Author Archive

Viewing two video clips simultaneously: technical

The European Patent Office granted a European software patent for a method for quickly and easily viewing two different video clips simultaneously. Here are the practical takeaways from the decision T 1648/13 (Video editing/CORE WIRELESS) of 12.11.2018 of Technical Board of Appeal 3.5.07:

Key takeaways

The implementation of a graphical user interface (GUI) includes non-technical aspects of the GUI layout but also technical aspects regarding user-computer interaction.

Influencing the way a user interacts with a computer to perform specific operations may be considered a technical means solving a technical problem.

The invention

This patent application is about video editing and concerns a method for a user to quickly and easily view two different video clips simultaneously, and in particular for selecting a particular video frame for use in clipping and/or combining two video clips e.g. by cross-fading or wiping. According to the patent application, the invention is particularly advantageous when used in devices with small screens. To match two video clips (“video streams” in the claims), the frames of one video clip are arranged along a vertical timeline and the frames of the other video clip along a horizontal timeline. Either video clip can be moved along its timeline by moving an input device to the left and right, for the video arranged horizontally, and up and down, for that arranged vertically.

Fig. 2 of WO 2006/064358 A1
Fig. 2 of WO 2006/064358 A1

  • Claim 1 (auxiliary request)

Is it patentable?

According to the Board, the implementation of a graphical user interface (GUI) includes non-technical aspects of the GUI layout but also technical aspects regarding user-computer interaction. In the present case, displaying frames of video streams may provide a technical contribution, particularly in light of the features (c) “in response to user input, the frames displayed in the overlapping image area are changed by moving the first video stream left/right and the second video stream up/down”; and (d) “the frames displayed in the overlapping image area are selected for creating a single video stream by transitioning between the first and the second video streams”:

6.3 In the present case, amendments (c) and (d) introduced specific features of a user-interface for video editing in a computer which are technical features going beyond a non-technical method for presentation of information. Unlike claim 1 of the main request, the method of claim 1 of the first auxiliary request can no longer be seen as concerning mere presentation of information. The consideration of which features of the claimed invention make a technical contribution has hence to be reviewed.

6.4 In the Board’s opinion, the display of the frames of the video streams vertically and horizontally makes a technical contribution in combination with the other features of the claimed invention, since it influences the way the user interacts with the computer to perform a video-editing operation for combining two video streams by selecting a frame from each video stream.

In conclusion, the Board ruled that particularly features (c) and (d) have to be taken into account when it comes to the assessment of inventive step. Then, in light of the cited prior art documents, the Board further ruled that the subject-matter of claim 1 according to the auxiliary request involves an inventive step.

More information

You can read the whole decision here: T 1648/13 (Video editing/CORE WIRELESS) of 12.11.2018

Checking consistency and completeness of selection conditions: technical

The European Patent Office considered a method for checking consistency and completeness of selection conditions to have at least some technical features. Here are the practical takeaways from the decision T 2330/13 (Checking selection conditions/SAP) of 9.5.2018 of Technical Board of Appeal 3.5.07:

Key takeaways

Even though a claimed task is of a non-technical nature, the specific claimed calculation steps when performed by parallel processing, may contribute to the technical character of an invention.

The invention

This patent application relates to a method for efficiently checking the consistency and completeness of selection conditions for components of a configurable product. It can be used, for instance, for the purpose of assembling an automobile model from a catalogue of parts according to a particular set of design specifications, in order to ensure that the combinations of parts are correct. According to the description, the method is significantly faster than prior-art methods because it uses bit operations to evaluate the selection conditions.

Fig. 1 of EP 1 519 284 A1
Fig. 1 of EP 1 519 284 A1

  • Claim 1 (auxiliary request)

Is it patentable?

According to the Board, the claimed invention unquestionably contains elements of a mathematical / logical nature. In particular, claim 1 of the (amended) main request specifies that the received selection and restriction conditions comprise defined logical operations which are applied to bit sub-matrices in order to form bit strings and that bit strings are combined using logical AND, OR and NOT operations.

