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When Does A Disclosure Invalidate A Patent?

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Figure 1 of GB2400296

This brief article explains why and when a public disclosure invalidates a patent. Most inventors and designers do understand that new developments need to be kept confidential prior to making a decision as to whether to apply for legal patent protection or not.

The confidentiality requirement in many territories around the world is required by law, and the UK is one of these.

To be granted a valid patent, one of the requirements is that your invention must be novel. Disclosing your invention publicly in any form before the filing date of your patent application can prove fatal to your patent application (or granted patent).

However, before taking the leap into patenting an idea, the designer will often want to first test their development. One or more prototypes are therefore often required.

The trap or pitfall which often catches people out is that testing a prototype in a public space can also count as a public disclosure. But, does testing a prototype on private land count as a ‘public disclosure’? HH Judge Hacon was brought in to consider this question in a recent case in the British High Court.

The patentee (patent owner), Claydon Yield-o-meter Limited, owns British patent 2400296, relating to a new type of seed drill (a machine for planting crop seeds). The invention in question is shown in Figure 1 below:

Figure 1 of GB2400296

The patentee sought to enforce their patent against a competitor, Mzuri Limited, who retaliated by claiming the patent was invalid.

The judge had to consider whether the patentee had publicly disclosed the invention, when they tested their prototype over two days in a field of their farm. The field was private land, but a public footpath ran alongside the field, separated by a 6-foot-tall hedge.

Unfortunately for the patentee, the hedge had three gaps through which the public could view the private field from the public footpath.

It is irrelevant whether anyone actually did take a stroll along the public footpath on those two days: the mere possibility of a sighting of the invention by a member of the public is enough.

Thus, HH Judge Hacon declared the patent invalid due to public disclosure by the patentee prior to the filing of the patent application.

So, how can you hopefully avoid invalidating your patent if you need to test a prototype? Possible suggestions may include the following:

1. Only trial a prototype once patent pending.

However, this may not always be practical in some cases as the trial-and-error phase may be crucial to developing a functioning invention.

2. If testing a prototype is necessary before filing, do it in a private environment which is not overlooked by or accessible to the public.

Specifically, it would be best to avoid storing or using your prototype in a room which may be visible to a passer-by walking on the street and looking through a window. Admittedly, in the case of a large agricultural machine such as the seed drill in the above case, testing the machine indoors might be difficult. If testing outdoors is the only option, ensure the public has no access to the invention.

Where the public access is restricted, but the invention is still visible to the public and it is obvious how the invention functions when seen (as in the above court case), make sure that the public has no direct line of sight of the invention, even from a distance.

Interestingly, HH Judge Hacon in the above court case commented on the use of technical equipment to gain access to the invention. He considered that a member of the public might reasonably be expected to carry a mobile phone having a camera with a zoom function. The zoom function could enable the member of the public to view details of a prototype not discernible to the naked eye. In such a case, the prototype might be considered disclosed to the public.

On the other hand, a member of the public is not generally considered to commonly carry a drone fitted with a camera. Therefore, whilst blocking up the three gaps in the hedge with a fence might have been enough to prevent the prototype testing from being deemed a public disclosure in the above case, this is increasingly less likely to be the case going forwards due to drones, camera sticks, and other equipment becoming more common.

In any case, obscuring how the invention works may be an option, for example, by cloaking the apparatus or encasing it in a housing, so that it is a ‘black box’. There is no disclosure if a member of the public knowledgeable in the field of the invention is unable to work out how the invention works.

3. Keep your invention a secret from anyone not involved in the project.

Restricting who has access to the information is one of the best ways to avoid accidental (or deliberate) disclosure by a third party.

4. If you must involve a third party (including friends and family), ensure they know the matter is confidential.

A disclosure in confidence is not deemed to be a ‘public’ disclosure. Tell them that your invention is confidential, or better yet, get something in writing if you can, in case of any fallout at a later date.

A non-disclosure agreement (NDA) prior to the disclosure would be best. However, in practice, getting friends and family to sign an NDA may be a difficult topic to broach. An option could be to text or email the friend or family member prior to disclosing the invention to them, telling them that your invention and the disclosure you are about to make are both confidential.

5. In certain countries, such as the US or Japan, inventors benefit from a 12-month grace-period to file a patent application following public disclosure.

Unlike the UK/Europe, this 12 month disclosure grace period can be extremely useful. If you do disclose your invention publicly in Japan or the USA, make sure your patent application is filed in that country no later than 12 months after your disclosure.

The USA and Japan are not the only countries having a disclosure grace period, so you may want to check whether other countries of interest have a similar system.

By following the above tips, you can hedge against your patent being declared invalid!

 

If you have any patent, design or trade mark queries, 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 you. 

 

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Patenting Apple’s Siri Software in Europe

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Patenting Apple Siri Software in Europe

 

Case Study No. 3

Index

INTRODUCTION

This third Software Patent Case Study follows on from my earlier First and Second Case Studies analysing how to patent software in Europe.

Below, we will dissect a recent European software patent awarded to Apple Inc which covers some of the specific functions of Apple’s Virtual Assistant, Siri® to see exactly how Apple got this patent allowed.

As with Amazon’s Alexa® and Google’s Assistant, the home speaker and virtual assistant market is likely to grow exponentially in the coming years. It will therefore become increasingly valuable as we become more connected and more reliant on this technology, which will improve with the faster network speeds of 5G and then 6G also becoming the norm.

