Archive | 2009, October | (3) posts

A sigh of relief: Controversial US regulations on claims and continuations finally rescinded

The United States Patent and Trademark Office (USPTO) announced in a press release on 8 October 2009 that it finally rescinds the controversial new regulations proposed by the previous USPTO administration concerning the number of claims and continuations allowed in a patent application. The US Biotechnology Industry Organization and the American Intellectual Property Law Association (AIPLA) were among the first to express their content.

Innovators seeking patent protection in the United States, as well as their patent agents, have been holding their breath ever since August 2007 when the USPTO presented the new regulations, which were to impose severe restrictions on the prosecution of US patent applications.

The controversial regulations, scheduled to become effective on November 1, 2007, greatly restricted the number of claims allowed in one application as well as the number of continuation applications an applicant may file in respect of an application family. On top of this, the applicant would be required to file an Examination Support Document, in practice meaning that the burden of patentability assessment would to a great extent be placed on the applicant, instead of on the Office examiner. The proposed changes were extremely unpopular among applicants and agents. In particular the pharmaceutical industry, whose patent applications often contain a large number of claims and are frequently made the subject of continuations, opposed the proposed changes. GlaxoSmithKline filed a lawsuit against the USPTO in order to prevent the new rules from taking effect, claiming that the USPTO had exceeded its rulemaking authority (Tafas v. Doll, formerly Tafas v. Dudas).

The US District Court ruling prevented the USPTO from implementing the new rules. Applicants and agents exhaled – but only temporarily, since the decision was overruled in appeal. Again, worries grew. Meanwhile, attention was drawn to the fact that the additional paperwork associated with the new regulations were in violation of the Paperwork Reduction Act passed in 2007, and it appears that the White House in 2008 instructed the USPTO to withdraw the new regulations.

Now, joined by GlaxoSmithKline in a motion to dismiss the proposed regulations and to vacate the court decision, the USPTO officially and finally puts an end to two years of struggle that today seems quite a waste for all parties. Recently appointed USPTO director David Kappos, appointed by President Obama in June this year, also says the USPTO from now on hopes to engage the applicant community more effectively in order to improve its function. Kappos has a career background in industry and was previously Vice President at IBM, the top US patent holder in 2008. Already, US agents report that Kappos is changing the credit system for the USPTO examiners so that less credit will be given for inducing applicants to file continuations. This is a welcome change of practice indeed.

Ulrika Munter, Patent Attorney

Software related inventions at the Enlarged Board of Appeals

It is now almost a year since the President of the EPO referred four questions relating to the patentability of software related inventions to the Enlarged Board of Appeal (G03/08). The hope is of course that the EBA finally may put several issues to rest, issues that have been debated in and out of the Technical Boards of Appeal for at least 25 years.

The interest for the referral is extremely large, as indicated by the more than 90 amicus brief filed by various entities ranging from private citizens and academia to multinational corporations and governments. However, the content of the referral is not necessarily easy to understand, even for those “skilled in the art” of software patenting, and for those of you who are still uncertain as to the specifics of the questions, here is a brief comment on what the President wants the EBA to answer. 

Question 1: 
Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

I believe this question is simply intended to establish whether the exception to software is decided by the form of the claims.
The background is that some decisions by the TBA state that the software exclusion can be avoided simply by claiming e.g. “a computer implemented method” instead of just a “method”. There is also some controversy regarding whether or not a claim directed to a “computer program product” can be patentable.

Although the question seems to be rather clear, the expression “explicitly claimed” leaves it open for interpretation and in the end we cannot be certain about what the EBA will actually answer. For example, some observers believe that “explicitly claimed” means claimed as software code. They further believe that the answer is yes, and that only code can be seen as software as such, and thus be excluded. This opinion has some support in the preparations for the EPC, drafted in times when software still took the form of listings in “written form” tediously transformed into punched cards to be “read” by a computer. Under such circumstances, it seemed reasonable to exclude these listings from patentability, as they were already protected by copyright.

Question 2:
A) Can  a claim in the area of computer programs avoid exclusion under Art. 52(2)(C) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

B) If question 2 (A) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

This question addresses a significant difference between two lines of jurisprudence. According to both lines, a claim should have “technical character” to avoid the exclusion in Art. 52 EPC, but the way to establish “technical character” is very different.

According to the older line of decisions, technical character was established if the claimed subject matter presented some “technical effect”. As all software interacts with hardware in a very basic technical sense, i.e. by influencing currents and voltages in a processor, it was also emphasized that in the case of software related invention, there had to be some “further” technical effect. Such an effect could be found in the perceived effect of the software, e.g. facilitating user interaction, improving memory access speed, increasing storage capacity, etc. According to this practice, a simple inclusion of commonplace technical features in the claim would not necessarily provide technical character.

According to the more recent line of decisions, technical character is established by any technical feature in the claim, even the act of “writing on a piece of paper”. As a consequence, the simple inclusion of “by a processor” or “in a memory unit” in a method claim will avoid the exclusion to software. Question 2 of the referral simply asks which of these approaches is correct.

