Wednesday whimsies 2

CAT = computer assisted technology,
 and we're here to assist ...
Get involved 1. Our reader Marcin tells us that his ambition is to be a patent attorney and that right now he is trying to get his head round software patenting, seeking to understand the differences between US and Europe in the wake of the US Supreme Court ruling in Alice Corp v CLS Bank International [on which see this guest Katpost from Nick Transier here], He refers to the subject matter exclusion provisions of Article 52 of the European Patent Convention (which include "schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers") and asks:
"Is it true that in Europe non-technical elements cannot contribute to novelty and inventive step, whereas in the US they can?"
Disallowing a simple "yes" or "no", this Kat invites readers to post their most succinct and helpful responses. Given that this subject involves patents and that readers may wish to comment on each others' comments, he asks anyone who does post an answer but does not want to be identified by name if they would please use a pseudonym for ease of reference. Thanks!

Get involved 2. Another reader, Geoff Quelch, is studying law at the University of Denver, Colorado. He is writing a paper comparing software patent law in terms of US post-Alice [on which see the item above, if you haven't already] and European law and practice. The only works that cover European software patent law that are immediately available to Geoff date from 1995 and 1999 respectively, which is pretty prehistoric as leading edge legal texts go. He therefore asks readers if they can recommend any good textbooks. reference works or other secondary sources, preferably in the English language. This Kat has spent too much time reading primary sources and finds it hard to make objective recommendations, so he hopes that readers will be able to answer Geoff's request.

Get involved 3. Turning now to snowy Northern climes, Anna Klimovich (a student at Stockholm University) comes with a request for help of a fairly specialised nature.  Anna needs as many readers as possible to participate in her online survey on intelligent adaptive user interfaces in patent search and retrieval tools [says Merpel, if you haven't the faintest idea what this is all about, the survey's not for you; feel free to skip to the next item!].  By way of explanation, the survey website reads as follows:
Evolving user interfaces and information searching
Adaptive user interfaces in patent search and retrieval tools
Researcher: Anna Klimovich
Master Thesis
Department of Computer and Systems Sciences

This survey aims at gathering the necessary data to evaluate the suitability of intelligent adaptive user interfaces for public patent search and retrieval tools. The survey is independent and is not sponsored by the European Patent Office. Any suggestions presented in this survey originate solely from the researcher and represent neither those of the Stockholm Universiy nor of the European Patent Office. No expectations as to the development of the tools provided by the European Patent Office can be derived from the suggestions or questions in this survey.

Thank you!

Your participation is greatly appreciated. Your input can contribute greatly to the development of more efficient and usable user interfaces. Especially those user interfaces can improve the interaction with less experienced users or those who have diffibulties to use tradiotional search interfaces.

The project

An intelligent adaptive user interface is an interface that has an ability to provide the right information to the right person in the right format at the right time.  Adaptive interfaces seek to predict what features are desirable and customisable by users.
This study aims at defining users profiles, task profiles and the corresponding preferences for the user interface. Based on those profiles and preferences it is intended to propose adaptation strategies that possibly could lead to an intelligent adaptive interface.

The survey

The questions of the survey are intended to enable the determination of the above profiles and preferences if relevant. It is expected that you will need maximum about 20 minutes to complete the survey.


The record of your survey responses does not contain any identifying information about you.
Says the IPKat, please help Anna if you can -- particularly if you are an Espacenet user. It's all for a good cause.  You can access the survey by clicking here. Responses should be made by not later than the middle of April [this causes Merpel no end of puzzlement, since April has an even number of days. When exactly is the middle? Is it a point of time? Indeed, is there even such a thing as a point of time ...?].
Wednesday whimsies 2 Wednesday whimsies 2 Reviewed by Jeremy on Wednesday, March 11, 2015 Rating: 5


  1. Objective and Viewpoint NeutralWednesday 11 March 2015 at 12:59:00 GMT

    My own "whimsey:"

    Your directions as to "In the event that there has been no software malfunction and that your post has been rejected, if you want to appeal against this decision please contact either (i) Dr Danny Friedmann of the IP Dragon weblog ( or (ii) Professor Dennis Crouch of the Patently-O weblog ( Danny or Dennis will review your complaint, preserving the confidentiality of your identity and will let both you and us know whether your complaint is justified." are puzzling, as Patently-O has one of the worst reputations for objectively reviewing ad hominem attacks.

