For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

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Friday, 7 May 2010

Book Review: "Patent Law for Computer Scientists"

How much information does a patent application have to disclose for it to be patentable? Usually this question is about whether an invention is sufficiently 'enabled', i.e. whether it provides enough information for a hypothetical skilled person to reproduce the invention without having to invent something along the way. In the complex area of patentability, however, this can also be about whether there is enough material in the patent specification for the claimed invention to have enough of a technical contribution over the prior art to justify an inventive step. Computer-implemented inventions (CIIs) are particularly prone to this problem, as anyone who has seen a typical patent specification for such an invention will already know. Is a block diagram, possibly with a nice cloud shape representing the internet, enough? What if the diagram represents a new way of buying something over the internet? Does it make a difference if there is something more complicated going on? If so, how much detail should the specification go into to stand the best chance of the application being granted in some form? These, and many other, questions are raised and addressed in "Patent Law for Computer Scientists", a book written by four very experienced EPO examiners Daniel Closa, Alex Gardiner, Falk Giesma and Jörg Machek. With over 70 years of collective experience, and with backgrounds in physics, engineering and computer science, they have become apparently quite concerned at the enormous number of patent applications they have had to deal with, and mostly refuse, over the past couple of decades. With this book, they are offering to give something back to would-be applicants by providing some help on how to give their inventions the best chance of success at the EPO.

The book kicks off with some background on the subject, which takes the reader from the basics of what a patent is about through some enlightening figures about how many 'software patents' there really are out there (about 17,000 patents with some IT flavour are granted by the EPO each year, about a quarter of the total), to some examples of where patent applications in the software field have become public spectacles, including the infamous Amazon series of applications. There is also a useful discussion of the general differences between how applications are dealt with in the USA, Japan and Europe. Unsurprisingly, the EPO tends to be the most strict, the USPTO the least strict, and the JPO seems to lie somewhere between the two.

The bulk of the rest of the book is then taken up with various example cases of made-up inventions, which have clearly been derived by the authors from their experience of many real-life cases. These case studies illustrate the many areas in which CIIs are usually applied and, most importantly, where they most often run into trouble at the EPO. The examples range from a method of selling over a network (which has considerable similarities to the type of invention from the well-known Hitachi decision of T 258/03), to methods of implementing digital rights management, multi-player games and e-learning systems. In each example, the authors describe an invention at various levels of abstraction, gradually adding more and more technical details until the claimed invention resembles something that might reasonably be seriously considered at the EPO for inventive step and not simply dismissed without the need for a search.

The examples in their various fields build up to cover many, if not all, of the conceivable types of inventions that a patent attorney might face technical problems with at the EPO, and together give the reader a very detailed picture of how to go about claiming an invention in the 'right' way as far as the EPO is concerned. In most cases this is unfortunately unlikely to be of much direct help to an applicant because, by the time an application faces the types of objections mentioned, it is far too late to do anything about it. This is where the reader may realise that the main use of this book is not really as a 'how to' guide to getting applications with no hope through the EPO system successfully, but as something to help an applicant prepare for getting a patent specification prepared properly at the outset.  As a result, the IPKat is a little confused about exactly who the book is properly aimed at, as it doesn't really seem to be only for computer scientists.  Using the EPO-style interpretation of the word 'for', it seems to be also very suitable for European patent attorneys with an interest in the field of computer-implemented inventions, and particularly well suited for US attorneys who might like to think beyond the requirements of the US system when preparing their applications for being filed internationally. For any of these people, as well as the occasional pro-patent computer scientist, the IPKat would highly recommend it.

4 comments:

Jonas Maebe said...

Actually, the Amazon gift ordering patent was initially granted by the EPO. They did however revoke it later after it was opposed by several parties. See e.g. http://www.out-law.com/page-8761

The reason the EPO revoked it was a lack of inventive step though, not that it was a software or business method patent.

Anonymous said...

"including the infamous Amazon series of applications (none of which have yet been granted by the EPO)"

At least one of them was granted. It was subsequently revoked in opposition, which decision has recently been set aside by the Board. The opponent(s) will now have to show that a certain "one-click" feature that was added to the claims, even though technical, is obvious.

Software Attorney said...

Thanks for a great review. This is now on my reading list.

Anonymous said...

Maybe the next book will be written by programmers on "How violate EPO granted software patents in 10 lines of code".

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