5.3 According to established case law, it is legitimate to have a mix of technical and non-technical features (i.e. features relating to non-inventions within the meaning of Article 52(2) EPC) in a claim, even if the non-technical features form a dominating part (T 641/00, OJ EPO 2003, 352, reasons 4). Inventive step in so-called mixed-type inventions is to be assessed by taking account of all those elements of the claimed subject-matter which contribute to its technical character (see T 641/00, supra, reasons 6 and 7). Features which would, taken in isolation, belong to the matters excluded from patentability under Article 52(2) EPC may nonetheless contribute to the technical character of the claimed invention (G 3/08, OJ EPO 2011, 10, reasons 12.2.2). However, purely non-technical elements which do not interact with the technical subject-matter of the claim for solving a technical problem are ignored (see T 154/04, OJ EPO 2008, 46, reasons 5(F)).

5.8 In summary, even though the task performed by claim 1 is of a non-technical nature (see point 5.6 above), the specific claimed bit (sub-)matrices, bit strings and steps of the method, especially those of splitting the bit matrix, forming bit strings representing the selection and restriction conditions and determining inconsistent pairs of selection conditions when performed by parallel processing, do contribute to the technical character of the invention and should be taken into account when assessing inventive step. Similar conclusions apply to the other claims of the main request.

Thus, the Board disagrees with the assessment of the examining division with respect to the technical charachter of a plurality of the claimed method steps. Moreover, said features were also found not to be notorious, and thereore have to be considered in the assessment of inventive step:

7. In the Board’s view, the features of claim 1 of the main request contributing to the technical character of the claimed subject-matter which were listed above are not notorious. Furthermore, it follows from the technical-character assessment above that the claimed method cannot be seen as corresponding to an obvious “human approach”, as argued in decision T 1954/08. Unlike the binary map in that case, the bit (sub-)matrices and bit strings of the present invention are not merely used to store “flagged information”, but instead play an important role in the processing steps which are specifically adapted to use those data structures for the efficient parallel evaluation of selection conditions in a computer.

Thus, the Board remitted the case back to the first instance examining division for re-examination of inventive step.

More information

You can read the whole decision here: T 2330/13 (Checking selection conditions/SAP) of 9.5.2018

Server load balancing based on mathematical calculations: technical

The European Patent Office granted a software patent for a server load balancing technique based on mathematical calculations. Here are the practical takeaways from the decision T 0318/10 (Load Distribution/CLUB IT) of 2.9.2014 of Technical Board of Appeal 3.5.06: 

Key takeaways

Improving the resource consumption in a server is a technical effect

A basic difference between a mathematical method and a technical process can be seen in the fact that a mathematical method is carried out on numbers and provides a result also in numerical form, the mathematical method being only an abstract concept prescribing how to operate on the numbers and producing no direct technical result as such. In contrast thereto, if a mathematical method (in the present case the optimisation function) is used in a technical process (in the present case assigning a server from among a plurality of servers to process a client request), that process is carried out on a physical entity by some technical means implementing the method and provides as its result a certain change in that entity.

The invention

This patent application generally relates to server load balancing, i.e. to a method of load distribution to assign a server from multiple network-connected servers for the execution of a client’s processing request. The load distribution function can be installed on any server in the network.

Fig. 1 of EP 1 696 324
Fig. 1 of EP 1 696 324

  • Claim 1 (main request)

Is it patentable?

In this case, the load distribution function was defined by mathematical formulae and thus the question to be decided was essentially whether such a mathematical optimization was technical:

The board does not agree with the appealed decision that the mathematical formulation of the optimisation function used in a load distribution method in a computer network is non-technical, or, put another way, without technical effects. As stated in T 208/84 (Reasons, point 5) (“Computer-related invention/VICOM”; see OJ EPO 1987, 14), a basic difference between a mathematical method and a technical process can be seen in the fact that a mathematical method is carried out on numbers and provides a result also in numerical form, the mathematical method being only an abstract concept prescribing how to operate on the numbers and producing no direct technical result as such. In contrast thereto, if a mathematical method (in the present case the optimisation function) is used in a technical process (in the present case assigning a server from among a plurality of servers to process a client request), that process is carried out on a physical entity by some technical means implementing the method and provides as its result a certain change in that entity. In the present case the optimisation function as defined by claim 1 results in a change in the resource consumption of the server system which is a technical effect.

Since none of the prior art on record provided a hint towards the claimed distance calculation and process request allocation techniques, the first instance rejection was lifted by the Board and a patent was granted.

More information

You can read the whole decision here: T 0318/10 (Load Distribution/CLUB IT) of 2.9.2014

EUROPEAN SOFTWARE PATENTS March 2019 updates

March came with seven new decisions in the EUROPEAN SOFTWARE PATENTS knowledge base relating to artificial intelligence, computer simulations, information modelling and Internet search engines:

Software patents for artificial intelligence?

