European Patent Procedure and Patenting Computer-Implemented Inventions

© 2018 - Barzanò & Zanardo – All rights reserved
The European patent protection:
procedure and patenting computer
implemented invention in the
European patent case law.
Andrea Tiburzi • Partner – European Patent Attorney
November 1, 2018

November 1, 2018
The European Patent protection – Patenting CII inventions
AGENDA
© 2016 - Barzanò & Zanardo - Tutti i diritti riservati
1. Introduction and main message
2. The European Patent procedure
3. Focus on the Computer implemented
inventions
4. Case Law

01 – Introduction
Barzanò & Zanardo
The speaker
The main message

November 1, 2018
Ing. Barzanò & Zanardo was established in 1878.
The group has two head offices, located in Roma and
Milan, and five branch offices, in Turin, Vicenza, Biella,
Rimini and Pordenone.
Currently around 190 employees work in the firm,
including 65 IP consultants.
Barzanò & Zanardo takes care of the intellectual property
rights of Italian and foreign multinational companies and is
therefore worldwide assisted by selected local agents.
Currently Barzanò & Zanardo can cope with any kind of IP
issue, whether it is legal, technical, financial, tax or
corporate related.
4
Barzanò & Zanardo - Firm overview
Introduction
Giacomo Balla - 1917 - Ing. Barzanò
& Zanardo Collection.
In the centre-right part of the
painting, the words Ing. Barzanò &
Zanardo can be made out. On that
Thursday, 13th December 1917, our
firm published the nominal
workings of various patents in the
Italian daily newspaper Corriere
d´Italia

November 1, 2018 © 2018 - Barzanò & Zanardo - Tutti i diritti riservati
5
The speaker
Introduction
Andrea, Doctor of Electronic Engineering, is a European Patent Attorney a Italian patent
attorney and a San Marino patent attorney, also admitted before the European Union
Intellectual Property Office of Alicante to handle Design registration and prosecution
matters. Andrea is Barzanò & Zanardo Director responsible for electronic and software
patents as well as foreign relationships for the whole group.
He is also the Managing Director of the Rimini office. Andrea’s key expertise lies in
electronic and software patents, telecommunications and signal processing, and He is
involved in drafting and prosecuting national and international patents, with particular focus
in oppositions and appeals before the European Patent Office.
Andrea is also an expert in economical valuation of intellectual property rights, including Know-How, for M&A
transactions, transfer pricing opinion, Purchase Price Allocation and calculation of damages before Italian national
Courts. He is a lecturer in several seminars concerning patent law and valuations of intellectual property rights
and a member of European Patent Practice Committee of the European Patent Institute.
Andrea graduated in electronic engineering at the University of Rome. He also has Masters in Corporate finance
and management accounting, M&A corporate transactions and international tax.
a.tiburzi@barzano-zanardo.com

November 1, 2018
The views and opinions expressed in this
presentation are those of the author and do not
necessarily reflect the official position the
European Patent Office (EPO) or European Patent
Institute (EPI)
6
Disclaimer
Introduction

7
Introduction
The main message
Patenting inventions inplemented by a
computer is not a curve ball.
To hit the ball, determine the contribution to
produce a technical effect of any features in the
context of the invention.

02 – The European Patent procedure
The procedure at a glance
Tips for quickening the procedure
Inventive step assessment

15 Giugno 2018 © 2018 - Barzanò & Zanardo - Tutti i diritti riservati
9
Overview of the EP procedure
The European Patent procedure
Search and
search report
together with a
preliminary
opinion on
patentability
European
patent
application
Filing and
formalities
examination
Applicant
European
Patent
Office
Public
Substantive
examination
Grant of a
European
patent
Opposition
proceedings
Appeal
proceedings
Limitation or
revocation
proceedings
Refusal of the
application
Validation in
thedesignated
states
Publication of the
application and
search report
Observations by
third parties possible
(Article 115EPC)
Review
Language
regime
9m
Publicationof the
patent
specification

15 Giugno 2018 © 2018 - Barzanò & Zanardo - Tutti i diritti riservati
10
Possible outcomes of an opposition
Decision
Art 106 EPC - Appeal
OpponentProprietor
Revocation Rejectionof
opposition
Final
Maintenancein
amended form
Interlocutory
(2)(1) (3)
Opponent
(Proprietor)
Printing fees +
translations
106(3)

November 1, 2018
 Patentability
– Patentable/Not patentable subject-matter (Art. 52 EPC)
– Novelty (Art. 54 EPC)
– Inventive step (Art. 56 EPC)
– Susceptibility of Industrial application
 Disclosure of the invention (Art. 83 EPC)
 Clarity, conciseness and support by the description (Art. 84 EPC)
11
Requirements

12
Problem-solution approach for assessing the Inventive Step
 Novelty (Art. 54 EPC)
 Inventive step (Art. 56 EPC)  Problem-solution-approach
 Industrial applicability
Based on Rule 42(1)(c) EPC (Content
of the description) and developed
by the BoA