    If that's your model, I have to wonder what results you hope to achieve.

    Sign me: Objective and Viewpoint Neutral

  2. A day is much too low a resolution to define the middle of the month. The Chronon, the theoretical quantum of time has a value of 6.3x10**-24 s. The shorter Planck time lasts for 5.4x10**-44s. Either of these units can be considered as points of time and serve to determine the middle of the month irrespective of whether April consists of odd or even number of either.

  3. I'll bite.

    Marcin, im Grossen und Ganzen (by and large) YES.

    Under the EPC, only a combination of technical features that solves an objective technical problem is fit for a patent. Loads of things can be new and not obvious, like some new and clever book plot or pattern grooved in the surface of a coffee mug to amuse the brain when idly tracking the groove with a fingertip. But the novelty and the cleverness in these things is not in a technical field so doesn't contribute to patentability in Europe.

    In the USA the statute lacks the exclusions of EPC Art 52, so people think it is not restricted to things "technical". But it is limited to the "useful arts" whatever they are. The Supreme Court has been careful not to issue a blanket exclusion of all business processes as outside the ambit of the useful arts. But the Supreme Court has recently decided that something more than a mere "abstract idea" is needed before a patent can issue.

  4. When lecturing on this topic I often ask the audience if they would be shocked by the instance of an inventor keeping a mouse alive for more than sixty years. I also ask if they would be even more shocked if I were to tell them that the mouse outlived the inventor. After some moments of letting the scariness permeate, I then ask them if they would be assuaged if I were to tell them that the inventor was Walt Disney

  5. Not strictly an answer to either question, but I would suggest (if you haven't already) reading the Aerotel / Macrossan Court of Appeal decision more or less in full.

    It is now 8 years old and far from the Court of Appeal's final word on the matter, but it still stands in England, and the reasoning is clear and accessible (more so than many more recent cases). Of course, some (e.g. EPO boards of appeal, for example) do not agree with the decision, and it is fair to say that it causes some practical difficulties. Keeping that in mind, it's still worth reading.

    For the other side of the argument (i.e. why the EPO is right and the Court of Appeal is wrong), "Patent Law for Computer Scientists" (Closa, Gardiner, Giemsa, Machek) has a good chapter 1, which gives a clear explanation of the EPO approach. Chapters 2 onwards in my opinion are less good, failing in their stated aim of enhancing the explanation through "real world" examples.

  6. Can Freddie say what is the "argument" he tells us there are two sidesto? I will assume, till he says otherwise, that it is whether to address the contribution under Art 52 or 54/6 EPC.

    That particular argument is still hot, not only in Europe but also in the USA, but there the terminology is different. When considering eligibility under 35 USC 101, before you go on to look at patentability over the art, do you take account of what purports to be the contribution?

    So thanks to Freddie for reminding us about the Aerotel logic, still topical.

  7. For the status quo of EPO treatment of computer-implemented inventions, see S.V. Steinbrener, "The European Patent Convention", in G.A. Stobbs (ed.): "Software Patents Worldwide", Kluwer Law International, 2014 (distributed in North America by Aspen Publishers, Inc).

  8. MaxDrei, yes, more or less that is the "argument" I am referring to. Whether the contribution is addressed, and prior art taken into account, when considering Art. 52 or Art 54/56 is in practical terms the key difference.

    I would also point to the apparent disagreement as to the actual meaning of the list of excluded subject matter in Art 52 - is it merely a set of examples of things that aren't in "fields of technology", or a firm list of things which are consciously and specifically excluded?

    Of course there are many more than two sides to the debate... para 26 of Aerotel/Macrossan sets out at least 5 different approaches found in the case law at the time.