Unsurprisingly, therefore, the tech-giants need to protect their development work, and patent protecting the operation of their individual virtual assistants is a priority.

As with the earlier articles in this Case Study series, it is a common misconception that ‘software’ cannot be patented in Europe. As with many technical developments, there are always likely to be hurdles to overcome, but knowing the general strategies that result in successful grant of software patents in Europe allows for consideration and review at the outset, along with a plan for success to be formulated.

So, let’s take a look at this recently granted European patent EP3453019, which Apple secured and which is titled: ‘Intelligent List Reading’.

Can you really patent protect ‘intelligent list reading’? The answer is yes!

 

SOFTWARE PATENT CLASSIFICATIONS

As with the earlier patents analysed in this series of articles, this patent was classified in some of the ‘G06F’ classifications relating to ‘information retrieval; database structures therefor; file system structures therefor’, and ‘G10L’ classifications relating to ‘speech recognition’. See the following graphic from the front page of the patent:

Patent Classification

 

EXAMPLE SEARCH RESULTS FOR SOFTWARE PATENTS

If you are interested in looking at what else appears in these Classifications, see the following links – you will be amazed at what is being submitted, by which companies, and what is being granted.

Remember, ‘G06F’ is a broad Classification term, and we can drill down further into this Code to refine our searches (such as G06F3/16 or G06F16/33 as shown in the above graphic).

Similarly, ‘G10L’ is a broad term, and likewise can be refined (such as G10L 15/22 and G10L 15/18 as shown above).

Starting with G06F search examples:

  • Classification search results using ‘G06F’ worldwide (i.e. including Europe, the USA, China, and so on): Click here
  • Classification search results using ‘G06F’ for Europe only: Click here
  • Classification search results using ‘G06F’ for Europe only and only which are granted: Click here

And now for G10L search examples:

  • Classification search results using ‘G10L’ worldwide (i.e. including Europe, the USA, China, and so on): Click here
  •  Classification search results using ‘G10L’ for Europe only: Click here
  • Classification search results using ‘G10L’ for Europe only and only which are granted: Click here

 

WHAT PATENT IMAGES DO WE NEED?

This is a very common question, and Figure 1 in Apple’s EP’019 patent provides a nice example of what we need to show to the Patent Examiners. This first image provides a high-level overview of the possible system.

Do take particular note of the end user, shown at the bottom left, the user interface (referenced as 104, for example, a smartphone or tablet), and then a second user interface or second screen 122, both of which interface with a cloud computing network.

The cloud computing network then interfaces with the remote backend hardware and software architecture, shown in a broad block-diagram manner:

Figure 1

This type of Figure 1 diagram is a nice way to ease the Patent Examiner into the subject of the patent.

By showing the hardware items, we are aiming to convince the Examiner that the focus of the patent is not purely relating to ‘software’ alone, which may cause patentability issues due to software on its own being excluded under patent law.

Next, we have Figure 2A, shown below.

Although this Figure 2A looks complex, it is actually just showing you the iPhone® or similar device (user device 104 shown in Figure 1 above), and how the circuitry and processing modules communicate.

Again, we are easing the Examiner into the detail, and persuading her that this relates to ‘technical’ matter and not solely software:

Figure 2A

The subsequent drawings all follow the same idea. It is not until Figure 7A that ‘Siri’ the personal digital assistant is actually properly introduced as a generalised block diagram with ‘hardware’ type language – again trying to steer away from purely software terms:

Figure 7A

Figures 8A onwards then introduce the algorithmic processes, broken easily into generalised logic steps, which allow Siri to function:

Figure 8A

And, wrapping it all up, Figures 9A onwards give the Examiner an ‘in use’ example of Siri in action, using the previously presented device, system, and algorithms:

Figure 9A

 

SUMMARY OF THE REQUIRED PATENT IMAGES

So, in summary, providing the Patent Examiner with the following general categories of patent diagrams in a ‘software’ patent is an excellent starting point:

  1. High-level backend architectural framework of the overall system;
  2. A more focussed generalised view of the backend hardware of the end-user device;
  3. The algorithmic processing/method steps of the software, how the data moves, and the logic flow paths;
  4. One or more examples showing the novel system in action.

 

THE FORMAT FOR ALLOWABLE SOFTWARE CLAIMS

To successfully patent software concepts in Europe, the general formula to start with is along the lines of:

Main Claim 1 – outline in technical language the methodology, algorithmic steps, and/or backend processes that are taking place by use of the software combined with the hardware infrastructure to achieve the end result;

Main Claim 2 – cover the methodology of claim 1 via ‘non-transitory computer readable medium’ language;

Main Claim 3 – cover the hardware system itself which implements the Main Claim 1 methodology;

Main Claim 4 – cover a physical electronic device (i.e. an iPhone®) utilising the methodology of Main Claim 1.

Lets now take a look at each of these Main Claims, as granted in Apple’s European software patent EP’019.

Focussing firstly on Main Claim 1, this details the data processing steps.

Note (highlighted with red circles) where ‘hardware’ type terms are used, but which actually represent data items, and thus is actually software related but deemed patentable language:

Main Claim 1

Main Claim 2, which in this EP’019 patent is numbered as claim 30, then covers the computer memory having code thereon to implement the method of Main Claim 1:

Main Claim 2

Main Claim 3, which in this case is numbered as claim 32, recites the overall ‘system’, having the hardware features, being processors, along with the memory of Main Claim 2 (claim 31 above):

Main Claim 3

Finally, Main Claim 4, which in this case is numbered as claim 34, covers an actual physical device, such as the iPhone®, having various hardware components which interact with each other in some form.

