Let’s start by what is meant by Computer-Implemented Inventions: The expression “computer-implemented inventions” (CII) covers claims which involve computers, computer networks or other programmable apparatus, whereby at least one feature is realized by means of a program.
The new guidelines cover many areas, with Parts F-IV and G-VII, focusing particularly on CII, which includes (1) Clarity of the presentation of information and (2) eligibility and patentability.
- The clarity of the presentation of information eligibility and patentability as described in Section F-IV, 3.9 provides:
- Claims directed to CII should define all the features which assure the patentability of the process which the computer program is intended to carry out when it is run (F-IV, 4.5.2, last sentence); and
- An objection under 84 may arise if the claims contain program listings. Short excerpts from programs may be accepted in the description (see F-II, 4.12).
- Eligible/non-eligible, patentable/non-patentable subject matter in CII
Distinctions are made between CII using generic (3.9.1) versus specific data processing means (3.9.2):
- Inventions in which all the method steps can be carried out by generic data processing means (F IV, 3.9.1); and
- Cases where method steps require specific data processing means and/or require additional technical devices as essential features (F IV, 3.9.2).
CII using generic Data Processing Means (F IV, 3.9.1)
Inventions in which all the method steps can be carried out by generic data processing means (F IV, 3.9.1);
A common type of CII relates to subject-matter where all the method steps can fully be carried out by computer program instructions running on means which, in the context of the invention, provide generic data processing functions. Such means can, for example, be embedded in a personal computer, smartphone, printer etc. In such inventions, although different claim structures are possible, the set of claims usually starts with a method claim.
- Further claims in other categories with subject-matter corresponding to that of the method may be included to obtain complete protection of the invention.
- If the invention concerns software which can be loaded into memory, transmitted over a network or distributed on a data carrier, a claim to a computer program [product] may also be present in addition to a computer-implemented method.
- Click to see a non-exhaustive list comprising examples of acceptable claim formulations (T 410/96, T 1173/97 and T 2140/08) in such a set of claims.
Claim 1 (method)
– A computer-implemented method comprising steps A, B, …
– A method carried out by a computer comprising steps A, B, …
Claim 2 (Apparatus/device/system claim)
– A data processing apparatus/device/system comprising means for carrying out [the steps of] the method of claim 1.
– A data processing apparatus/device/system comprising means for carrying out step A, means for carrying out step B, …
– A data processing apparatus/device/system comprising a processor adapted to/configured to perform [the steps of] the method of claim 1.
Claim 3 (computer program [product])
– A data processing apparatus/device/system comprising means for carrying out [the steps of] the method of claim 1.
– A data processing apparatus/device/system comprising means for carrying out step A, means for carrying out step B, …
– A data processing apparatus/device/system comprising a processor adapted to/configured to perform [the steps of] the method of claim 1.
Claim 4 (computer-readable [storage] medium/data carrier)
CII Using Specific Data Processing Means (F IV, 3.9.2)
Cases where method steps require specific data processing means and/or require additional technical devices as essential features (F IV, 3.9.2)
Where not all the steps of the method defining the invention can be implemented fully by generic data processing means, defining claims as in examples (i)-(iv) in F IV, 3.9.1, may not suffice to fulfill the requirements of 84. Furthermore, in such cases, claims of different categories have to be construed and examined separately with respect to novelty and inventive step.
In particular in applied fields such as medical devices, measuring, optics, electro-mechanics or industrial production processes, method claims frequently involve steps of manipulating or interacting with technical physical entities by using computer control. However, these method steps are not fully performed by the computer and require specific technical means.
- If the invention involves an interaction between data processing steps and other technical means such as a sensor, an actuator etc., these technical means must be comprised in the independent claims if they are essential for carrying out the invention.
- An objection under 84 may arise if the claims do not define which steps are carried out by the data processor or by the additional devices involved, as well as their interactions.
- The same applies if specific data processing means (e.g. a particular parallel computer architecture) are required as opposed to the generic data processing means described in F‑IV, 3.9.1.