  9. The timing couldn't be better - I have just read of the UK IPO's decision in Bluecava Inc's application. In the light of that, I might add to my reading list the 26 page letter dated 7th October 2014 from Hepworth Browne on behalf of the Applicant in that case.

    Sadly it's not online - you'll have to file form 23 and invest five pounds to receive a copy. Nonetheless it promises to be a good read. Quotations in the UK IPO decision include:

    "the Aerotel decision is a shambles that remains inconsistent with the EPC and thus in contravention to section 130(7) of the Act"

    "until the UKIPO get to grips with both the underlying intent and irreconcilable frailties of Aerotel, the system of effective patent law is compromised..."

    Sadly these protestations didn't do Bluecava Inc much good, since the UK IPO is bound by UK Courts whether it agrees with them or not, or thinks the EPO does it better. In that respect it is also worth noting that the Aerotel / Macrossan test was in fact originally a proposal from UK IPO's counsel which was accepted by the Court.

  10. For this US practitioner, it should be noted that not only do we not have a technical arts test (our Useful Arts being broader), we also do not have the "per se" and "as such" limitations, which have always struck me as a bit odd, since machine components - as such and per se are fully eligible with nary a second thought.

  11. I feel Alice v Cls would pass the further technical effect eligibility req under Article 52, would it then fail under novelty or inventive step at EPO level?

  12. Frddie motivated me to read Aerotel. One of the joys of reading it is to encounter in para 125 Sedley's dry observation in the Dyson case that "people do not make inventions in a vacuum".

    But see para 121 et seq for the extracts from the charming judgement of Peter Prescott in CFPH, complete with his likening of a program for a computer with a "little man" sitting at a "control panel". I think they might help the commenter immediately above.

    You have to imagine that the Little Man is executing the "rules" recited in the patent claim in view.

    If the rules are controlling a process of making something, the claim is eligible. If the rules are for running a business, they are not. The EPO's Boards of Appeal are intensively exploring the grey area in between, mapping it with ever-greater precision.

  13. The imagining of "a little man" is expressly the wrong way to look at this.

    There is technical invention precisely because there is NO little man there.

  14. So do you think Alice would fail Art 52?

  15. Anon at 16:49 asks if the claim in Alice would fail at the Art 52 EPC eligibility hurdle. Let's assume the claim is to a computer-implemented method. I think it would fail in England but at the EPO would get over the low "technical character" hurdle.

    Wouldn't do it any good though, for it would then go down on Art 54+56 patentability. What England filters out as ineligible Munich strikes down as unpatentable.

  16. Hi MaxDrei, I would have to agree that It would pass Art 52 but fail at 54/56. Having looked at both US and Europe, i feel the only difference is in the patentable subject matter (s101 + Art 52) and the non-contribution of non-technical elements to both novelty (art 54 + s102) and inventive step (art 56 + s103). These are only differences I can see. Would you agree - looking at journals they seem to only labour on patentable subject matter and inventive step being the diff and do not discuss novelty? Why?

  17. Marcin, why in this area the paucity of caselaw on novelty? I will suggest one thing for you to chew on. Perhaps others will supply more.

    Novelty is (unlike eligibility and obviousness) legally a relatively black and white issue. As a practical matter, therefore, it is usually quite easy, with a deft tweak of the claim, to defeat novelty attacks. So, novelty objections usually don't survive long enough to get as far as a reported Decision. If you are the Patent Office and want to see off a crap claim, you might then favour an eligibility or obviousnes attack over a novelty attack that is painstaking to perfect, but easily got around by the Applicant.

    And, in the EPO, why have interminable argument about whether that which confers novelty is or is not "technical"? Cut to the chase instead. Blow away the bad claim with the full blast of an obviousness objection that Applicant is not going to be able to finesse around.

    Course, in the USA it's different (as ever). There, obviousness objections are harder to drive through to a conclusion. Applicant fights them, often with ridiculous evidence of comercial success (that has no nexus with the invention but proving that is hard). Hence the current emphasis in the USA on the eligibility tool, to cut through all that attorney BS and get rid of bad claims.


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