Note that the ‘processing unit’ in this Main Claim 4 (claim 34) is an item of hardware, but essentially repeats the algorithmic processing steps of Main Claim 1:

Main Claim 4

By submitting the Main Claims in these forms, the European Examiner had no issue accepting that the monopoly being requested was related to technical matter, and thus not solely excluded software matter. The first potentially problematic hurdle was overcome.

 

SUMMARY OF THE FORMAT FOR ALLOWABLE SOFTWARE CLAIMS

So, in summary, providing the Patent Examiner with the following general categories of patent claims in a ‘software’ patent is an excellent starting point:

  1. A method of operation;
  2. A memory having code thereon to implement the method;
  3. A system having one or more processors, and a memory with code to implement the method of operation;
  4. An electronic device having hardware items configured to implement the method.

 

WHAT HAPPENED DURING PATENT EXAMINATION?

Wrapping up this analysis, by Apple submitting its claim set in the above form allowed them to overcome the first of three hurdles to grant.

The first hurdle considered by any Patent Examiner is: ‘Is the subject matter excluded under the patent law?’

In Europe, one of these exclusions is if the ‘invention’ is purely software, then it is not technical, and thus is it not grantable as a patent.

The above claim language, using physical hardware type terminology conveys to the Examiner that the invention being claimed in more than only software. It is therefore seen as being technical in nature, and no objection is raised in terms of excluded subject matter.

The Examiner then moves on to the second and third hurdles to grant, which are novelty and inventive step.

For this EP’019 patent, the Examiner objected to the novelty (uniqueness) of the original claim language shown above in view of two earlier patent documents (US’274 and US’013).

Apple counter-argued along with submitting minor revisions, shown below (additions made by Apple shown underlined, deletions crossed through).

This satisfied the Examiner. It was accepted that there was a sufficient technical and cleverly unique distinction, and the patent was granted.

Granted Main Claim 1:

Granted Main Claim 1

Granted Main Claim 2 (finally renumbered as claim 12):

Granted Main Claim 2

Granted Main Claim 3 (finally renumbered as claim 13):

Granted Main Claim 3

You will note that Apple decided to reduce the number of their claims during examination, and interestingly decided to remove their ‘system’ claim.

 

WRAPPING IT ALL UP

For successfully patenting software in Europe, focus on the following:

  1. The patent drawings – provide a high-level overview of the system frame work and any relevant user device as generalised block diagrams, logic YES/NO flow charts showing the processing steps, and some in-use examples; and
  2. The categories of patent claims – provide a method of operation; memory having the code; a system using the memory; and a device having hardware to implement the method.

 

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.

 

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Opposing A European Patent On A Tight Schedule

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Opposition deadline on a tight schedule

 

What do you do when you are up against a competitor’s European patent, and you have minimal time to oppose or revoke the patent in order to operate freely?

You know the story – you’ve geared up for an all-important product launch, and take one last look at the patent landscape to make sure you have freedom to operate. Unbeknownst to you, one of your competitors has recently had a European patent granted which could derail the launch. You are close to the deadline to centrally revoke (or oppose) the patent at the European Patent Office (EPO). What do you do with the time you have left?

Get organised

Preparation is key for oppositions before the EPO. If you can’t make a concrete case for revocation, then you’re likely to lose. How do you know what constitutes a concrete case, though?

Construe the claims

The claims of a patent define the scope of protection conferred. Claim construction, that is, interpreting what the claims actually say, will determine what prior documents will be relevant to your opposition. Just because a prior document looks close to the product covered by the patent, it doesn’t necessarily follow that that document represents the best starting point for any attack to revoke a claim, in whole or in part.

Considered claim construction will allow you to identify where the weaknesses in the claim as granted lie, and might flag some grounds of opposition that would otherwise not be apparent, such as an inadequate amount of disclosure to allow the skilled person to work the invention (insufficiency) or new material introduced after the original date of filing of the application (added-matter).

Review your own position

An opposition need not result in complete revocation of the patent to be successful. Forcing the owner to limit the patent to exclude your arrangement can be extremely worthwhile. As such, focussing on the possible options to limit the claims in the patent in a manner which would result in non-infringement may give the owner an easy ‘win’ – maintenance of the patent without a difficult battle. If that can be achieved, then the infringement risk can be mitigated.

Delve into the file history

Hunting through the file history, that is, the documentary trail to grant might seem like a tedious task, but the advantages are clear; if the proprietor has had a difficult path to grant, then exploration of similar themes identified by the examiner may be fruitful if more pertinent prior art can be found.

The benefit of this focus is that there will be ready-made obviousness (i.e. inventive step) argument on file from the proprietor which can potentially be countered in detail. This strategy can yield quick results if prompt filing of a notice of opposition is required.

Similarly, digging through the family histories of other patents or applications linked to the European patent might uncover documents which the owner has been avoiding bringing to a European examiner’s attention.

Search for prior publications

A hunt for prior art documents can make or break the prospects for opposition. Patent searches in non-European languages can yield quick results, since these documents may have been more difficult for the European examiner to find.

One would hope that the European patent examiner had been thorough in uncovering relevant patent documents, but classification searching in tangential classes to that of the patent may unearth new prior art citations which could be valuable, particularly in obviousness attacks.

