Archive | 2009, January | (3) posts

Swedish Court of Patent Appeals remits cases to the Swedish Patent Office for further prosecution

OMX Technology AB, who i.a. owns and runs the Stockholm Stock Exchange, filed Swedish patent application 0201756-4 on 10 June 2002
which subsequently was refused 12 March 2004 on the basis of lacking technical character and thereby being considered not to be regarded as an invention in accordance with 1 § PL, i.e. the Swedish Patent Act (cf. Article 52(2) and (3) EPC). The Swedish Patent Office (PRV) considered that the subject-matter defined in the patent application basically comprised an administrative method implemented on plurality of computers.

The invention defined in the application relates to a computer architecture for real time order matching in an automated stock exchange system. The gist of the architecture is that one computer handles the order matching, thereby controlling the processing of incoming orders, while a further computer executes computations considered more complex and stores the result in a memory accessible by the order matching computer. Allegedly, use of a second computer for computing data to be used in the order matching process, and a memory where the order matching computer can fetch data computed by the second computer, is novel and inventive in that the computational load resulting from real time operation is reduced.

EasyContact AB filed Swedish patent application 0203167-2 on 25 October 2002 which subsequently was refused 30 January 2004, also on the basis of lacking technical character and thereby being considered not to be regarded as an invention in accordance with 1 § PL. The Swedish Patent Office (PRV) considered that the subject-matter defined in the patent application basically comprised a computer implemented business method.

The invention defined in the application relates to a telephone network comprising mobile telephones communicating via the network with a server. The mobile phones comprises various means for inputting data and transferring data, while the server comprises memory means, means for receiving and comparing data, means for selecting an object up for sale, and means for establishing a connection between a mobile phone used for buying an object and a mobile phone used for selling said object. Allegedly, the network facilitates trading of goods and services. Prior art systems in the field of electronic trading of goods and services require powerful, and thus costly, mobile phones.

In both the OMX case (04-059) and the EasyContact case (04-075), the PBR unsurprisingly concluded that the respective invention presented a technical character and thus should be regarded as an invention in accordance with 1 § PL. Hence, it is up to the PRV to continue prosecution of the applications.

An office action objecting to lack of inventive step has been issued for the respective application. It remains to be seen whether the applications will be refused on the ground of lacking inventive step or not.

The PRV refused both applications on the grounds that the respective independent claims defined subject-matter not being regarded as inventions under 1 § PL. However, as can be seen in the above, the PBR considered said subject-matter to indeed exhibit technical character and remitted the respective application to the PRV for continued prosecution.

In both the OMX and the EasyContact case, the PBR asserts that the respective invention defined by the independent claims obviously requires technical considerations, thereby also having technical character. Although no particular piece of case law is referred to in direct connection to the conclusion of the PBR in the respective case, the reasoning partly appears to rely on – as well as partly lending its wording from – the EPO Board of Appeal case T769/92 (Sohei), which holds that an invention comprising functional features implemented by computer programs is not excluded from patentability if technical considerations concerning the solution of the problem solved by the invention are required to carry out the invention. In the OMX case, T769/92 is generally summarized along with a plurality of other EPO Board of Appeal cases.

In any case, the reasoning of the PBR is more in line with EPO case T1173/97 than it is with case T258/03.

T1173/97 (IBM) states in its headnote that a computer program product is not excluded from patentability under Article 52(2) and (3) EPC if, when it is run on a computer, it produces a further technical effect which goes beyond the “normal” physical interactions between program (software) and computer (hardware).

T258/03 (Hitachi), on the other hand, states in headnote I that a method involving technical means is an invention within the meaning of Article 52(1) EPC.

Question 2a of pending referral G3/08 to the EPO Enlarged Board of Appeal touches upon this discrepancy.

Should the PBR have reasoned along the lines of T258/03 for remittance to the PRV, it would have sufficed to establish the fact that all independent claims – apparatus claims as well as method claims – actually do comprise technical means (such as e.g. a computer in the OMX case and mobile telephones in the EasyContact case), whereas now they had to motivate that technical considerations had to be made, which must be said to be a somewhat more subjective standard of determining technical character.

In the light of these two Swedish second instance decisions, the future G3/08 decision of the EPO Enlarged board of Appeal is awaited.

Magnus Nordin, European Patent Attorney and member of the Awapatent software team

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Federal Circuit revises its decision in the “Comiskey case”

On January 13, 2009 the United States Court of Appeals for the Federal Circuit (CAFC) published an amended decision in the Comiskey case, revising its original decision from 2007. The Comiskey patent application claims a method and system for mandatory arbitration involving legal documents such as wills or contracts.

In the original decision the CAFC considered the method to be an abstract idea (processes of human thinking) and thus not patentable subject matter under 35 U.S.C. §101. The system, which generally describes the same process but includes a plurality of “modules”, was on the other hand considered patentable subject matter based on the addition of the modules. However, the CAFC regarded the modules to be a routine addition of modern electronics to an otherwise unpatentable invention, thus creating a prima facie case of obviousness.

Consequently, the USPTO was remanded to determine whether the mere addition of modern computers and communication devices would be obvious, not taking into account the system as a whole but only the actual system modules. This separation of the system between the process steps and the system module when considering obviousness (35 U.S.C. §103) created uncertainty regarding if computer implemented business methods, such as in the area of e-commerce, would be considered patentable.

However, in the revised decision the CAFC applies a more liberal interpretation of the system modules, thereby opening up for the Comiskey system to be seen as a specialized machine implementation that taken as a whole including the process steps and the functionality of the system modules could be patentable under §101. On the other hand, the CAFC did not make any judgment as to whether the system should be considered patentable under §101, but rather once again leave that to the USPTO to decide.

As a result, the case has been remanded back to the USPTO for determining whether §101 is satisfied. In its future decision the USPTO will possibly consider the recent Bilski decision for determining if the system according to Comiskey passes the machine-or-transformation test.

If you would like to read the revised Comiskey decision it can be found here.

Magnus Nilsson, Patent Attorney

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No conflict between scientific research and commercialisation

It’s a widely held myth in the world of medical research that patent is a dirty word, merely a way of making money out of your research. In actual fact, applying for a patent has much in common with publishing a paper in a scientific journal. The difference is in the purpose of the exercise.

Academic researchers regularly suggest that it is unethical to protect their innovations with patents. They are disdainful of the kind of commercial research undertaken by the pharmaceutical companies. All they want to do is to be able to publish their findings in scientific journals. They say they want to share the results of their research freely and, as almost all research today builds on earlier discoveries by other scientists, they want to contribute to the advance of science in a spirit of altruism.

Patents, however, do not restrict a researcher’s opportunities to share information. On the contrary! Once a researcher has applied for a patent, he or she can publish their research results the very same day. The patent application itself is also published and here the innovation must be described in such detail that it is possible to reproduce it. There’s nothing hush-hush about that! In fact, lack of reproducibility is one reason to reject a patent application, or even to invalidate a patent after it has been granted.

Nor can you overlook the obvious. Given the sky-high cost of developing today’s pharmaceuticals, many would never have seen the light of day if it hadn’t been possible to protect them with patents. What a disaster that would be! Pure research without a commercial incentive is indispensable if we are to understand how the world works. But there is no reason to condemn the work of developing patented drugs simply because these same drugs may one day make a profit for the companies that developed them. After all, advances in science depend both on “free” research and on patented innovations.

Inga Lill Andersson, European Patent Attorney

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