Patentability assessment of claims comprising technical and non‑technical features
Patentability assessment (Part G-VII Section 5.4)
Patentability assessment of claims comprising technical and non-technical features as is often the case of CII claims.
As is often the case with computer-implemented inventions, there may be a mix of technical and non-technical features appearing in a claim, where th non-technical features may even form a major part of the claimed subject-matter.
When assessing the inventive step of such a mixed-type invention, all those features which contribute to the technical character of the invention are taken into account. These also include the features which, when taken in isolation, are non-technical, but do, in the context of the invention, contribute to producing a technical effect serving a technical purpose, thereby contributing to the technical character of the invention. However, features which do not contribute to the technical character of the invention cannot support the presence of an inventive step (T 641/00). Such a situation may arise, for instance, if a feature contributes only to the solution of a non-technical problem, e.g. a problem in a field excluded from patentability (see G‑II, 3 and sub-sections).
The problem-solution approach is applied to mixed-type inventions in such a way as to ensure that inventive step is not acknowledged on the basis of features not contributing to the technical character of the invention, while all those features which do contribute are properly identified and taken into account in the assessment. Therefore, where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the objective technical problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met (T 641/00; see step (iii)(c) below and G‑VII, 5.4.1).
Application of the steps of the problem-solution approach according to G‑VII, 5.4:
Step (i): The features contributing to the technical character are at first glanceidentified as a distributed system comprising a mobile device connected to a server computer which has a cache memory and is connected to a database.
Step (ii): Document D1, which discloses a method for facilitating shopping on a mobile device wherein the user selects a single product and the server determines from a database the vendor selling the selected product nearest to the user and transmits this information to the mobile device, is selected as the closest prior art.
Step (iii): The differences between the subject-matter of claim 1 and D1 are:
Differences (1) and (2) represent modifications of the underlying business concept, since they define producing an ordered list of shops to visit which sell these products. No technical purpose is served, and no technical effects can be identified from these differences. Hence, these features make no technical contribution over D1. On the other hand, difference (3) makes a technical contribution as it relates to the technical implementation of differences (1) and (2) and has the technical effect of enabling rapid determination of the optimal shopping tour by accessing previous requests which are stored in a cache memory.
Step (iii)(c): The objective technical problem is to be formulated from the perspective of the person skilled in the art as an expert in a technical field (G‑VII, 3). Such a person is not deemed to have any expertise in business-related matters. In the present case, he can be defined as an expert in information technology who gains knowledge of the business-related features (1) and (2) as part of the formulation of the technical problem to be solved, as would be the case in a realistic situation in the form of a requirement specification. The objective technical problem is thus formulated as how to modify the method of D1 to implement in a technically efficient manner the non-technical business concept defined by the differences (1) and (2), which is given as a constraint to be met.
Example 1
Method of facilitating shopping on a mobile device wherein:
(a) the user selects two or more products to be purchased;
(b) the mobile device transmits the selected products data and the device location to a server;
(c) the server accesses a database of vendors to identify vendors offering at least one of the selected products;
(d) the server determines, on the basis of the device location and the identified vendors, an optimal shopping tour for purchasing the selected products by accessing a cache memory in which optimal shopping tours determined for previous requests are stored; and
(e) the server transmits the optimal shopping tour to the mobile device for displaying.
Step (i): Underlying the claimed method is the following business method:
A method for brokering offers and demands in the field of freight transportation, comprising:
Such a business method is per se non-technical and excluded under Art. 52(2)(c)and (3). Brokering offers and demands is a typical business activity. Using the geographical location of users is the kind of criterion which a transportation broker could specify as part of a business method based on non-technical, business considerations only. This business method does not serve any technical purpose in the context of the invention and thus does not contribute to its technical character.
Therefore, only the features related to the technical implementation of this business method can be identified as the features contributing to the technical character of the invention:
Step (ii): As a suitable starting point, document D1, which discloses a method of order management in which a server computer receives location information from GPS terminals, is selected as the closest prior art.