What can also be useful is hunting through your own back catalogue of information accrued over the years. Catalogues, sales information, advertising – these are all public disclosures which may show material which may not have been worthwhile including in a patent application, but which may be indicative of the mindset of the skilled person prior to the filing of the patent.

The search for prior publications should not necessarily be considered complete as of the opposition deadline. Whilst facts or evidence which are uncovered post notice of opposition are generally disregarded, relevant documents pertinent to the maintenance of the patent can be filed late. If you keep searching, you might find a ‘killer’ document!

Play the system

The submission to the EPO that you want to make an opposition, the notice of opposition, must be filed not later than nine months from the publication of grant of the relevant patent in the European Patent Bulletin. The notice of opposition must contain an indication of the facts and evidence in support of the grounds. Failure to do so will result in an inadmissible opposition.

That said, the evidence and arguments indicated may actually be submitted subsequently, so if there is a real rush to meet the opposition filing deadline, this could be a useful tool to rely on to ensure that an inadmissible opposition is not filed.

Opposition can be done at short notice!

Overall, there are lots of tactics that could be considered for opposing the grant of a European patent, even if time is short. Opposition is always worth factoring in as a choice, as often the consequences of taking no action can be seriously damaging to commercial strategy. This applies even where you are running on a tight schedule!

Summary

To oppose a European patent on a tight schedule, you should therefore:

  1. Get organised
  2. Construe the claims
  3. Review your own position
  4. Delve into the file history
  5. Search for prior publications
  6. Play the system

If you need to defend or oppose a European Patent, 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 you. 

 

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Why should you patent an invention?

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Why should you patent an invention?

 

When a prospective client approaches Albright IP, they usually have a reasonably clear idea about what they would like us to do.  If they have a new innovation which they regard as an invention, then what they really want is a granted patent to protect it.

But occasionally, in fact rarely, we are asked, “What are the merits in patenting an invention?” and “Would it be better to keep my invention secret?”.

In some technologies, particularly software development, secrecy can be a useful tool.  This may be because a patent is not actually available due to the lack of an inventive technical contribution, or it may be because a window of 18 months’ secrecy is not considered a sufficient enough market lead time before disclosing the invention in a patent application publication.

The reality is that secrecy can only work in certain circumstances for certain products and it relies on the highest levels of corporate trust.  You may consider it risky to rely on securing years of expensive research and development under a veil of secrecy.  If you start marketing a product, how long is it before clever, well-funded competition will get to the invention anyway?  Is it 2 years, 5 years or 10 years?  Or is it 20 years, as offered by a patent monopoly?

A patent is a monopoly right

The basic idea of a patent is that you disclose your idea to the patent office and if the idea is new and inventive, you are granted a monopoly for a limited period (up to 20 years).  The other side of the bargain is that the idea is published 18 months after your application.  This means that if the patent does not grant, or you let it lapse through non payment of renewal fees, that the invention is available for others to use.  Secrecy is lost and you are not protected.

However, whilst you have the granted patent you have the sole right to work the invention, for example, to make it, use it, import it, export it, sell it and keep it.

You also have the option to sell it, or licence it to a third party for a fee.

Why would you want a monopoly right?

The ability to control an invention can lead to greater business success, because you can supply something unique.    You can charge higher prices and hold back the tide of competition.  Furthermore, it gives you a bargaining chip, should you want to take someone else’s invention which builds on your ideas.  This is called cross-licensing and can be very effective.  It is an exchange of technology on agreed terms.

If an invention becomes a standard way of doing something in a field, then it may be that the invention will be licenced under FRAND terms.  You are paid royalties for the licence, but the terms must be fair, reasonable and non-discriminatory.  These terms are necessary for the greater good, for example, to allow a future medical advancement, or to allow everyone to use the same technology in a mobile phone.  They also protect the patent holder and reward their investment in research and development.

Can I sell a secret?

Yes, of course, you can sell or licence a secret.  But it is difficult, because you are relying on corporate trust.  Once the secret is blown, it is gone for good.  There may be good recompense, but the monopoly is over.

Tax benefits of patenting

In the UK, profits from patented products attract large tax incentives.  You may be able to reduce corporation tax on your profits from patented inventions by up to 50%.   Combined with generous research and development tax breaks, innovative companies have a great incentive to develop their ideas and protect them through patenting.

The disadvantages to patenting

Most of the disadvantages to patenting that I have heard relate to cost of obtaining a patent.  However, the real cost of patenting has reduced due to improved processes and competitive pressure on patent firms.  Patents should be good value and really that can only be determined by the quality of the invention combined with good commercial exploitation.  They are, after all,  commercial tools.

Patents can take time to obtain, but this is not always disadvantageous.  Sometimes it is good to keep your competitors guessing what the scope of your granted patent may be.

But the biggest disadvantage levelled at patents is the disclosure requirement. It’s true that a patent disclosure is meant to be enabling, that is a skilled person can put the invention into effect. But the requirement is to disclose the invention, not to make a viable product for your competitor. The difference between the two is not usually small.  It could take a long time for someone to reach your stage of development, and if they do, then the patent should enable you to maintain your monopoly.

Cost of Enforcement

I am often asked about the cost of enforcement of a patent and if it’s practical.  In most cases, IP disputes can be settled for a reasonably manageable cost, but IP insurance premiums are very good value and should be considered.  They can help you defend your patent, but also be relied on in defending infringement allegations, should they arise.

Conclusion

There are no tax breaks for keeping secrets and a breach of confidentiality can be ruinous.  In most technologies, secrets are not an option anyway, because a product sale or a marketing page on the internet does the disclosing and there are reverse engineers aplenty.