13
 Prior art includes:
– European patent applications, the dates of filing of which are
prior to the date of filing of the Opposed patent, and which
were published on or after that date, shall be considered as
comprised in the state of the art (Art. 54(3) EPC)
 These documents, however, shall not be considered in
deciding whether there has been an inventive step of the
opposed patent

14
Item Steps How to
(a) Identifying the closest prior art,
The closest prior art is the most promising
spring board for reaching the claimed subject
matter
(b)
Assessing the technical effect achieved by the
claimed invention when compared with the
"closest state of the art" established,
The technical effect can be derived by the
differential technical features
(c)
Deriving from the achieved technical effect the
objective technical problem to be solved by the
claimed invention, and
The "objective" technical problem is derived by
the technical effect. No pointer to the solution
(d)
Examining whether or not a skilled person,
starting from the closest state of the art, would
have arrived to the claimed technical features for
solving the technical problem (obviousness test)
Could-would approach
(Any hints or prompts to combine two pieces
of prior art should be submitted and discussed)

November 1, 2018
03 – Focus on the Computer implemented
inventions
Definitions
Eligibility
The «modified» problem-solution approach for CII

16
CII: some definitions
Focus on CII
Computer programs
•Sequence of computational steps performed by a computer
•Language of a program (code)
Software
•Often used as a synonym for computer program
•Usually by SW in which a SW is stored (DVD, CD ...) are
intended
Algorithm
•Systematic procedure for accomplishing a task in a number of
steps
•Concept at the basis of a program
EPO definition of CII:
Inventions involving programs
for computers can be protected
in different forms of a
"computer-implemented
invention", an expression
intended to cover claims which
involve computers, computer
networks or other
programmable apparatus
whereby at least one feature is
realised by means of a
program.

17
EPO official definition of CII
Focus on CII
“Inventions involving programs for computers can be
protected in different forms of a "computer-implemented
invention", an expression intended to cover claims which
involve computers, computer networks or other programmable
apparatus whereby at least one feature is realized by means of a
program.”

18
CII: some definitions
Focus on CII
Specific
circuits
Algorithm
Program for a
standard
computer with
specific circuits
Program for a
standard
computer
I M P L E M E N T A T I O N

19
Main concepts to explore when dealing with CII
Focus on CII
CII
Further
technical
effect
Eligibility
Patentability
(ass. of
inventive
step)

20
Eligibility:
Patentable inventions before EPO
Focus on CII
Article 52
Patentable inventions
(1) European patents shall be granted
for any inventions, in all fields of
technology, provided that they are
new, involve an inventive step and are
susceptible of industrial application.

November 1, 2018
Discoveries
Scientific theories
Mathematical methods
Aesthetic creations
Schemes
Rules
21
Eligibility. What is not an invention (Art. 52(2
and 3))
Focus on CII
Methods for performing mental
acts
Playing games
Doing business
Programs for computers
Presentations of information

22
Focus on CII
Eligibility and the role of prior art: what a cup has to do with CII?
Prior art Claimed subject matter:
eligible?
G3/08

23
Focus on CII
Eligibility and the role of prior art
E.g. computer, a computer network, a readable
medium carrying a program
Commonly known technical means in a claim are
sufficient to confer technical character and fulfill the
requirements of Art 52 (2 and 3) EPC

24
Further technical effect. What about a computer program per se? Normal and further
technical effect: a possible reference model
User
A
Tech.
system
Sensor
s 1…N
User
B
Internet
Application
software
Application
software
System softwareSystem software
Hardware
Transistor level
Hardware
Transistor level
Further technical
effect
Further technical
effect
Normal technical
effect
In T 1173/97 & T 0935/97 (IBM)
the Board strived to find a
general trade off for allowing
patent on SW, avoiding to allow
any kind of patent.
A computer program claimed
by itself 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 between program
(software) and computer
(hardware)

25
Inventive step. Mixed type claims
Three groups of features are possible in a claim (Guidelines G-
VII, 5.4)
a) Technical features “as such”
b) Non-technical features “as such”
c) 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 technical character of the invention

26
Focus on CII
Inventive step. The concept: easy with Furier Transform!

27
Focus on CII
NO GUIDANCE
AVAILABLE
Case by
case
Assessment
Inventive step. Mixed type claims: assessment of technical
contribution of any feature

28
Inventive step. Dealing with mixed type claims: T641/00 Comvic.
Interplay between eligibility and patentability
Claim
Technical character
Non technical character
Closest
Prior
Art
Check if it’s
inventive

29
Focus on CII
Select features which contribute to
the technical character based on
technical effects achieved
(context of the invention)
Select closest prior art is with focus
on the features contributing to the
technical character
Identify the differences from the
closest prior art
Determining the technical
effect(s) of these differences in the
context of the claim, identifying from
these differences the features which
make a technical contribution and
those which do not
There are
differences
Differences make
any technical
contribution
Yes
Raise an
objection under
Art. 54
Raise an
objection under
Art. 56
The objective technical problem is formulated on the
basis of the technical effect(s) achieved by these
features. In addition, if the differences include
features making no technical contribution, these
features, or any non-technical effect achieved by the
invention, may be used in the formulation of the
objective technical problem, e.g. as a constraint that
has to be met
Obvious for a
skilled person
(could-would
approach)?
No
No
Yes