Artificial intelligence is undoubtedly one of the hottest topics in tech these days. So far, there are only few decisions of the EPO Boards of Appeal dealing specifically with AI.

But some questions have been decided already: According to one Board, the question whether two text documents belong to the same class of documents in respect of their textual content is non-technical. Similarly, classifying data records for a non-technical purpose (e.g. for billing) was considered to be a non-technical issue.

(more…)

Simulating pedestrian crowd movement: to be decided by the Enlarged Board of Appeal

The Technical Board of Appeal 3.5.07 is uncertain whether a method of modelling pedestrian crowd movement in an environment and using the results for designing a building structure is technical or not. Here are the practical takeaways from the decision T 0489/14 (Pedestrian simulation/CONNOR) of 22.2.2019:

Key takeaways

According to earlier case law referring to the simulation of an electronic circuit, a computer-implemented method has technical character if the method is functionally limited to a technical purpose. However, in the present decision, the Technical Board of Appeal is uncertain whether the earlier reasoning is correct since the claimed subject-matter allegedly lacks a link to the physical reality.

Hence, the Board formulated three referral questions to the Enlarged Board of Appeal (the highest judicial entity in the European patent system) asking it to decide essentially whether the simulation of a technical system has to be excluded from patent protection or not.

The invention

The patent application underlying this case concerns the modelling of pedestrian movement, which could be used to help design or modify a venue (building structures like houses or train stations). According to the applicant, this provides a more accurate and realistic simulation of pedestrian crowds in real-world situations, which could not be adequately modelled by conventional simulators. The invention is said to be based on the insight that human interaction could be expressed and modelled in the same way as physical interactions.

Fig. 2 of WO 22004/023347 A2
Fig. 2 of WO 22004/023347 A2

  • Claim 1 (main request)

  • Claim 1 (auxiliary request IV)

Is it patentable?

The EPO’s first instance examining division rejected the patent application by arguing that a simulation model is non-technical and that its implementation on a computer is obvious. In the appeal, the applicant argued in a nutshell that the method steps referring to the simulation algorithm are indeed technical because they relate to physical parameters (“humans cannot walk through a wall”). Moreover, the simulation according to the invention would have multiple similarities to the simulation of an electronic circuit which was considered technical in T 1227/05:

The application concerned modelling pedestrian movement, which could be used to help design or modify a venue. It sought a more accurate and realistic simulation of pedestrian crowds in real-world situations, which could not be adequately modelled by conventional simulators. The application was based, at least in part, on the insight that human interaction could be expressed and modelled in the same way as physical interactions.

In claim 1 of the main request, which was now directed to a method of modelling pedestrian crowd movement in an environment by means of simulation, the method steps contributed to the technical character of the invention in two ways. First, the method steps were themselves technical features, as they related to physical parameters which could be expressed in terms of physical quantities and involved applying physical laws of motion and considerations of cost or work. Second, they contributed to the technical character of the invention by virtue of their interaction with the computer. The method of claim 1 produced a technical effect in the form of a more accurate simulation of crowd movement. Following decision T 1227/05, modelling pedestrian crowd movement in an environment constituted an adequately defined technical purpose for a computer-implemented method. The claimed method yielded accurate and repeatable results no different from those produced by a method of modelling an electron using a similar numerical method. Moreover, the claimed simulation method was no more suited to being carried out mentally than the simulation method considered in decision T 1227/05.

According to the applicant, particularly claim 1 of auxiliary request IV would help clarify that a technical effect outside the computer is produced:

The third, fourth and fifth auxiliary requests helped clarify the effect outside the computer and emphasised that the process was one which could not be performed simply with the help of pencil and paper.

The board in case T 1227/05 had adopted a correct approach. It had recognised the importance of simulations and had understood the practical issues in claiming them. This approach had been followed in decision T 625/11 of 19 January 2017.

How the EPO examines software patentsBy the way, if you are interested in a deeper look into how the European Patent Office examines software-related inventions, this 30-minute video gives a concise overview of the “two hurdle” approach with lots of examples.