I’m a patent attorney, I love my work and I see patents as beneficial.  Trade secrets have their place, but patents are powerful monopolies, they form an important part of corporate strategy and together with careful policies around public disclosure, they can deliver huge benefits for your firm.

If you need to defend or oppose a European Patent, 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 you. 

 

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Winning An Opposition Against A European Patent

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Winning a Patent Opposition

 

This brief case study provides an overview of strategies for winning an opposition submitted against a European Patent.

The statistics for opposition of a European patent before the European Patent Office (EPO) suggest that the process can be considered something of a gamble.

There is a relatively consistent spread between the three possible outcomes in opposition, where a decision is communicated by the EPO examiners:

  • upholding of the patent as granted (~30%);
  • upholding of the patent in an amended form (~40%); or
  • revocation of the patent (~30%).

At first glance, this might seem to be more favourable to the patentee, as there is an approximately 70% chance of the patent being maintained in some form. However, it is equally likely that a limitation of the patent as granted may actually be more favourable to the opponent than the proprietor, since a potential infringement scenario could be excluded.

The number of opposition filings over the past few years has remaining relatively constant. However, from January 2021, newly-filed oppositions will be presumed to be conducted by video-conference by default, in the absence of strong persuasive reasons to the contrary. This reduces the cost of filing oppositions for many prospective opponents, as the representative will no longer need to spend time travelling to and from the EPO offices. Opposition filings may therefore become more common.

Regardless of whether you are a prospective opponent, considering the possibilities for opposing your competitors’ patents, or whether you are looking to strategically prepare in the potentially increased likelihood of a speculative opposition being filed against your own commercially critical patents, then it is worthwhile giving thought to how to improve your prospects for success during opposition proceedings.

To do so, we can look back at an Albright IP success story as a Case Study:

EP2963134

We received a notice of opposition for EP2963134 on 21 February 2019.

Oral proceedings then took place on 3 March 2020, in which a notice of rejection of the opposition was communicated.

How did we go from a potential disaster for the patent owner to complete maintenance of the patent as granted in just over a year, which is a remarkably quick turnaround for an opposition?

  • Preparation – ensuring that you are fully prepared for events during opposition proceedings is key to success.

Whilst we were confident in the merits of the facts and our arguments which we had prepared in respect of the patent as granted (which proved to be well-placed), there is no substitute for thinking through the potential fall-back positions which would be acceptable and ensuring that the merits of those fall-back positions are completely considered.

In this instance, several auxiliary requests were entered into the proceedings in order to address potential issues, in case the Opposition Division did not agree with the merits of our initial arguments.

Taking this approach provides you with options for limitation, instead of the binary choice between maintenance and revocation.

  • Focus on Detail – the Opposition Division issued a preliminary opinion on patentability with the summons to oral proceedings on 10 September 2019, which appeared to be prejudicial to the maintenance of the patent.

Whilst disappointing at this early stage, it forced us to focus on the perceived deficiencies in the submitted arguments, rather than merely relying on repetition of the arguments used during substantive examination before the Examining Division.

  • Procedural Expedience – ultimately, the Opposition Division only has a limited amount of time to spend on each case.

Ensuring that our arguments in counter to each of the points in the opposition were clear, but more importantly concise, will make the Examiner’s job easier.

There can be a temptation to prepare expansive arguments to support any given point, particularly in written proceedings, but the final message is the one which needs to be followed by the Examiner.

  • Co-operation – we sent two attorneys to the oral hearing, and this was invaluable.

Time could be well-spent stress-testing the arguments to be used in advance of the oral hearing, and in the recession periods, strategic considerations were made which might not have occurred to a sole representative. Two heads are usually better than one!

In the end, the facts and arguments were on our side, and the patent was successfully maintained in full. This may well have come as a shock to the opponent, who had the advantage of the preliminary impression of the Opposition Division being in their favour at the time of issuing the summons to oral proceedings.

What, therefore, can you do to improve your prospects when opposing a patent?

  • Preparation – it is clear now that the evidence favoured our client, being the patent proprietor.

Although the opponent found new prior art documents which they cited against the patent, it was not pertinent once considered in full.

This shows the value of comprehensive searching prior to filing an opposition. The more searching that is performed, the more likely it will be that relevant and damaging prior art can be found.

  • Focus on Detail – we submitted counter-arguments and possible auxiliary requests in response to the summons to oral proceedings.

These counter-arguments provided the basis for our successful defence of the patent.

The written correspondence prior to oral proceedings gives you a good understanding of what the other side’s position will be. It is imperative that time is spent understanding their position in detail, so that you can demolish it during a hearing.

  • Procedural Expedience – rambling arguments will frustrate the Opposition Division, but not nearly as much as revisiting points already discussed during the hearing.

It is critical to have a skeleton plan for arguing your case. You must be succinct, and not revisit grounds which the examiners will have already reached an opinion on.

  • Co–operation – whilst having a partner present for the oral hearing will help you to quickly think our arguments on the fly, it is also worth considering how best to co-operate with the examiners.

Having prepared documents ready for use in the hearing which you can refer to will be of enormous value to both your case and to helping the Opposition Division understand your arguments.

It is transparent that, regardless of whether you are the opponent or proprietor in an opposition, preparedness is key.

There is no reason why decisions should be made last-minute: the opposition window is nine months from publication of grant. There is plenty of time for an opponent to get their arguments in order; similarly, there will be ample periods for reflection for the proprietor in the written correspondence prior to any oral hearing in which a full and complete defence can be prepared.

