Case Study No. 2
- How To Find Software Patents
- Background Of The Patent
- How Does Apple Obtain So Many Granted Software Patents in Europe?
- Why start with a ‘method’ claim?
- Dissecting The Claims
- Method Claim 1
- Computer-Readable Storage Medium Claim 14
- Electronic Device Claim 15
- What Happened During Examination?
- Contact Us
This is the second article in my Case Study series about how to successfully patent software in Europe.
If not done so already, please read my first article in this series, in which I analyse a first European software patent by Apple Inc, and dissect how this was granted.
As introduced in my first article, it is a common misconception that you cannot obtain a patent in Europe for software.
Since I am frequently asked about the perceived difficulties of software patenting in Europe, I thought a Case Study series looking at Apple Inc and their patent portfolio would be interesting. Apple receives hundreds of successfully granted European patents each year, with a large percentage being software or software-related patents.
This second article about successfully patenting software looks at how to protect an improvement to the graphical user interface of an Apple iPhone® or other Apple device to control its integrated cameras.
The second Apple patent that we will now examine is EP3483653B1.
Originally filed in May 2017, this patent granted quite rapidly (for a European patent) in October 2020.
How To Find Software Patents
How to search for software patents was covered briefly in my first article, and you can see on the front page of this patent EP’653 some similar classification codes. If you are interested in looking up more software-related patents, start with these:
Background Of The Patent
This patent application originally had 284 claims!
Considering large excess claims fees are incurred for claim numbers in excess of the first fifteen claims, and then this increases again beyond the fiftieth claim, it is not surprising that Apple decided to ultimately trim the claims back to fifteen.
How Does Apple Obtain So Many Granted Software Patents in Europe?
Apple uses a similar and simple strategy in most cases:
- Start with a ‘method’ claim, and then
- Wrap up the claim set with a ‘computer-readable storage medium’ claim and an ‘electronic device’ claim at the end.
Why start with a ‘method’ claim?
Under European patent law, software as such is excluded from patentability. Therefore, we need to be smart about the wording. If we simply use language which relates to or states ‘software’, then we are not going to get anywhere fast.
Software is, by-and-large, the processing or movement of data to enable actions to be performed. Therefore, breaking down the action of the software into a process or ‘methodology’ allows the functional characteristics to be worded in a way that allows patent protection to be granted.
Dissecting The Claims
Let’s take a look at the ‘method’ claim, the ‘computer-readable storage medium’ claim, and the ‘electronic device’ claim forming claims 1, 14 and 15 of this patent EP’653.
- Remember, when reading the following ‘method’ claim, this is explaining the interaction between the screen of the iPhone® , the iPhone’s camera(s), and the processing (in other words, data movement and therefore the software) between the two.
- Also be aware that the term used in this ‘method’ claim – ‘affordance’ means an object, such as a button or slider, which is designed to show the user the action which can be taken without having to consider how it should be used.
So, in this case, the ‘magnification adjustment affordance’ is, for example, a button or slider that appears on your phone’s screen, and it is designed that you immediately know that if you turn it or slide it, the camera’s magnification or zoom will be adjusted.
Method Claim 1
NB: My comments are in italicized parentheses to help you understand the wording of the claim.
‘A method, comprising:
at an electronic device [ed: in other words, your iPhone®] with one or more cameras, one or more input devices [ed: some sensors], and a display [ed: your iPhone’s screen]:
concurrently displaying, on the display:
a digital viewfinder [ed: so, you’re shown on the screen what the camera is seeing] for capturing media with the one or more cameras at a first magnification level [ed: for example, the viewfinder is in a none zoomed state]; and
a magnification adjustment affordance [ed: in other words, a software dial on the user screen that lets you zoom or not];
while concurrently displaying the digital viewfinder and the magnification adjustment affordance [ed: so, showing both the viewfinder and the zoom adjuster together on the screen], detecting, via the one or more input devices, a first gesture [ed: sensors in the phone detect your interaction with the screen] at a location corresponding to the magnification adjustment affordance,
wherein the one or more input devices are configured to detect a first type of gesture and a second type of gesture that is different from the first type of gesture [ed: in other words, your iPhone® has sensors and associated software that can differentiate between two different finger movements on your phone’s screen];
in response to detecting the first gesture at the location corresponding to the magnification adjustment affordance [ed: so, you move your finger on the screen of your phone in a first direction to adjust the zoom]:
in accordance with a determination that the first gesture is of the second type:
preparing to capture media with the one or more cameras at a dynamically-selected magnification level [ed: so, this implies that software within the phone makes on-the-fly assumptions to assist in the capturing of the video or image] different from the first magnification level, wherein the dynamically-selected magnification level is selected based on a magnitude of the first gesture [ed: in other words, your iPhone® interprets the size of your finger scroll, and adjusts the zoom level accordingly]; and
displaying, on the display, a zoom control at the location corresponding to the first gesture [ed: now the software in the iPhone® pops up a specific digital zoom control on your screen at your finger location]; and
in accordance with a determination that the first gesture is of the first type preparing to capture media with the one or more cameras at a second magnification level different from the first magnification level without displaying the zoom control [ed: and finally, the software determines with this different finger gesture that you don’t need the specific zoom control displayed].’