However, the Board in charge of this appeal expresses concerns about the correctness of T 1227/05 and raises doubts whether the invention underlying T 1227/05 produces a technical effect sufficient to constitute patent-eligibility:

11. In the Board’s view, a technical effect requires, at a minimum, a direct link with physical reality, such as a change in or a measurement of a physical entity. Such a link is not present where, for example, the parabolic trajectory followed by a hypothetical object under the influence of gravity is calculated. Nor can the Board detect such a direct link in the process of calculating the trajectories of hypothetical pedestrians as they move through a modelled environment, which is what is claimed here. In fact, the environment being modelled may not exist and may never exist. And the simulation could be run to support purely theoretical scientific investigations, or it could be used to simulate the movement of pedestrians through the virtual world of a video game.

15. In sum, the Board agrees with the appellant that decision T 1227/05 supports his case. However, the Board is not fully convinced by the decision’s reasoning. Its doubts are twofold.

First, although a computer-implemented simulation of a circuit or environment is a tool that can perform a function “typical of modern engineering work”, it assists the engineer only in the cognitive process of verifying the design of the circuit or environment, i.e. of studying the behaviour of the virtual circuit or environment designed. The circuit or environment, when realised, may be a technical object, but the cognitive process of theoretically verifying its design appears to be fundamentally non-technical.

Second, the decision [editor’s note: T 1227/05] appears to rely on the greater speed of the computer-implemented method as an argument for finding technicality. But any algorithmically specified procedure that can be carried out mentally can be carried out more quickly if implemented on a computer, and it is not the case that the implementation of a non-technical method on a computer necessarily results in a process providing a technical contribution going beyond its computer implementation (see e.g. decision T 1670/07 of 11 July 2013, reasons 9).

The Board applies the same line of argumentation with respect to claim 1 of the fourth auxiliary request, which explicitly relates to a process for designing a building structure:

This amendment limits the claimed computer-implemented simulation to its use in a method of design. Since decision T 1227/05 essentially derives the technicality of a computer-implemented simulation from its significance for modern product development processes, this limitation arguably strengthens the appellant’s case. The amendment does not, however, change the Board’s present position that the claimed computer-implemented simulation does not contribute to a technical effect, as a direct link with physical reality is still absent.

Further, the Board recognizes the (economic) importance of computer-implemented numerical simulations, but is hesitant to base its decision on such considerations:

There is no doubt that the significance of numerical development tools has increased even more since case T 1227/05 was decided, yet the Board is hesitant to base its decision on policy considerations relating to the appropriate scope of patent protection that have not been expressed by the legislator and have in fact arisen only since the relevant provisions of the EPC were enacted (the Diplomatic Conference for the revision of the EPC in 2000 not having materially changed them). The Board is aware that the legislator deliberately refrained from defining the terms “technical” and “technology” in order not to preclude adequate protection being available for the results of future developments in fields of research which the legislator could not foresee (cf. decision G 2/07, reasons 6.4.2.1), but it sees a difference between the emergence of a new field of innovation and a change in the perceived significance of an existing field.

As a result, the Technical Board of Appeal formulated three questions to be referred to the Enlarged Board of Appeal and consequently postponed the decision:

“In the assessment of inventive step, can the computer-implemented simulation of a technical system or process solve a technical problem by producing a technical effect which goes beyond the simulation’s implementation on a computer, if the computer-implemented simulation is claimed as such?”

“If the answer to the first question is yes, what are the relevant criteria for assessing whether a computer-implemented simulation claimed as such solves a technical problem? In particular, is it a sufficient condition that the simulation is based, at least in part, on technical principles underlying the simulated system or process?”

“What are the answers to the first and second questions if the computer-implemented simulation is claimed as part of a design process, in particular for verifying a design?”

More information

You can read the whole decision here: T 0489/14 (Pedestrian simulation/CONNOR) of 22.2.2019.

This case has also been discussed on The IPKat, the Kluwer Patent Blog and Lexology.

Improving Internet search results: probably technical if reliably achieved

The European Patent Office refused to grant a software patent for an Internet search engine that improves the quality of the search results. Here are the practical takeaways from the decision T 1849/17 (Search engine with user feedback/PINTEREST) of 12.2.2019 of Technical Board of Appeal 3.5.06:

Key takeaways

Producing relevant search results quicker (or higher up on the list of results) and thus reducing the time until a user finds a “hit” in the search results may be a technical effect (left open in this decision).

The invention

The application relates to Internet search engines and concerns the problem of improving the perceived quality of the search results. More specifically, the application addresses the problem of making search results more “relevant” for the user. In prior art solutions, discussed in the application, the relevance of a document was assessed on the basis of the content of that document, of links between web pages or the feedback of test users. The invention essentially proposes to allow direct relevance feedback by users on individual results returned in response to a query.