Given the comparative cost-effectiveness of opposition against revocation in national offices, it is well-worth being prepared now to revisit any opposition strategies you may have, in order to sure up your commercial position.

If you need to defend or oppose a European Patent, 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 you. 

 

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How Patents Can Let You Make Money from Covid-19

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Covid 19

 

If you watched the Downing Street press briefing on Monday 23rd November 2020 then, amongst the utterances of “jolly” and “alas” from the UK Prime Minister, you may have noticed a comment from Prof Andrew Pollard.

 

Prof Pollard – director of the Oxford vaccine group – said that, with pharmaceutical giant AstraZeneca, they had agreed a not-for-profit approach during the pandemic for the University of Oxford vaccine.

 

So, what does this mean? How could they make a profit? And why have they agreed this approach?

 

What?

 

Well, the University of Oxford have set out default guidelines on how their intellectual property relating to Covid-19 will be used and exploited. They say that licenses for the relevant intellectual property rights will be offered at a price to allow at-cost or cost + limited margin supply.

 

But this will only be for the duration of the pandemic, as defined by the World Health Organisation (WHO). This therefore leaves the door open for making a profit on the vaccine after the WHO considers the disease to be no longer spreading worldwide.

 

How?

 

The main licences that the University of Oxford would be offering with regards to the vaccine would be for patent rights to the vaccine itself or methods of manufacturing the vaccine. Patents are rights offered by governments which provide a limited term monopoly to the owner or licensor for making/selling/using an invention. Patents are typically an important part of how new pharmaceutical developments are made, since they provide the opportunity to recoup the large investment costs required.

 

Patent applications usually take 18 months to publish, so the University of Oxford vaccine patent application is likely not publicly available yet. Possibly one relevant patent application might be GB2001486.6 going to a process for making adenoassociated viral vectors, although the details of this are not publicly available at time of writing, so this cannot presently be confirmed.

 

Why?

 

The University of Oxford and AstraZeneca have likely agreed the not-for-profit approach in a bid to maintain and improve public relations.

 

Unwise enforcement of intellectual property rights can have a negative impact on public relations in the best of times, but in the grip of a damaging pandemic this could be disastrous.

 

Additionally, to some, “big pharma” has a bad reputation – supposedly exploiting the sick for large profits. A magnanimous approach to Covid-19 vaccine distribution provides pharmaceutical companies an unprecedented shot at global redemption in the court of public opinion.

 

Once the pandemic has ended and public interest has subsided, it seems doubtless that large numbers of Covid-19 vaccines will still be required. At this point, the University of Oxford could pursue a more typical patent commercialisation approach – even a modest royalty fee on vaccine production would allow for large returns.

 

However, the University of Oxford/AstraZeneca vaccine development has been decidedly atypical – receiving huge levels of public funding ($1.7 billion as suggested by Médecins Sans Frontières). In view of this, some might question whether the developers should retain rights for any form of commercialisation. Therefore, the level of any royalty fee will need to be carefully balanced with the desire to maintain positive public relations. Careful monitoring of public opinion would be advisable.

 

The approach from University of Oxford seems wise and appears to strike a good balance between the potential to earn money (which is necessary to help make the scientific breakthroughs of tomorrow) whilst mitigating the risk of outraging the public due to accusations of profiteering. This approach would seem a sensible model for other entities developing Covid-19 related products or services.

 

If you have a development you are interested in protecting, 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 you. 

 

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How Apple Successfully Patented A Software User Interface for A Camera

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Software interface

 

 

Case Study No. 2

 

Index

 

Introduction

 

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:

 

Software

 

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:

 

  1. Start with a ‘method’ claim, and then
  2. 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.

 

  1. 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.

 

  1. 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];

 

a display;

 

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:

 

Case

 

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.

 

Conclusion

 

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.

 

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Brexit IP: Prepare for the worst, hope for the best

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Brexit - 31 January 2020

 

After several years of debate and negotiation, the UK will finally leave the European Union at midnight on the 31st December 2020. This brings with it some fundamental changes for UK companies with European trade mark and design registrations. Julia House, trade mark Attorney and Director at Albright IP outlines what companies need to think about and how Albright IP is ready to support them…

 

Following Brexit, the UK will no longer be governed by European law and in particular, be bound by decisions of the European Courts. This also means that the UK can no longer be part of the European Union Intellectual Property Office (EUIPO)

 

So, what does this mean? Well, in a nutshell, EU and UK trade mark and design protection will now be separate.

 

Moving forward, any existing European registrations will be automatically cloned in the UK (to create UK registrations) as EU registrations will cease to be covered in the UK.

 

Patents, however, will remain unaffected as they are covered by a separate treaty, which, hopefully, will not be repealed.

 

The newly cloned registrations will become your UK equivalent right and while this will be created freely and automatically, there will be renewal fees in the future which will have to be paid separately and will need to budgeted for.

 

Preparation is key

 

At Albright IP we are well prepared for Brexit, we have a network of European mainland attorneys who will assist us with our European cases. But essentially not a lot will change, we will continue to handle all cases, be the first point of contact for our clients and continue to provide the same high level of service, advice, and support as always.

 

For us this is a tried and tested approach, as a specialist IP attorney we have been working in partnership with foreign attorneys for over a decade now, it helps to minimise client costs (no overheads of foreign offices) and gives our clients the ‘on the ground’ expertise for each individual country we operate in.