So, the general gist of this ‘software’ method claim is to cover a process which, in reality uses software code, shows a viewfinder for a camera on your phone’s screen, along with a zoom option. It detects your finger touching the screen, and interprets that touch either to bring up a specific zoom control before taking the picture, or simply to take the picture.
Computer-Readable Storage Medium Claim 14
Now, let’s look at claim 14, which reminds us that method claim 1 is primarily a software claim written to outline the processing steps of the backend architecture interconnecting the screen of the iPhone® and the camera(s).
Again, my comments are in italicized parentheses to help you understand the wording of the claim :-
‘A computer-readable storage medium [ed: in other words, some memory] storing one or more programs [ed: software!] configured to be executed by one or more processors of an electronic device [ed: for example, your iPhone®] with one or more cameras, one or more input devices, and a display, the one or more programs including instructions [ed: code] for performing any of the methods of claims 1-13 [ed: method claim 1 above is the broadest claim, so this is the one of most interest here].’
Electronic Device Claim 15
And, just in case we forget that our method claim 1 above needs to be implemented on an actual Apple product, we round off our software claim set with claim 15, which recites:
‘An electronic device [ed: for example, your iPhone® again], comprising:
one or more cameras;
one or more input devices [ed: in other words, your touchscreen];
one or more processors; and
a memory storing one or more programs [ed: in other words, software!] configured to be executed by the one or more processors, the one or more programs including instructions [ed: code] for performing any of the methods of claims 1-13 [ed: again, just focus on method claim 1 discussed above].’
What Happened During Examination?
How did these claims stack up before the European Examiner? Surprisingly well.
The European Examiner raised some initial novelty (uniqueness) and inventive step (obviousness) objections, based on a few prior patent documents. One set of counter-arguments was made.
Part of Apple’s counter to the Examiner’s objection of a lack of inventiveness was to state their ‘objective technical problem’ that the development was seeking to solve. This is not unusual in European patent prosecution. But, interestingly in this case, was how basic their statement was:
Somewhat surprisingly, the Examiner rapidly backed down.
A side-note to mention is therefore to make good use of the ‘Statements of Invention’ in the patent document when it is being originally drafted.
The Statements of Invention typically restate the language of the claims near the beginning of the patent document. However, use this as an opportunity to thoroughly explain the technical benefits of the features of the claims, what technical problems are overcome, and what results are achieved. This potentially gives you improved support when stating your ‘objective technical problem’ during examination to overcome an inventive step objection.
A second note is that the European Examiner made no comment or objection to the fact that the claim set essentially defines the implementation of software. Written in the form of a method claim outlining processing and the interaction of, largely physical sounding, components is the trick to being successful.
This European software patent covering a user interface for the phone’s camera(s) was therefore granted in short order.
In addition to the ‘Summary’ at the end of my first Case Study article, we can add these closing thoughts when considering how to successfully patent software in Europe:
- Look at all the figures used in this Apple software patent EP’653. These really do backup the processing steps that are taking place, the backend architecture, and a gives the impression of good sufficiency and enabling disclosure. The patent examiners will like this technical support;
- Plenty of ‘hardware’ type technical language is used in the claims to explain the interaction between the display, the cameras, and the processing steps therebetween. This makes it much harder for an examiner to argue that the ‘inventiveness’ of the claim only relates to excluded software matter. Again, this makes it easier to obtain grant of a software-type patent in Europe; and
- Make use of the Statements of Invention to outline possible ‘objective technical problems’ and solutions right at the outset when preparing the patent document for initial filing.
If you would like further information, please contact us via email, by telephone: +44 (0) 1242 691 801, or using the form below and we will be happy to advise and guide.