Fig. 2 of EP 1 866 738
Fig. 2 of EP 1 866 738

The application proposes modeling the “probability” that a given document is relevant by “logistic regression” based on features of the document such as binary values each indicating the presence or absence of a feature) and “parameters” theta (effectively weights). This model is modified in view of the user feedback, especially the weighted parameter psiu per user u. Users’ feedback may be clustered, for instance in view of groups of users, or in order to detect and exclude search engine optimizers and spammers as outliers due to the “eccentricities in their parameters”. Additional parameters gammac determined per cluster c may be used to adapt the relevance model.

  • Claim 1 (main request)

Is it patentable?

First of all, the Board did not follow the applicant’s argument that the invention results in a faster and more efficient execution of a search:

The appellant argued that the claimed invention provided a “faster and more efficient execution of a search” and a “faster and more efficient ranking” of search results “on a computer”, which had to be considered as technical problems. In particular, the features of “discarding” previous user feedback (see claim 1, step a, last phrase) and that of eliminating “bias” by reference to a “group model” contributed to these effects (see the grounds of appeal, page 2, paragraph 5, and page 5, paragraph 2).

The board does not accept that the search itself executes any “faster” or “more efficient[ly]” due to the claimed relevance feedback, in particular because the search results are ranked after retrieval. Likewise, the ranking itself cannot be said to be determined any “faster” or “more efficient[ly]”, inter alia because the reference for this comparison is not indicated (“faster and more efficient” than what?).

On the one hand, the Board did not rule out that reducing the time until the user finds a hit in the search results may probably be considered technical. However, the Board did ultimately not decide on this question since the effect was found not to be reliably achieved:

Generally speaking, the invention is meant to produce relevant search results quicker (or higher up on the list of results) and thus to reduce the time until a user finds a “hit” in the search results. A relevance feedback that would reliably achieve this effect might save the user certain work, such as clicking through a long list of search results or having to repeat a search. The board does not wish to exclude the possibility that this may be considered as a technical effect by analogy to the ratio of T 0643/00, which is that providing a technical tool for efficient search, retrieval and evaluation of images may be considered a technical problem solved.

This issue need not be decided, however, because it cannot be established that the invention does indeed reliably and reproducibly have the alleged effect. Without knowing any details about how the relevance models are computed from (or based on) the user feedback and how the groups are determined, there is no basis for assessing even the probability that – or in which situations – the relevance feedback would actually be pertinent for an individual user.

The board therefore concludes that the claimed invention cannot be said to have the effect of saving the user work in the above-mentioned sense.

Another feature of the invention was that a previous user rating can be discarded. But also this did not convince the Board:

Likewise, it cannot be established that discarding a previous user rating has this effect. For instance, it is not guaranteed that the last user feedback on a particular document is relevant for the next search. The user might, for instance, in one instance search for holiday destinations and rate highly a document mentioning the country Turkey, and in the next instance look for Thanksgiving recipes and be interested in documents mentioning turkey, the bird.

Thus, the Board took the view that the mathematical model used to determine the relevance of the search results was just a mathematical method as such:

Hence, the board must conclude that the relevance formula (in step c of claim of the main request and auxiliary request 1 or step g of auxiliary 2) is just any mathematical formula – and, as such, excluded from patentability by analogy to the exclusion of Article 52(2)(a) and (3) EPC 1973 – which does not contribute to the technical character of the claimed invention and, therefore, cannot contribute to inventive step (see T 641/00, headnote 1).

Therefore, the Board ultimately decided that the patent application does not provide any technical contribution that could be the basis for an inventive step.

More information

You can read the whole decision here: T 1849/17 (Search engine with user feedback/PINTEREST) of 12.2.2019

Information modelling as such: non-technical

The European Patent Office refused to grant a software patent for analysing a physical system and providing an information model reflecting its properties. Here are the practical takeaways from the decision T 0049/99 (Information modelling/INTERNATIONAL COMPUTERS) of 5.3.2002 of Technical Board of Appeal 3.5.01:

Key takeaways

Catchword: “Information modelling is an intellectual activity and should be treated like any other human activity in a non-technical field, which is, as such, not an invention for the purposes of Article 52(1) EPC. Only the purposive use of information modelling in the context of a solution to a technical problem may contribute to the technical character of an invention.”

