tag:blogger.com,1999:blog-5574479.post116212687810766100..comments2024-03-29T13:59:42.629+00:00Comments on The IPKat: COURT OF APPEAL RULES ON BUSINESS METHOD AND COMPUTER PROG PATENTSVerónica RodrÃguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger10125tag:blogger.com,1999:blog-5574479.post-1162560823034869442006-11-03T13:33:00.000+00:002006-11-03T13:33:00.000+00:00We disagree then, because I do think that the fact...We disagree then, because I do think that the fact that such an indicator can constitute a "non-obvious technical contribution" if no prior art is available demonstrates that the approach used by the TBAs is horribly broken.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1162545253911627822006-11-03T09:14:00.000+00:002006-11-03T09:14:00.000+00:00I am also not happy with the outcome of the KONAMI...I am also not happy with the outcome of the KONAMI decision but I do not conclude that therefore the approach of the board was wrong. I believe the problem lies in the interpretation of the claim during the search phase. The difficulty is always to determine the relevant, i.e. technical elements of the claimed invention. The search examiner probably was not aware of what he should have in his focus. According to the board, the non-obvious technical contribution lies in displaying an edge indicator toward an object which is being outside the screen as a solution to the problem of interactive display screens which no longer show an interesting detail of a large map because the user zoomed into a picture.<BR/>If the search examiner would have been aware that this was the crucial feature he might have found much better prior art, that would have led to a different decision of the board. In my opinion the board should have recognized that relevant prior art must have been available and asked for an additional search.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1162495573636622612006-11-02T19:26:00.000+00:002006-11-02T19:26:00.000+00:00There appears to be no basis in the law that justi...<I>There appears to be no basis in the law that justifies identifying a contribution when deciding on exceptions to patentability.</I><BR/><BR/>That depends on whether you consider "the claims as a whole" as the invention, or rather follow the core theory (whereby it's the contribution that must cumulatively fulfill the conditions of patentable subject matter, novelty, non-obviousness and industrial applicability).<BR/><BR/><I>The analysis of whether differing features fall solely within the excluded subject matter or whether the contribution is actually technical in nature to me is the requirement for an inventive step.</I><BR/><BR/>That's indeed the EPO practice, and that leads to decisions <A HREF="http://legal.european-patent-office.org/dg3/pdf/t030928eu1.pdf" REL="nofollow">like this one</A>...Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1162455708460433522006-11-02T08:21:00.000+00:002006-11-02T08:21:00.000+00:00There appears to be no basis in the law that justi...There appears to be no basis in the law that justifies identifying a contribution when deciding on exceptions to patentability. The analysis of whether differing features fall solely within the excluded subject matter or whether the contribution is actually technical in nature to me is the requirement for an inventive step. It can only be present if a technical problem is solved in a non-obvious fashion. If the contribution causes effects in non-technal fields only then there cannot be a solution to a technical problem hence, no inventive activity.<BR/>The exclusions may be an aid when deciding on technicality. They can be considered as a non-exhausitive list of non-technical areas.<BR/>Deciding on technicality appears to be the most challenging issue. Unfortunately, their Lordships' made not contribution in that respect.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1162227531048238092006-10-30T16:58:00.000+00:002006-10-30T16:58:00.000+00:00In my view, the Aerotel/Macrossan approach focuses...In my view, the Aerotel/Macrossan approach focuses on the 'novel' rather than 'inventive' aspects of a patent - see wording of the test and explanation in [40] and [43]. In the Aerotel appeal, the novel aspect of the patent was to use a seperate, new exchange dedicated to this kind of telephone system as opposed to merely constructing a new *method* for using the existing system. The new exchnage was not technically 'inventive' but that is not part of this exclusion test so the patent was upheld.<BR/><BR/>In Macrossan's appeal, the novel aspect of the patent was simpy a computer program that asked questions - a new method of doing something already done by a lawyer/agent. Connectign to the internet would not be a new system. However, if Macrossan had used some new kind of connecion methodology, as Aerotel supposedly did, this might have satisfied. The technology to acheive this system could have been unimaginative but the system itself would have to be a contribution to human knowledge.<BR/><BR/>Does that make sense or am I oversimplifying? My knowledge of patent law is somewhat rudimentary!Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1162217255251228612006-10-30T14:07:00.000+00:002006-10-30T14:07:00.000+00:00James, I haven't been able to face going back to o...James, <BR/><BR/>I haven't been able to face going back to our parallel debate on Wikipedia since Friday, so it's strange to find you here!