to even acknowledge that the hearing officer had the authority to decide the fate of either application, so refused to attend the hearing.  They did, however, argue on paper that the invention was technical because it related to the technical details of an invention, and made a technical contribution because filing a patent application was an essential step in manufacturing a product.  Unsurprisingly, this line of argument did not work, and the hearing officer refused the application.

The IPKat wonders whether this decision is a particularly good advertisement for Patent4U's services.

12 comments:

Anonymous said...

This must, surely, be a wind up. Was the application filed on April 1st?

Anonymous said...

I shouldn't be surprised if the US-PTO allows it.

MaxDrei said...

I'm reminded of the recent attempt by one UK patent attorney to take through to issue by the USPTO claims to an invention in the field of, what was it now, joke-telling or something. Then there was the even more recent "proposal of marriage" method claim. Alas for the Israelis, these days, the USPTO is in "Once bitten, twice shy" mode.

Never mind, some people assert that there's no such thing as bad publicity.

divan said...

I think adding additional features into the claim, for example after paragraph d. "...putting each of said differencies into separate memory block, optimizing memory size by minimizing the number of said memory blocks..." would make the app. patentable

Anonymous said...

It is necessary to test the limits of rules, and those who take the trouble to do so must be lauded. MaxDrei referred to Tim Roberts who filed a formally correct international application for “Business Method: Protecting Jokes”, and it was indeed taken the furthest in the US, receiving a long non-final rejection, after which it was abandoned. Even before the London agreement came into force I had promised him pro bono validation in Denmark, if he carried it through the European system.

I started my professional life in an association created with the purpose of fighting all improper patent rights in the Danish territory concerning radio and electronics. Such patents were used in forcing Danish companies to taking out licenses in bulk. Expensive court cases in the 1930s had proved many of these patents to be invalid. To save costs oppositions were systematically filed, mostly based on better novelty searches than those of the Danish Patent Office. When the transistor arrived in the early 1950s many large corporations filed patent applications on what were well-known circuits looking superficially novel. Those were opposed by demonstrating equivalence with existing valve [‘tube’ in American] circuits. However, the association also filed its own patent applications on transistor circuits that were blatant equivalents of well-known valve circuits. The successful intention was to teach the Patent Office about topologically equivalent circuits, so that applications could be killed before opposition became necessary. Raising the bar! And the applications were rejected.

I like it when business method applications are rejected, and that was obviously also the intention of Patent4U Limited. Thank you!

Kind regards,

George Brock-Nannestad

David said...

If you read at least paragraphs 2-6 of the decision itself, you might come to a different conclusion as to the motives of the applicants. Personally, I don't think they were doing it for the greater good.

Anonymous said...

LOL! (quite useful term!)

I obviously am too altruistic. On the other hand, giving up too lightly would not do. No, I agree, they were going to take all the patent offices to court for contributory infringement when prosecuting cases on the more-or-less automated prosecution highway.

Kind regards,

George Brock-Nannestad

Anonymous said...

George Brock-Nannestad wrote: I started my professional life in an association created with the purpose of fighting all improper patent rights in the Danish territory concerning radio and electronics.


The concept sounds the same as that of the Interessengemeinschaft für Rundfunkschutzrechte (founded 1923) which occasionally files oppositions before the DPMA and EPO. I guess there might be a link between both institutions.

Anonymous said...

Anonymous wrote about IGR founded 1923 (albeit originally with a different purpose). I knew them very well; we were colleagues.

I have on several but too few occasions recommended that the crowd against computer related inventions should get together and form an association to share the costs in filing European oppositions and thereby raising the bar. Instead they try to work the matter politically or merely sulk. Patents that demonstrably do not fulfil the criteria of patentability should not exist, they give the patent system a bad name, and the best time to attack them is in opposition. The problem with patents is that even if they are issued “in error”, they are still the basis for innumerable groundless legal threats and court cases that are won by the largest pockets (or just settled out of courts and in a confidentiality that does not serve the public).

Kind regards,


George Brock-Nannestad

Anonymous said...

I have on several but too few occasions recommended that the crowd against computer related inventions should get together and form an association to share the costs in filing European oppositions and thereby raising the bar. Instead they try to work the matter politically or merely sulk.

You are suggesting that they grow up, and try to get informed about the patent system and about what actually is in the patents that they so vocally oppose. That's truly a revolutionary proposal.

Anonymous said...

"the crowd against computer related inventions should get together and form an association to share the costs in filing European oppositions and thereby raising the bar."

The only way to raise the bar is to pay for people to oppose patents.

Opposing patents costs time and money, and only competitors has an monetary interest to get rid of them.

This is why the Peer2Patent project is a fraud, it lacks the incentive.

No examiners working for free.

Anonymous said...

Anonymous wrote "You are suggesting that they grow up........"

I may have used that kind of expression before, but it is non-constructive. I think that “the crowd” knows perfectly well what patents are about, but they do not like them, because they—rightfully—do not respect them. Only, this is not per se a good argument, but the more objective “lack of adherence to publicly instituted standards” is.

In the fresh Court of Appeal decision Lilly v. HGS Lord Justice Jacob mentions some of them at 41: “......fact-evaluation objections such as sufficiency or, here, susceptibility of industrial application.” [quoted out of context but non-distorting]. It is my opinion that we do not need the exceptions to patenting at all; the old virtues are quite sufficient.

Lord Justice Jacob also says, at 29: “The opposition procedure represents a compromise. In theory a true pre-grant opposition would be ideal – any patent which emerged would have finished its patent office processing.” Now, that is indeed what we had, but that lead to another problem: unacceptable delays in enforceability until the opposition was finally decided. There were several remedies, and what we have now is what was chosen.

So, the “revolutionary” in my proposal resides not as much in trying to be condescending as in suggesting that the bar be raised without the artificial remedies that are now blowing through the EPO like an evil wind. There is too much collateral damage connected to those remedies.

Kind regards,

George Brock-Nannestad

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