tag:blogger.com,1999:blog-5574479.post5779878429226678313..comments2024-03-19T06:27:47.905+00:00Comments on The IPKat: On the threshold of a dream? Patents and computer-implemented business methods in EuropeVerónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger4125tag:blogger.com,1999:blog-5574479.post-23753613268652334872012-07-02T01:07:58.331+01:002012-07-02T01:07:58.331+01:00The point is that failing to consider the "wh...The point is that failing to consider the "what" causes a subjective approach to the assessment of mixed inventions by obscuring the point when an invention takes on patentable merit. Furthermore, just considering the question of “how” leads to some seemingly obtuse results. <br /> <br />Perhaps it is worth recalling one unusually clear statement in the decision in T0154/04-Duns Application [section 10]), namely that “the examination whether there is invention within the meaning of Art. 52(1) to (3) EPC should hence be strictly separated from and not mixed up with the other three patentability requirements... This distinction abstracts the concept of “invention” as a general and absolute requirement from the relative criteria of novelty and inventive step, which in the popular sense are understood to be the attributes of any invention... <i>Decisive for the presence of a (potentially patentable) invention is the inherent character of the claimed subject-matter”</i>. <br /> <br />Unfortunately, a continuing desire to embrace the contribution approach (at least at first instance) means that the absolute requirements of “invention” and “inventive step” are frequently and inappropriately combined. This combination gives rise to subjectivity in the legal assessment. Moreover, the issue about when something is actually “technical” remains open. In fact, the problem is that the assessment of “contribution” of individual isolated features is easy and neither: i) requires the more difficult and fundamental assessment of the total interaction achieved between claim features; nor ii) an understanding of what the “technical” effect is or otherwise achieves in the real world. To provide an exemplary context of the problem, is a method that modifies the operation of a gaming machine based on measurement of some commercial parameter “technical”? OK, the response will probably be "it depends", so please accept that the example is used to make the point and provoke some thought.Bruce Dearlingnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-51294501577284414912012-06-27T16:51:55.113+01:002012-06-27T16:51:55.113+01:00T1543/06-Gameaccount
states that where the "...T1543/06-Gameaccount<br /><br />states that where the "what" is excluded:<br /><br />"The Board concludes <br />that inventive step can be based only on the particular<br />manner of implementation. To this end it is therefore <br />necessary to ask <b>how</b> the per se excluded subject-matter <br />(e.g. a game or business method) is implemented"<br /><br />i.e it considered "how" as did the decisions above.<br /><br />If the "what" is technical then it is relevant whilst if it is non-technical only "how" is considered.<br /><br />Now in practice there is a big variation between examiners and members of Boards of Appeal as to which features they consider to be non-technical aims and which they consider to be the implementation of those aims but Im not sure there is any difference in principle.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-7906809023792278222012-06-26T09:42:27.139+01:002012-06-26T09:42:27.139+01:00Both of these claimed inventions were initially re...Both of these claimed inventions were initially refused by the respective examining divisions. Those refusals were overturned on appeal.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-71750133328504705312012-06-24T19:12:50.306+01:002012-06-24T19:12:50.306+01:00I hope this item will produce a long thread of cle...I hope this item will produce a long thread of clear contributions. Anxious to get it rolling, even before I have read the cited Decisions, I offer the following thoughts:<br /><br />1. I would not worry much about what certain senior members of DG1 think, about whether any particular decision of DG3 is or is not "barking". Given that it is DG3's job to tell EPO Examiners when they go wrong, I would expect nothing else from DG1 by way of reaction to a remittal. Bear in mind that DG1 folks have zero experience of deciding obviousness, except under EPO-PSA? They, unlike many members of DG3, have no idea how unsatisfactory is the treatment of obviousness in every other Patent Office. <br /><br />2. Some folks still lament the absence of a definition of "technical". One might just as well lament the absence of a definition of "obvious". When we are down to bedrock terms, there is no more mining to be done. And we only need to debate "technical" in those <1% of cases which are pushing the CII patentability envelope. <br /><br />3. Of course, CII cases on the edge of patentability will survive or not depending on the outcome of a "Technical Y/N" debate. So, debating skill will be decisive. But in a 50:50 case, the outcome will alwys inevitably depend on rhetorical skills (thank goodness).<br /><br />4. Those who have known nothing else but EPO-PSA forget how, when it is absent, there is no framework around which to structure the debate on obviousness (Pozzoli steps only march you as far as the Start Line). Try debating the patentability of the Blue Squash Ball with and without EPO-PSA, to see what I mean.<br /><br />5. It is only at the fuzzy edge of CII where EPO-PSA comes under passionate attack. The proponents of financial hedging and tax scheming inventions can get quite worked up about it, I imagine. One should not forget how EPO-PSA has, in all other fields, reduced obviousness to the last 30 minutes of most oral proceedings at the EPO.<br /><br />6. My clients are real rather than financial engineers. I'm comfortable with the DG3 evolutionary approach to "technical". I like to think that skilled EPO practioners are becoming ever better at 1. predicting the outcome and 2. drafting to get as much as possible inside the DG3 patentabiliuty envelope. If you file at the EPO without giving such a person any chance to get insiude the envelope, you have only yourself to blame, when DG3 turns you down.MaxDreinoreply@blogger.com