<BR/><BR/>Anyway, I can't agree with your interpretation of the new test. The reason to have steps 3 and 4 distinct from one another is, IMO, to account for the fact that the list of exclusions is not exhaustive. There may be other non-inventions not covered by the list which you can only recognise as such by their lack of "technicality". The Patent Office have been quite clever in recognising that the list of exclusions is "the lodestone" but that the "technical" test is also useful for cases where you can't quite fit something into any of the excluded categories.<BR/><BR/>Your suggestion that the Patent Office wanted something physical in step 3 also cannot be correct. That places too much weight on the need for there to be a new device, something which the Patent Office and the courts have largely avoided (since it is placing substance over form). In fact, it's the root of my query above since the Aerotel reasoning seems to rely entirely on the creation of a new system. <BR/><BR/>However, I have now realised that, while Jacob's reasoning concerning Aerotel is a bit impenetrable, he does support in paras. 90 to 92 (as he is forced to!) the previous CofA judgements that merely having new hardware is not enough and that a non-excluded contribution may exist either within or exterior to the computer.<BR/><BR/>Maybe this judgement makes sense after all. Even though neither of us appear to yet understand why Aerotel was actually found to be patentable, he at least hasn't opened the floodgates to business methods in the way I had originally feared.Geoffhttps://www.blogger.com/profile/12424257512957515766noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1162209807491024182006-10-30T12:03:00.000+00:002006-10-30T12:03:00.000+00:00IPKat knows her Tanach :-)What I think the Patent ...IPKat knows her Tanach :-)<BR/><BR/>What I think the Patent Office was asking for, with their 4 step test was:<BR/><BR/>1. What does the patent mean ?<BR/>2. How does it differ from the prior art ?<BR/>3. Are there non-excluded physical integers which differ from the prior art ?<BR/>4. If not, does it contribute a new overall effect in a non-excluded area ?<BR/><BR/>-- essentially the approach used by Patent Office to analysing questions in this area in Decisions, going back a long time.<BR/><BR/>Unfortunately the Patent Office perhaps didn't clarify sufficiently clearly the distinction between 3 and 4 to the judge, who when he uses the word "contribution" doesn't always seem to distinguish between the two very clearly.<BR/><BR/>Aerotel (unfortunately, IMO) managed to persuade the judge that they were claiming new physical *hardware* in their "special exchanges", and thus a new physical network structure by incorporating them. I think a competent barrister from Telco would have ripped that to ribbons in short order; but so it goes.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1162204864348658252006-10-30T10:41:00.000+00:002006-10-30T10:41:00.000+00:00There is a discussion in para 28 about whether it ...There is a discussion in para 28 about whether it would be correct to describe Art.52(2) EPC as 'the Lord giveth and the Lord taketh away'. This is a minor corruption of Job 1:20-21:<BR/><BR/>Then Job arose, and rent his mantle, and shaved his head, and fell down upon the ground, and worshipped,<BR/>And said, Naked came I out of my mother's womb, and naked shall I return thither: the Lord gave, and the Lord hath taken away; blessed be the name of the Lord.Ilanahhttps://www.blogger.com/profile/04769375670713505896noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1162203799174884032006-10-30T10:23:00.000+00:002006-10-30T10:23:00.000+00:00Sensible input required!I've only read this judgem...Sensible input required!<BR/><BR/>I've only read this judgement through the once, so far, on Friday evening at that, but the four step test seems far from nifty, to me. In particular, how do you work out what the contribution is? Is it the features that are novel and inventive (like the CFPH "advance")? Not according to Jacob who says that you should be able to work out whether something is patentable just by looking at it, not by considering the other requirements. But then why does he refer to the contribution in Aerotel as being a "new" system?<BR/><BR/>Anyway, the important question I need answering is "Does the reasoning on the Aerotel patent open the way to patenting computer implemented business methods?"<BR/><BR/>Here's an example. I develop a new and inventive (in that the prior art does not suggest it) business method. To implement the business method, I need to create a new computer system (even though that computer system is trivial once the business method is developed). That new system could be as simple as adding an additional server programmed to implement the business method to the Internet. I have contributed a new computer system to the art, which is clearly not a business method, and is clearly technical. <BR/><BR/>I have an invention because of the new system aspect. That invention is new and inventive because of the business method aspect. Therefore, according to Jacob in para. 53, I can have a patent.<BR/><BR/>What is wrong with this picture? Admittedly the Macrossan part of the reasoning (para. 63 and 73) implies this is not sufficient to get a patent, but why was it sufficient for Aerotel?<BR/><BR/>To me, if Macrossan had chosen to argue his case by drawing a picture of the Internet and then adding a new server on to it, he would have persuaded Jacob he had contributed an invention!Geoffhttps://www.blogger.com/profile/12424257512957515766noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1162203265633654912006-10-30T10:14:00.000+00:002006-10-30T10:14:00.000+00:00I missed Jacob LJ's use of Job - can you point me ...I missed Jacob LJ's use of Job - can you point me to a paragraph?Anonymousnoreply@blogger.com