Step (iii): The difference between the subject-matter of claim 1 and D1 is thus the computer implementation of the steps of the business method defined above.
The technical effect of this difference is merely the automation of the business method underlying claim 1. The conclusion reached in step (i) holds, since the only distinguishing feature making a technical contribution is the technical implementation of this business method.
Step (iii)(c): The objective technical problem is formulated as how to adapt the method of D1 so as to implement the business method of brokering offers and demands according to the user’s current location. The person skilled in the art is considered to be a software project team and is given the knowledge of the business method in the form of a requirement specification.
Obviousness: Adapting the method of D1 to execute the business method steps is straightforward and requires routine programming only. Therefore, no inventive step is involved in the sense of Art. 52(1) and Art. 56.
Remarks: In this example, it was clear from the initial analysis at step (i) that underlying the claimed method was a method for brokering offers and demands, which as such is a business method. The features defining the business method were easily separable from the technical features of its computer implementation. Therefore, this example illustrates a line of argument in which it was possible in step (i) to determine all the features which contribute to the technical character of the invention and all those which do not. This line of argument pertains more to the field of computer-implemented business methods and might be less suitable in other fields.
Example 2
A computer-implemented method for brokering offers and demands in the field of transporting freight, comprising the following steps:
(a) receiving transportation offers/demands from users, including location and time data;
(b) receiving current location information of the users from GPS terminals with which the users are equipped;
(c) after receiving a new offer/demand request, verifying if there are previous offers/demands not yet satisfied that can respond to the new request;
(d) if so, selecting the one for which the current locations of both users are closest; and
(e) otherwise storing the new request.
Application of the steps of the problem-solution approach according to G‑VII, 5.4:
Step (i): At first glance, all features appear to contribute to the technical character of the invention.
Step (ii): Document D1, which discloses a system for broadcasting video over an xDSL connection to the set-top boxes of subscribers, is selected as the closest prior art. The system comprises a database storing identifiers of subscribers’ computers and, in association with them, an indication of the maximum data rate for the data connection to each subscriber’s computer. The system further comprises means for transmitting the video to a subscriber’s computer at the maximum data rate stored for said computer.
Step (iii): The differences between the subject-matter of claim 1 and D1 are:
The purpose served by using an “available data rate” which is lower than a maximum data rate for the data connection to the remote client is not apparent from the claim. Therefore, the relevant disclosure in the description is taken into account. In the description, it is explained that a pricing model is provided which allows a customer to choose from several service levels, each service level corresponding to an available data-rate option having a different price. A user may select an available data rate lower than the maximum data rate possible with his connection in order to pay less. Hence, using an available data rate which is lower than the maximum data rate for the connection to the remote client addresses the aim of allowing a customer to choose a data-rate service level according to that pricing model. This is not a technical aim, but an aim of a financial, administrative or commercial nature and thus falls under the exclusion of schemes, rules and methods for doing business in Art. 52(2)(c). It may thus be included in the formulation of the objective technical problem as a constraint to be met.
The features of storing the available data rate and of using it to determine the rate at which the data is transmitted have the technical effect of implementing this non-technical aim.
Example 3
A system for the transmission of a broadcast media channel to a remote client over a data connection, said system including:
(a) means for storing an identifier of the remote client and an indication of an available data rate of the data connection to the remote client, said available data rate being lower than the maximum data rate for the data connection to the remote client;
(b) means for determining a rate at which data is to be transmitted based on the indication of the available data rate of the data connection; and
(c) means for transmitting data at the determined rate to said remote client.
Background: The claim is directed to a method carried out by a computer for the numerical simulation of the performance of an electronic circuit subject to 1/f noise, which is one of the main sources of noise in electronic circuits. Features (a)-(c) specify the mathematical model used in the numerical simulation. It involves a noise vector y of 1/f-distributed random numbers, i.e. random numbers having a particular statistical property typical of real (physical) 1/f noise. Steps (d1)-(d3) define the mathematical algorithm used for generating these random numbers. According to the description, this mathematical algorithm is particularly efficient in terms of computation time and storage resources required to generate the random numbers needed for the simulation.