The invention

This European patent application essentially concerned a method for modelling a physical system in terms of abstract objects representing physical elements of the system and relationships between the objects. The preferred embodiment of the invention aimed at providing a single, comprehensive description of the equipment in a power system, including network topology, operational constraints and limits, telemetry and communication details. The claims, however, were not restricted to the specific power system.

Fig. 1 of EP 0 658 260
Fig. 1 of EP 0 658 260

  • Claim 1 (main request)

Is it patentable?

Claim 1 mainly concerned a method for analysing a physical system and providing an information model reflecting the essential properties of the physical system. Information modelling, however, was considered to be an intellectual activity and thus non-technical by the Board:

Information modelling is a formalized process carried out by a system engineer or a similar skilled person in a first stage of software development for systematically gathering data about the physical system to be modelled or simulated and to provide so to say a real world model of the system on paper. Although information modelling embodies useful concepts and methods in developing complex software systems, it is as such an intellectual activity having all traits typical for non-technical branches of knowledge and thus being closely analogous to the non-inventions listed under Article 52(2)(a) and (c) EPC.

Interestingly though, the Board noted that the situation might be different if information modelling was used “purposively” for solving a technical problem:

In examining inventive step, it should hence be treated like any other human activity in a non-technical field, which is, as such, not an invention for the purposes of Article 52(1) EPC. Only the purposive use of information modelling in the context of a solution to a technical problem, as e.g. is the case for the preferred embodiment relating to the control and management of technical processes in a power system, may contribute to the technical character of an invention.

However, this did not help in the present case since the claims were not restricted to particular technical use case:

The claimed invention, however, is not restricted to power systems; as expressly indicated in the description the invention may be applied to various types of systems, “large, complex systems” including manufacturing plants and other physical systems (see description, page 30, lines 10 ff.). Claim 1 uses the generic expression “physical system”, which is actually a term including any real world system, even business and administrative organisations.

In the light of the broad meaning of the expression “physical system”, information modelling in terms of the first part of claim 1 has to be construed as an abstract non-technical activity using abstract constructs like objects, types, attributes, and relationships.

Therefore, the Board ultimately decided that the patent application does not provide any technical contribution that could be the basis for an inventive step.

More information

You can read the whole decision here: T 0049/99 (Information modelling/INTERNATIONAL COMPUTERS) of 5.3.2002

Simulation methods serving an adequately defined technical purpose: technical

The European Patent Office decided that a computer-implemented method with mathematical steps for simulating the performance of a circuit subject to 1/f noise is technical. Here are the practical takeaways from the decision T 1227/05 (Circuit simulation I/Infineon Technologies) of 13.12.2006 of Technical Board of Appeal 3.5.01:

Key takeaways

Headnote I: “Simulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method functionally limited to that purpose (point 3.1).”

Headnote II: “Specific technical applications of computer-implemented simulation methods are themselves to be regarded as modern technical methods which form an essential part of the fabrication process and precede actual production, mostly as an intermediate step. In that light, such simulation methods cannot be denied a technical effect merely on the ground that they do not yet incorporate the physical end product (point 3.4.2).”

The invention

This European patent application aimed at simulating or modelling the performance of a circuit under the influence of a 1/f noise, i.e. a stochastic process with a frequency spectrum whose intensity is inversely proportional to a power beta of the frequency.

The solution is based on the notion that 1/f noise can be simulated by feeding suitable random numbers into the circuit model. The application derives the numbers from a Gaussian stochastic process BFBM (fractional Brownian motion as a function of time) whose derivative is known to have a 1/f spectrum. The BFBM process and its derivative are characterised in particular by a covariance function and a covariance matrix.

Fig. 1 of EP 1 257 904
Fig. 1 of EP 1 257 904

  • Claim 1 (main request)

Is it patentable?

First of all, the Board briefly touched on the first patentability hurdle (“patent-eligibility”), which is basically no issue at the EPO:

To be eligible for patent protection it is necessary and sufficient for the claimed method to have technical character (see e.g. T 930/05 – Modellieren eines Prozessnetzwerks/ XPERT, not published in OJ EPO). As the method according to independent claim 1 or 2 is computer-implemented, it uses technical means and by that very token has technical character, see in particular T 258/03 – Auction method/HITACHI (OJ EPO 2004, 575, Reasons 4.1 to 4.7) and T 914/02 – Core loading arrangement/GENERAL ELECTRIC (not published in OJ EPO, Reasons 2.3.4 to 2.3.6).