 

Most of all, it gives our clients choice, our trusted partners have established businesses within Europe and it will be no different to how we operate in the US, China or Australia, where we are also not direct representatives.

 

Business as usual

 

For both existing and new clients, it will be business as usual and we will remain the key point of contact for your IP, we will continue to monitor your cases on our database, send renewal reminders, and ensure that the deadlines are met.

 

Our corporate customers will also be able to use our IP portal which will be uploaded with cloned cases once they have been generated by the UKIPO, helping to give you a ‘real-time’ view of your IP across the EU and the world.

 

For any of our clients with existing EU trade mark and design registrations, we will be writing to them directly to advise them of their cloned registrations and sending timely reminders for any decisions that need to be taken.

 

For any trade mark and design applications that are yet to be filed, we will guide you towards the most cost-effective and cohesive filing strategy to follow, to ensure the best protection is secured in the UK, EU, and beyond.

 

Worry not, it will be a smooth transition, and we will continue to keep you up to speed with your new rights, and the full implications of Brexit upon your IP.

 

Accelerated patents – are you making use of the Green Channel?

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Green Innovation

As the government grapples with the need to map out what the post-COVID landscape might look like, there is one thing for certain, now is the time to take the opportunity to do the right thing for our world. There is much discussion about the need to ‘build back better’ –  Robert Games, Managing Director of IP Attorney, Albright IP talks about the need to ensure we rebuild around a green economy with a focus on innovation that addresses climate change…

 

If we want a more resilient and sustainable future, we have to grasp this opportunity to reinvent our economy and put ‘green’ business and renewable energy at the top of our ‘build back better’ agenda. Climate change must be at the heart of any plan to address the post-Covid19 economic crisis.

 

Governments around the world have proved how swiftly they can move in the face of a pandemic and there is no reason they cannot act with same speed and agility to tackle carbon emissions. A recent international survey carried out by Ipsos Mori shows that most people believe that climate change is just as important an issue as the coronavirus, suggesting there would be support for a recovery plan that embraces carbon reduction strategies.

 

A critical ingredient in any green recovery plan is innovation, in all its guises. Whether it’s the development of smarter energy systems, more energy-efficient manufacturing processes, decarbonising heat, the harnessing of digitisation or the introduction of green travel solutions, there’s huge opportunity for so many companies to rethink the way they work and do things differently.

 

We can’t risk slipping back into our old ‘business as usual’ ways – something the EU has already recognised. It’s developing a Green Deal that will make the combined EU economies more stable and sustainable, with a focus on supporting businesses that are reducing carbon emissions and / or increasing digitisation. It is emphatic in its view that not a single Euro should be spent on propping up old, dirty industries.

 

It wasn’t that long ago that renewable energy technologies such as solar panels and wind turbines were regarded as ineffective, expensive, and too reliant on subsidies. Last year, renewables accounted for 72% of all new energy sources installed around the globe – backed by investments that could achieve returns of more than 800%. And just this month, Britain chalked up a record two months without using coal.  Our world energy map is changing irrevocably, and now we have the chance to change other sectors, too.

 

If we’re to succeed, however, innovation must be supported, encouraged, and promoted. It should be on the agenda for every company, large or small, and the government needs to step up and ensure the right environment exists to enable new ideas to thrive.

 

What if, for example, work to develop charging networks for electric vehicles (EVs) was to be incentivised and supported? Earlier this year, the results of a six-month trial to test the world’s first pop-up electric vehicle charge point in a residential street in Oxford were revealed – paving the way for a potential wider roll-out.

 

The UEOne pop-up charge-point project was developed and manufactured by Albright IP’s product design sister company, Duku as part of a consortium alongside Urban Electric and Oxford City Council, and protected by us.

 

The project involves designing, prototyping, testing and manufacturing six retractable bollard-style charge points. The bollards rise automatically when required and disappear out of sight when not in use. The consortium received funding from Innovate UK to help it realise the concept and prove its value in meeting the growing need to fast track the UK’s EV charging network.

 

This is a great example of how companies with expertise, can join forces to address a need, taking new thinking and new approaches, with the support of government funding, and delivering a solution that’s not only scalable, but offers the double benefit of helping both the environment and the economy. As the common parlance would have it, what’s not to like?

 

It’s important, of course, for companies to protect their ideas and innovations, and the patents process enables organisations to do so. However, this can take a long time … which is where the ‘Green Channel’ comes in.  This is a route by which companies can access an acceleration of the ‘search and examination’ process which is integral to applying for a patent.

 

To qualify, the invention or process must have an environmental benefit. It’s simple to apply on-line and if successful, the whole patent process will be speeded up. And, importantly, it also places the applicant in a much better position from which to apply for R&D tax benefits and the Patent Box.

 

The Patent Box is designed to encourage companies to keep and commercialise intellectual property in the UK. It allows companies to apply a lower rate of Corporation Tax – currently 10% – to profits earned from its patented inventions.

 

The EV charging trial is a perfect example of how, with the right support and partnership approach where appropriate, the UK can take the lead in exploring and applying innovation, and play a role in any economic recovery.

 

It’s good to see that the government has acknowledged the need for ‘green investment’, with its recent announcement of £2bn package for England, for projects like home insulation and the cycle repair voucher. This is part of its wider £3bn plan to cut emissions. But this simply isn’t ambitious enough – Germany, for example, is investing €40bn (£36bn) in green jobs and energy efficiency, and France, which has already pledged €15bn to tackle the climate crisis. We can and must do better.  The BBC have reported that the Government has spent £190 bn on the Coronavirus crisis.