30
Focus on CII
Inventive step. Modified problem-solution approach
Claim/
Subject-matter (feature itemization)
Features contributing to
tech. character inthe context
of the invention
Features non contributing to
tech. character inthe context
of the invention
Closest prior art
document
Additional document
Technical feature as such
Non Technical feature as such
Non technical feature as such (e.g. a math formula)
Non Technical feature as such
Tech. feature as such, but it does not
contribute to tech. character in the
context of the invention. Usually it is
addressed as a partial problem
Non tech feature not disclosed in prior art used
for the formulation of the obj. tech problem, e.g.
as a constraint
Non tech feature not disclosed in prior art used
for the formulation of the obj. tech problem, e.g.
as a contraint

31
Evolution
Focus on CII
E
n
t
r
y
i
n
n
e
w
m
a
r
k
e
t
T1173/97 & T 0935/97
 Abandonment of the
“contribution approach” for the
assessment of the eligibility
 Further technical effect
requirement for a computer
program “per se”
T641/00
 “COMVIK approach” for the
application of the problem
solution approach in the
assessment of inventive step
 Dealing with mixed type claim
 Formulation of the objective
technical problem in CII
G3/08
 No definition of “technical”
 Explanation of the
abandonment of the
“contribution approach”
 No requirement that one
feature has to cause physical
effect on physical entity
outside the computer
CaseLawEvolutioninCII
T…
 …

32
Some news as of…TODAY!
AI and ML are not patentable as
such, as the EPO observations for
mathematical algorithms as such
apply
Position of EPO
for AI and ML

November 1, 2018
04 – Case Law
Type of claims available
Some interesting cases

34
Different claims are available for allow the enforcement
Focus on CII
1. A device comprising a processing unit configured to…
2. A data processing method, the method comprising the following steps:…
3. A Method…
4. A computer program comprising instructions which, when executed by data
processing apparatus, causes the apparatus to perform a method according to any
one of claims 2 to 3.
5. A computer readable medium storing a computer program according to claim 3.

35
T 1670/07 Business method
Case Law
• It is legitimate to have a mix of technical non-
technical features
• Non-technical features can be the dominating part
of the claim
• Non-technical features can be used in the
formulation of the objective technical problem
(constraints)

Technical features (third auxiliary request) as such
(highlighted in yellow). Distributed system.
It is apparent that the non technical features are
definitively more then the technical ones. It is not
forbidden.
(a)-(c) are the differences with respect to the closest prior art
document.
(a) and (b) are modification of the business method  no
tech purpose, no tech. effect. They are constraint
• Objective tech. problem has to be formulated on the
basis of the tech. effect of (c)
• Skilled person not deemed to have any expertise in
business-related matters. He is expert in information
technology who gains knowledge of the business-
related features as part of the formulation of the
technical problem to be solved
• How to modify the method of D1 to implement in a
technically efficient manner the non-technical business
concept defined by differences (a) and (b)
(a)
(b)
(c)

37
T 1227/05 Mathematical method
Case Law

Use of a computer is a technical
feature
Math method as such non
technical. Limited to a computer-
implemented method for
simulating performance of
electronic circuit subject to 1/f
noise: considered technical
purpose
CPA differs for a different math
model.
Obj. Tech. Prob.: how to generate
the 1/f-distributed random umbers
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.
It involves an inventive step

39
T 598/07 Neural network
Case Law

Use of a apparatus is a technical
feature. The corresponding
method claim has been granted
No exception under A. 53 (c)
EPC.
For the Board independent claim
28 merely provides an indication
as to whether the n dimensional
vector formed from a regular
heartbeat is within or outside the
regular heartbeat n dimensional
volume.
The claim's wording does not
actually and does not need to
incorporate the deductive
decision phase of establishing a
diagnosis for curative purposes
Use of a neural network and an
abstract data space by a vector
space

41
T 0690/11 Grafic User Interface
Case Law

Technical features as such
(highlighted in yellow).
In a nutshell, the main purpose
of the appeal was to determine
whether or not these features
were technical or, in the
context of the invention,
capable of providing a
technical contribution

43
Case Law
Appellant
No synergistic effect of the
featrures
This group of features concerned
«what» information was to be
dysplaied, not «how»
Mere presentation of
information, noo technical
character
Respondent
There is synnergy
There is tech. Character as
there are shown functional
data integral to the operation
of the dyalisis system

44
Case Law

45
T 0258/03 Auction method
Case Law
Concerns a Dutch-modified auction method:
allows participants to having to give bids on-
line which solved the technical problem
known from the prior art of lacking
synchronization and different delays within
the network used by the bidders

Technical features as such (highlighted in
yellow). However, they were considered
standard and known from D6 (piece of prior
art).
In any case, to carry out the method technical
means, regardeless the «degree of banalityof
the technoical features of the claim». The claim
fulfils Art. 52(1).

47
T 0258/03 Auction method
Case Law

Tell me and I forget. Teach me and I
remember. Involve me and I learn.
Benjamin Franklin

Thank you
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