The following is a partial transcript of a presentation by Stefan Steinbrener - Member of the Technical Board of Appeal of the European Patent Office.
Stefan Steinbrener's disclaimer: "This presentation gives the author's personal views"[1]
The transcript
…EPC 2000, there are also travaux préparatoires, and if you look into these travaux préparatoires, you'll find a very very clear statement …. the point must be made that the patent protection should have a technical field.. this is now clearly stated in the new wording of Article 52.1. In order to be patentable, the subject matter claimed …. technical character, or to be more precise, a technical teaching
how to solve the particular technical problem using the particular technical means
misunderstanding of the
patent
The same configuration applies to the existence of computer programs, but it will remain incumbent on office practice
subject matter claims
has the technical character
an appropriate manner
in light of technical developments and the state of knowledge at the time
a very clear statement …. to be
the invention. If you don't like it
In the light of the conclusion, inventions within the meaning of
technical character.
[1:52]
Now we hit a new problem. If we use this criterion for distinguishing inventions from non-inventions, and this
any of the subject matter
Art 52.2
[2:19]
technical problem solved
technical interactions occur or technical applications are required.
If we use this criterion, then we have to ask ourselves …. technical
no … has been given to the [European Patent Office?]
European
[2:49]
But, this is a situation which is quite normal in legal systems. There's no reason to succumb to
[3:03]
The meaning of these terms is, in its core area, undisputed. The semantics are important only on the fringes.
You may realise that the new meaning of patent … employ a general definition of difficult, it will have no limiting effects
I remember a discussion of the German Ministry of Justice at the time of this computer directive was still, ah, living [].
[]different participants coming from different fields and having different interests …. fulfilled the
definition of "technical" from Encyclopedia Britanica, or somewhere, and some general dictionary, and it got such broad[sic] that it included everything, and there was a lot of opposition against that, in certain circles. So, ah, if unintentionally, or unjustifiably restrictive, we would have to
[4:43]
The now retired presiding judge of the federal supreme court, [] German [] definition [].
[laughter]
[5:02]
for cautious … and, on the other hand, the constructions of
once and for all by any defintion, but necessarily
There's a nice anecdote from the British attorney … at the time when this computer directive was discussed, the UK IPO arranged workshops and, ah, on one of these workshops the German definition was
this might be helpful, and in this definition the reference to natural forces. And at the end of the workshop, somebody asked, when will be the workshop on "natural forces"?
[laughter]
Okay.
later, a general approach, and a very nice defintion was given by Lord CROSBIN???. He's a high court judge in the court of (criminology?)
he said, the vaste majority of patent applications are perfectly clear about, …. of the monopoly they claim … never come to court. The borderline cases, however,
[6:36]
would strike another
for unreasonable for third parties. That degree of uncertainty (is?) inherent in any rule
the construction of any document
In principal
doubt
although I shall consider
uncertainty can be
guidelines
structured approach to construction
requirement
[7:32]
the structure approach to construction, as we tried to stake out the grey areas with a series of decisions dealing with the (usual?) aspects. These are the guidelines.
So in fact, some aspects
clarifying the
Definition of the methodology. I would argue that there are five definitions
I don't want to
computer program
controlling
[8:18]
summarised all of that, estimating
activity
What can be concluded from this decision? What, how the methodology defines … if you look at the first
the examination of, for, the existence of an innovation
novelty, inventive step, and industrial applicability [8:51]
different … don't believe … systematically correct
the requirements: novelty, inventive step,
state of the art, the first requirement
ten thousand years, … not novel
necessary in order to
we have to analyse the features of the claims if they have technical character, and if this is the case, which features specifically
is not necessarily of higher priority
pragmatic approach
either [10:10]
make the analysis
for continuing
inventive step
mixtures of technical and non-technical features are not excluded from patentability. If there's one non-technical aspect, it would not destroy the
Nor is it appropriate to weight the relevance of technical and non-technical features
assessing the invention as a whole, in light of all technical and non-technical features. This means in practice, an apparatus is a concrete technical product
providing that there is
technical character
and methods can have technical characters by virtue of their technical nature
[11:26]
we have
a low standard for the first hurdle
take on board as much as possible, as much as we believe … will allow
my view is also in line with the TRIPS requirement
But, the
[12:00]
by this classification
subject matter
or subject matter that doesn't necessarily involve technical innovation, methods that do not necessarily use technical means, they are excluded because they lack technical character.
hear the arguments that most of the cases
technical means
overcome the first hurdle
there are many regulations in the EPC which are very well observed by the
[13:00]
so this is not my particular area of knowledge.
if we look at what has been denied … as technical
you'll find a couple of decisions
technical considerations that do not confer technical character
[13:51]
necessarily involved, even if they're not
again, no technical means are necessarily involved, even if they might be involved, or similar untechnical
necessarily
system
[14:23]
system
Now we come to the second hurdle: the technical quality of invention. And here at least, you must analyse the features … technical character .. features which made no contribution are not part of the technical ..