Then, the Board assessed which of the other features of the claim actually contributed to the technical character of the invention, since only those features can establish an inventive step according to the Comvik approach. With respect to the feature “simulation of a circuit subject to 1/f noise”, the Board came to a positive assessment:

Beyond its implementation, a procedural step may contribute to the technical character of a method only to the extent that it serves a technical purpose of the method.

The board is persuaded that simulation of a circuit subject to 1/f noise constitutes an adequately defined technical purpose for a computer-implemented method, provided that the method is functionally limited to that technical purpose.

However, the Board also emphasized that the technical purpose has to be made specific in the claim:

The metaspecification of an (undefined) technical purpose (simulation of a “technical system”, see original claim 4), on the other hand, could not be considered adequate, as the purpose of a claim in this context is not to quote the technical character requirement, but to identify clear features supported by the description which meet that requirement.

Besides that, the Board also made a more general remark on the patentability of computer-implemented simulation methods:

Specific technical applications of computer-implemented simulation methods are themselves to be regarded as modern technical methods which form an essential part of the fabrication process and precede actual production, mostly as an intermediate step. In view of this development it must be assumed that the outlay for implementing a technical product will increasingly shift to the numerical simulation phase, while final implementation of the simulation result in the actual manufacture of the product will entail no or only comparatively little extra innovation effort. In that light, such simulation methods cannot be denied a technical effect merely on the ground that they do not yet incorporate the physical end product.

Therefore, the Board ultimately decided that all features relevant to circuit simulation, including the steps expressed by formulae, contribute to the technical character of the simulation method and thus could potentially establish an inventive step. Since the question of inventive step itself had not been discussed before the Examining Division, the Board remitted the case back to first instance.

More information

You can read the whole decision here: T 1227/05 (Circuit simulation I/Infineon Technologies) of 13.12.2006

The decision’s finding that it is sufficient for a simulation method that the technical purpose be “adequately defined” and the claim limited to that purpose is questioned in T 1630/11, and even more in T 489/14 which even led to a referral to the Enlarged Board of Appeal.

CAD product data-model: non-technical

The European Patent Office refused to grant a software patent for a logical hierarchical data model for sharing product information across product families. Here are the practical takeaways from the decision T 0042/09 (Logical hierarchical data model/BOEING) of 10.3.2014 of Technical Board of Appeal 3.5.07:

Key takeaways

Information modelling is in principle a non-technical activity, and only a purposive use of information modelling in the context of a solution to a technical problem may contribute to the technical character of an invention.

CAD/CAM activities cannot qualify as such a purposive technical use.

The invention

This European patent application addressed the problem of modelling a “family” of products. Instead of providing a separate model for each variation of a product, a single “product data-model” is provided that captures the whole family. This product data-model models a generic product by means of a number of “logical component-usage” nodes. Each “logical component-usage” node essentially represents a logical component function and is connected, by means of a number of “component-usage” nodes, to respective “components” providing such function. The “component-usage” nodes thus represent configuration options for the “logical component-usage” node. By applying certain “applicability attributes”, at each “logical component-usage” node a choice is made from the possible “component-usages” and their corresponding “components”.

Fig. 2 of EP 1 357 486
Fig. 2 of EP 1 357 486

  • Claim 1 (main request)

Is it patentable?

First of all, the Board noted that, although the patent claim mentioned “designing” and “manufacturing” products, it did not actually include any steps in this regard:

Although claim 1 of the main request is directed to a “method of designing products using CAD and of manufacturing products using CAM”, it does not define any steps, let alone steps of designing products using CAD and of manufacturing products using CAM. Instead, claim 1 defines features of a “product data-model” without explaining its relation to a method of designing or manufacturing.

In this respect, the Board notes that the invention as disclosed in the application also rather appears to be concerned with the general use of a particular “product data-model” stored in the memory of a computer in unspecified activities related to CAD/CAM.

The actual subject-matter, namely the definition of an information model, was considered to be non-technical:

The features of claim 1 relating to the “product data-model” define an abstract information model. Indeed, these features are worded in abstract terms and make no reference to any concrete physical representation of the product data-model.