Application of the steps of the problem-solution approach according to G‑VII, 5.4:
Step (i): The use of a computer to carry out the claimed method is a clearly technical feature. The question is whether the other features, in particular the mathematical algorithm of steps (d1)-(d3), also contribute to the technical character of the claimed subject-matter. Considered in isolation, steps (d1)-(d3) represent a mathematical method with no technical character. However, the claim is not directed to this mathematical method as such (which would be excluded from patentability under Art. 52(2)(a) and (3)) but is limited to a computer-implemented method in which this mathematical method serves the numerical simulation of the performance of an electronic circuit subject to 1/f noise, which is considered to be a technical purpose (G‑II, 3.3). Features (a)-(c) ensure that the claim is functionally limited to this technical purpose by specifying the mathematical model used in the simulation and how the generated noise vector y is used in it, i.e. they establish the link between the stated purpose of the method and steps (d1)-(d3). Furthermore, the mathematical model specified by features (a)-(c) defines how the numerical simulation is performed and thus also contributes to the above-mentioned technical purpose. As a result, all the steps relevant to the circuit simulation, including the mathematically expressed claim features (d1)-(d3), contribute to the technical character of the method to the extent that they are relevant for circuit simulation.
Step (ii): Document D1, which discloses a method for numerical simulation of the performance of an electronic circuit subject to 1/f noise with steps (a)-(c) but with a different mathematical algorithm for generating the 1/f-distributed random numbers, is selected as closest prior art.
Step (iii): The difference between the methods of claim 1 and D1 is the mathematical algorithm used to generate the vector of 1/f-distributed random numbers, i.e. steps (d1)-(d3). The algorithm defined by steps (d1)-(d3) requires less computer resources than that used in D1. In the context of the claimed method, this results directly in a reduction of the computer resources required for the numerical simulation of the performance of an electronic circuit subject to 1/f noise, which is the technical effect achieved over D1.
Step (iii)(c): The objective technical problem solved with respect to D1 is formulated as how to generate the 1/f-distributed random numbers used in the numerical simulation of the performance of an electronic circuit subject to 1/f noise in a manner which requires less computer resources.
Obviousness: No prior art suggests the algorithm defined by steps (d1)-(d3) as a solution to the objective technical problem. The invention as claimed is therefore considered to involve an inventive step.
Remarks: This example illustrates the situation addressed in G‑VII, 5.4, second paragraph: features which, when taken in isolation, are non-technical, but do, in the context of the claimed invention, contribute to producing a technical effect serving a technical purpose. Such features are considered to contribute to the technical character of the invention and may therefore support the presence of an inventive step.
Note that if the claim were not limited to the numerical simulation of an electronic circuit subject to 1/f noise, the mathematical algorithm defined by steps (d1)-(d3) would not serve any technical purpose and would thus not be considered to contribute to the technical character of the claim (requiring less computer resources than another mathematical algorithm being on its own not sufficient in this respect; see G‑II, 3.3).
Example 4
A computer-implemented method for the numerical simulation of the performance of an electronic circuit subject to 1/f noise, wherein:
(a) the circuit is described by a model featuring input channels, noise input channels and output channels;
(b) the performance of the input channels and the output channels is described by a system of stochastic differential equations;
(c) an output vector is calculated for an input vector present on the input channels and for a noise vector y of 1/f-distributed random numbers present on the noise input channels; and
(d) the noise vector y is generated by the following steps:
(d1) setting the number n of random numbers to be generated;
(d2) generating a vector x of length n of Gaussian-distributed random numbers;
(d3) generating the vector y by multiplying the vector x with a matrix L defined according to equation E1*.
* It is assumed that equation E1 is explicitly specified in the claim.