[15:04]
One could .. in a simple picture .. we have the same subject matter with a whole???. We have contributions by technical features. We may have contributions by non-technical features, if they interact with the technical features .. interaction .. if they contribute to the solution of the technical problem. .. here today was a question
[15:43]
on the other hand, one could consider
to circumvent a technical problem
used quite often
[16:05]
are very slow, so there's a difference.
So, ah
and we wait for him to
A technical solution might be to change the elevator controls
or the electrical system might be changed
actually
[16:52]
people … fourth floor are not allowed to use the elevator. These people
circumventing the technical problem
Now, what we have is, you can, you can in fact .. technical features which do not make things .. contributions
[17:29]
approach
do not make a technical contribution
So,
technical field, if the invention is based on a non-technical invention with a technical realisation that is novel
and a technical realisation .. non-technical .. as such
once it has been put to him by a
some kind of
[18:23]
Then we come to the statistical
invention
[18:44]
For the other two requirements, we
[19:03]
found that, if no search was made … may well be justified in the subject matter
unclear
non-technical
carried out
[19:25]
necessary to judge the inventive step is either not
cannot be really
or that there is some .. knowledge which is not accepted
[20:02]
this is on one hand making the
more difficult, but on the other hand, we decided
does not belong to the state of the art
and he would not study documents
financial
[20:40]
With respect to novelty, we have a problem.
is a conflict of photographic
so the existence of any difference would
sufficiant
come back to the hammer. If the hammer had a different colour
different feature
[21:20]
blue hammer
On the other hand, if you say the invention is
by the technical features, there might be a technical concept of novelty.
take account of features that do not contribute to the solution of the technical problem. … at least they're non-trivial
in my view, one could solve these problems by .. differences which are physically … physical differences
why should we not
there is no clear, line on that at the moment. We will have, you know
jump to the inventive step because for inventive step, the difference is not sufficient
[22:30]
and you look at these
different colour would certainly not qualify as a non-trivial technical
but, and that's the reason, also, why we avoided, until now, to decide
on novelty
the only prior-art, the only relevant prior-art
[23:14]
then, ah
inventive step, we would like to use the [typical] idea of … not, to remain as much as possible in
and therefore we would tend to use the
and in order to do that, we have to say that objectives to be achieved in non-technical fields .. framework
they are
constraints to be met by the technical
[24:11]
I would like to, really underline that we do not consider these non-technical .. as belonging to the prior art. But, ah, we consider them as belonging to the conception, motivation phase
[24:37]
invention
technical problem without contributing to
such constraints are often not known. They are not described in the patent application. They are necessarily … technical
[25:00]
why should I be
motivational
never been taken into account for inventive step, irrespective of whether
[25:17]
and there are a lot of old
and we have also pointed out
argument
where we have pointed out .. investigated .. and investigated it
technical problem.
So, the technical problem must be solved by technical means
circumventing
[25:58]
approach
technical
[26:09]
If I want to try to make a definition of the technical contribution used in the
in the directive, you would say today
as a whole
in particular .. technical products or using technical means, and the combination of those features .. technical character
they must be novel and inventive
[26:53]
some specific aspects of computer programs
computer program product
IBM
and there they found that … programs have technical character insofar as
in the hardware
so we have difference patents. We have electrical currents. We have transformation of
electrical charges
we must
[27:36]
character, within
but
make all the computer programs patentable.