According to decision T 49/99 of 5 March 2002, reasons 7, information modelling is in principle a non-technical activity, and only a purposive use of information modelling in the context of a solution to a technical problem may contribute to the technical character of an invention. For the reasons given under point 2.32.3 , the Board considers that the claimed connection with CAD/CAM activities cannot qualify as such a purposive technical use. The product data-model does not enable, improve, or otherwise contribute to the solution of a concrete technical problem.

Therefore, the Board ultimately decided that the patent application does not provide any technical contribution that could be the basis for an inventive step.

More information

You can read the whole decision here: T 0042/09 (Logical hierarchical data model/BOEING) of 10.3.2014

Classifying and linking data records: non-technical

This is the second decision (read the first one here) cited by the EPO in the artificial intelligence-related section G-II, 3.3.1 of the revised Guidelines for Examination of the EPO, in force since November 2018. Here are the practical takeaways from the decision  T 1784/06 (Classification method/COMPTEL) of Technical Board of Appeal 3.5.01:

Key takeaways

The COMVIK approach also has to be applied when the subject-matter has to be assessed under Art. 56 EPC 1973.

Where an intrinsically non-technical solution sought to derive a technical character from the problem solved, the problem had to be technical.

The automatic classification of data records serves only the purpose of classifying the data records, without implying any technical use of the classification.

The invention

The invention relates to a method for classifying and selecting records, e.g. for selecting rating for telephone network or other telecommunications network event data.

Fig. 4 of EP 1 496 452
Fig. 4 of EP 1 496 452

  • Claim 1 (main request)

Is it patentable?

The Board ruled that the features of claim 1 that refer to the algorithmic details would not contribute to the technical character. The main reason is, according to the Board, that the claim is not limited to any technical application. Moreover, the description would only refer to the purpose of billing, which is not considered technical:

3.1.4 The application may disclose a robust algorithm which is immune to variations in the number of classes to be recognized. This may be a valuable mathematical property of the algorithm and would imply technical benefits when used for a technical purpose. However, claim 1 is not limited to any technical application of its classification method. According to the description, the data records are classified for the non-technical purpose of billing.

3.1.5 As the algorithm of claim 1 does not contribute to the technical character of the classification method, it does not enter into the examination for inventive step.

To argue patentability, the appellant outlined that the requirement of a technical problem when applying the problem-and-solution approach cannot be deduced from the regulations under the EPC. Moreover, the appellant pointed to several decisions where it was ruled that a non technical problem may have a technical solution:

2.3 Regarding the Board’s insistence an a technical problem when applying the problem-and-solution approach, the appellant disputes that such a requirement can be deduced from the EPC or introduced from its Implementing Regulations. The appellant refers inter alia to decision T 473/08 (by a different Board of Appeal) to point out that “a non-technical problem can have a technical solution“. However, there is no divergence, the Board agrees to the statement that a non-technical problem can have a technical solution. On the other hand, where an intrinsically non-technical solution (mathematical algorithm) seeks to derive a technical character from the problem solved, the problem must be technical. This is the point an which the present case hinges.

How the EPO examines software patentsBy the way, if you are interested in a deeper look into how the European Patent Office examines software-related inventions, this 30-minute video gives a concise overview of the “two hurdle” approach with lots of examples.

Furthermore, the appellant questioned whether the COMVIK approach could be applied to applications which have to be assessed under Art. 56 EPC 1973. Moreover, the appellant held the opinion that the claimed subject-matter has to be assessed as a whole when it comes to assessing inventive step. However, the Board argued that even before the COMVIK approach was established, non-technical features were considered as irrelevant for the assessment of inventive step:

2.1 […] Already before the Comvik decision, technically non-functional modifications were considered as irrelevant to inventive step (see e.g. T 72/95 dated 18 March 1998, point 5.4).

2.2 According to the appellant, claimed subject-matter as a whole should be examined for the presence of an inventive step once the subject-matter as a whole has been found to meet the technology criterion of Article 52(1)(2)(3) EPC. The appellant argues that Article 56
EPC 1973 should be applied independently of Article 52(1)(2)(3) EPC because Article 52(2) EPC has to be applied independently of Article 56 EPC 1973 […].

The Board does not accept such formal reasoning and points out that it is normal and often necessary for legal provisions to be in an asymmetric relationship or hierarchical dependency. For example, the novelty of a claim has to be examined independently of inventive
step considerations, whereas a finding of inventiveness presupposes a novelty examination. […]

In view of the above, the Board dismissed the appeal.

More information

You can read the whole decision here: T 1784/06 (Classification method/COMPTEL) of September 21, 2012