Question 3:
A) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

B) If question 3 (A) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

C) If queston 3 (A) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used? 

I see this question as an attempt to address some of the controversies surrounding patents being granted on software applications that may be executed on any general purpose computer. Such patents include patents to interface solutions, patents to image coding techniques, patents to internet interaction and trade, etc. Such patents have in common that infringement may be committed by simply providing your personal computer with new software, distributed on a carrier or electronically. For many people such patents (regardless of whether they are claimed as methods or computer products) come across as protecting “software as such”. The alleged divergence of TBA decisions confirms this impression, as it puts decisions related to general computer applications against decisions related to software associated with particular hardware, such as a car radio system.

Unfortunately, question Q3 approaches this issue in a very complex way. First, question a) introduces a number of new expressions, such as “physical entity” and “real world”, and also makes you wonder if it is the technical effect or the physical entity that should be in the real world. Then, it is clear from question b) that the President is not even convinced that something as tangible as a computer is a “physical entity”, making the interpretation of this expression even more difficult. Question c) is even more confusing, as it seems to just repeat question a). At least it seems unlikely that someone that answers question a) in the negative then should require a specific hardware. I think questions Q3 must be seen as an attempt to ask the following: “can technical character arise from effects resulting from running a software on an unspecified computer?”

Question 4: 
A) Does the activity of programming a computer necessarily involve technical considerations?

B) If question 4 (A) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim? 

C) If question 4 (A) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?

This question tries to cope with a very common argument from applicants, namely that the activity of programming is a technical activity, and that therefore the software resulting from such programming must be technical also.
This question is based on an alleged inconsistency in TBA decisions, where the President believes that one decision suggests that all programming involves technical considerations. Personally, I do not believe that is what the cited decision says, and so the question is probably not based on an actual divergence in case law. However, I am sure many examiners would like a clarification on this point, in order to cope with clever arguments from applicants.

Part a) of the question very clearly asks if the act of programming necessarily involves technical considerations. Technical considerations have by the TBA been considered to be an indicator of technical character, and a yes to question a) would thus seem to indicate that any software would avoid the exclusion.

However, for this to be true, the technical character of the programming activity must be transferred to a feature resulting from this programming. This is what is asked in part b). If the activity of programming is not found to be relevant, the issue of technical character again returns to the issue of question 2. And indeed, part c) of question 4 seems to correspond to s question 2b.

After carefully considering the four questions I believe that they address some of the much debated issues surrounding patentability of software related inventions. However, in some cases the questions cloud the issues by using new terminology or by being overly complex. Therefore, it is not easy to guess how the EBA will interpret the questions, and what guidance they will provide, if indeed they find the referral to be admissible. An attempt to analyze the possible effects on applicants depending on how the questions are answered will be the topic of a future blog on this site.

Fabian Edlund, European Patent Attorney

Is the era of cascading divisionals coming to an end?

Filing a divisional used to be a common procedure before oral proceedings as well as before grant of a patent. But for European applications this possibility has now been drastically restricted, and  new rules concerning divisionals (rule 36 EPC) will be in place from April 1, 2010.

Until recently there were considerable uncertainties regarding the application of the new rules, but the European Patent Office, EPO, has now elaborated on the interpretation.

According to the new rules a first communication from the examining division triggers a 24 months time limit for filing a divisional application, but it has been unclear what was to be regarded as a “first” communication. Often the search opinion from the search division has the same content as the first communication from the examining division, which is received subsequently. So would the search opinion from the search division count as a “first communication”? It is now established that this is not the case. It is only the first communication from the examining division that counts. The first communication is often a written statement of patentability under EPC art. 94(3), but it could also be a notification of summons to oral proceedings, the minutes of a telephone conversation or a personal interview.

Furthermore the parent application has to be pending at the time of filing the divisional. If a divisional of a divisional is to be filed, it is only the parent application that needs to be pending, but the 24 months are calculated from the date on which the Examining Division’s first communication was issued for the earliest application in the sequence, e.g. the grandparent application. This will probably mean a drop in divisionals upon divisionals which has been practiced under the old rules.

A new time limit can only be triggered if a non-unity objection is raised by the examiner and only if it is a new one, not if a previous non-unity objection is maintained.

If filing amendments introduces new independent claims covering other inventions than those already claimed, it triggers EPC rule 137(5), which says that you may not introduce unsearched subject-matter into the claims, which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. Hence a unity objection will not be issued in this case and thus a new time limit will not be triggered.

For many companies it is crucial that divisional applications can be filed continuously as the product behind the patent application is developed and it is established which parts of the product are the important ones to protect.

So what can be done in order to comply with the rules as well as keeping ones options open?

It still remains to be seen, but at Awapatent we are, as always, looking into the options for handling the change of conditions in order to serve our clients the best way possible.

Charlotte Valentin, Associate