With the first statement, we are in a dilema. We would on one hand have to patent, or consider all computer programs patentable, so the
[28:10]
On the other hand, one could also say, despite the fact that they are technical, they have be been excluded, so no programs will be patentable
Em, the borderline, or the intermediate position taken by the .. was, to be patentable, they must produce a further technical effect, going beyond the trivial … and giving rise to the
so we would have to distinguish, to draw the borderline within the computer program
[28:57]
technical effect. It may consist of controlling technical properties of devices. Yesterday we mentioned already the washing machine. If you remember the old mechanical control mechanism for washing machines is (making noises) nobody doubted that they might be patentable. These mechanical controlling devices already include knowhow of the user of the washing machine. Now with the arrival of the microprocessor, you use a system solution. Buying a microprocessor off the shelf and including the knowhow within the software controlling the microcomputer. Now, if
normal, graphic understand of the invention, why people come to the conclusion
software
should also be patentable
and if we allow that, there is another aspect
[30:29]
if somebody copies the software and sells is independently, normally he could only be sued for indirect infringement because the software
kind of software can only be protected when
[30:51]
So, em, what is also accepted, and this is maybe the more difficult aspect, .. that the computer itself needs
software, so, modifying the internal functionality of the computer
the internal functionality
what keeps the computer
running, and keeps it
operating system
[31:34]
computer program or computer data structure program
an extension of this position
computer-implemented method needs to be distinguished from the computer program
actual performance
sequence of computer .. instructions?
[32:07]
run on a computer. So a computer program is not necessarily
technical
further technical effect, whereas a method running on a computer is, according to [hitachi??]
using
computer, and would therefore
[32:49]
consequence
computer
medium, a CD-ROM
the contents of the CD-ROM
we don't have many decisions, apart from those two
dealing with computer programs. We've only a handful, really, dealing with computer programs
[33:27]
a precursor, a precursor, a, uh, phase
intellectual activity
non-invention
so it would in fact be an infringement of his
you quite often find
computer-implemented invention is a mixture of several, so called, non-technical aspects, and it's sometimes difficult to define which one
which one is the core or the most importan
[34:35]
computer implemented methods
an electrical circuit
deny the technical effect merely on the grounds???
the most imporant part of the whole production process
to allow a protection for an intermediary
more and more important technology
[35:27]
one of the marks
300,000 miles
test it virtually one year, and it works
and another crowd have a product
another decision by another board
method of confining optical
first one
now, business methods, financial transactions, abstract economic
do not have technical character and therefore do not overcome this hurdle
technical concepts, which have never been considered
[37:00]
situation UK in 1623 where monopolies were forbidden because they were used as some kind of priveleges which were favourable to the king
but in general, non-technical concepts
enter the technical domain only with the arrival of the computer, so that they may be computer implemented.
concept, with the aid of standard hardware does not overcome the second.
and would allow … would allow to overcome the first hurdle, an abstract process
[38:08]
overcome the
aspects .. incurring .. excluded aspects of computer related business
hardware, and or software,
which contributes to the technical character of the solution to a technical problem
information, functional data structures .. distinguished from .. content and information that may have technical character
[38:45]
technical system in which it is
graphic user interfaces. And graphic user interfaces, I would say
not
that graphic
implications of internal
of a technical system
OK, I do not want to say more about that
I believe the .. is still under
if any rules are excluded
Now I come, I finally come to the referral
in order to ensure uniform application of the rule
[40:13]
of the European Patent Office
have given different positions on their
the questions, and I want to read them, and you may know them
all of these decisions
how, how it was
in the press communication
on how come the
are to be applied
are mainly have to do with the first hurdle
you may understand that I have not
[41:12]
speculate
what I can
explain
this is all, all of this is controlled by the rules of procedure of the Enlarged Board of Appeal
[41:37]
Take all of their decisions
excluded from the Enlarged Board of Appeal
and two technical members
competition is normally
the Chairman, from Italy, he made after
having informed the other members and heard the other members he may replace
members of the Enlarged Board of Appeal. This has been done
five legal members. There are also five legal members, two have been replaced by external legal members. This is Mr. Sharon??? now presiding judge of the federal court of justice and Mr. Dorin?? a high court judge
[42:42]
These are the two external members. We have
we have Mr. ???? rapporteur
we have Mr. Sythe???? former French judge
[43:03]
the technical members, the permanent technical members have also been replaced
they have been replaced by
from the other computer board, acting as
acting as Chairman, to bring you something
So, what are we doing? We are saying
is internally
on the outcome
[43:59]
question
now, what are the options for the Enlarged Board of Appeal? The options are quite straightforward
because there is no divergence or the divergence is due to
because there is only one board involved or it is not a fundamental question
a legal question
other options would be to look at, ah, very strictly
questions of
have finally
[44:52]
to look at the whole system.
time frame is going to be
we might get a decision by the end of this year.
may take longer.
What will be the impact of the opinion? Of course, the board is, will be obliged to follow the opinion
[45:36]
last board of appeal, which may turn out to be
in this field
of further recall
but, more or less, the
to wait
one may be reminded of an old fairy tale
[quote from Gulliver's travels]