 

It’s unlikely there will be any single quick fix to the damage done by Covid19, but if we act now, innovate, think differently, and are willing to challenge the status quo, we have a much better chance of creating a more resilient economy and a world that’s in better shape to pass on to future generations. No one knows for sure what our world will look like post-pandemic, but I am certain that this is an economic and environmental opportunity that we cannot afford to ignore.

 

How does Apple successfully patent software?

by

Apple Software

 

Case Study No. 1

 

Index

 

 

Introduction

 

 

Having handled patent cases for more than 20 years, I have lost count of the number of times clients have asked “How do I patent software?”, or state that “Software is not patentable in the UK or Europe”.

 

My answer has always been, that although this area of patent law is generally more difficult and complex, it is certainly not impossible to obtain granted software patents.

 

Once the client stops looking perplexed, I have to then explain the initial strategic thought process to allow us to be successful when patenting software. This takes a reasonable amount of time, which led me to the conclusion that I needed to write this series of brief case studies which examine how to successfully patent software.

 

Apple Inc is a massive brand, known around the world. Not only do they develop amazing hardware and have fantastic designs, they obtain large numbers of granted patents almost daily. Many of those grants relate to software patents.

 

Each article in this short series dissects a granted patent issued to Apple Inc to guide you as to how we can successfully patent software in at least Europe.

 

The first Apple software patent that we will examine is EP3435240.

 

Where to Find Software Patents?

 

Software patents are generally located under the broad classification code of G06F.

 

Code G06F is described as: ELECTRIC DIGITAL DATA PROCESSING.

 

G06N is also referred and is described as: COMPUTER SYSTEMS BASED ON SPECIFIC COMPUTATIONAL MODELS.

 

There are many sub-categories within both of these classifications, and by just looking in these categories alone, many granted software patents can be reviewed.

 

Apple’s European patent EP3435240 has an Abstract which reads (bolding added for emphasis):

 

‘Systems, apparatuses, and methods for efficiently moving data for storage and processing are described. In various embodiments, a compression unit within a processor includes multiple hardware lanes, selects two or more input words to compress, and assigns them to two or more of the multiple hardware lanes. As each assigned input word is processed, each word is compared to an entry of a plurality of entries of a table. If it is determined that each of the assigned input words indexes the same entry of the table, the hardware lane with the oldest input word generates a single read request for the table entry and the hardware lane with the youngest input word generates a single write request for updating the table entry upon completing compression. Each hardware lane generates a compressed packet based on its assigned input word.’

 

Essentially, this is movement and manipulation of data. In other words, it’s software!

 

However, the Abstract is written to convey ‘hardware’ type language. The Abstract is the first statement that the Examiner reads. We need to make the Examiner think this is more than just software, to try and avoid him simply jumping to a conclusion that this is excluded matter.

 

What Patent Images will Help Obtain Grant of a Software Patent?

 

Figure 1 of the Apple patent which accompanies the Abstract shows the following:

 

 

This kind of flow chart is extremely useful in conveying the technical attributes of the system. I do always encourage clients to provide such flow charts. Please do look at the other drawings in the Apple patent, there are fifteen pages altogether. All are useful in explaining to any patent examiner the movement and manipulation of the software data between ‘hardware’ type components within the backend processing architecture.

 

It is not necessary to have this many pages of images, but it does certainly help convince the patent office examiners that we have a clearly sufficient and enabling disclosure, thereby potentially aiding smoother prosecution.

 

How was Claim 1 Written to be Considered Patentable Matter?

 

Claim 1, in this case, was originally filed as follows:

 

 

You can easily see that the language used is largely ‘technical’. Use of words such as ‘buffer’, ‘table’, ‘circuitry’, ‘hardware lanes’, ‘packet’ and ‘stores’, for example.

 

Under European patent law, the examiners will argue that the claimed material is not patentable if it is not ‘technical’ in nature. If the language is purely software related, then there is a strong chance that this first hurdle will not be overcome, the development will be considered ‘excluded matter’, and the application will thus be refused.

 

The second independent claim, namely claim 11, was written as a method:

 

 

As you read the above claim, you will see that similar language has been used, including the use of ‘hardware lanes’. This again conveys technical language, and thus a lower likelihood of being found to be none patentable subject matter.

 

The third independent claim on filing was claim 15 going to a ‘system’:

 

 

Similarly to the above comments, the examiner has no major issue with the patentability of this ‘system’.

 

The examiner did contend that the ‘apparatus’ claim 1 and the ‘system’ claim 15 were effectively two ‘apparatus’ claims covering the same matter. Claim 15 was thereby removed to easily overcome this objection.

 

Why was Claim 1 objected to?

 

With software patenting, once the first hurdle of ‘is it excluded subject matter?’ has been overcome, then prosecution is very much like any mechanical or electronics patent. The two hurdles that have to be overcome are ‘novelty’ and ‘inventive step’. In other words, is the claimed improvement unique and not obvious?

 

For this software patent for Apple, only one prior patent document was raised (US6879266B1) as having closely similar features to those of at least claims 1 and 11.

 

The examiner noted:

 

 

This is interesting. The examiner focuses on the feature ‘determining dependencies’ and argues that, although this is a distinguishing feature when considering US’266, because it is phrased in a non-technical way, it has to be ignored. To that end, claims 1 and 11 therefore have nothing else that separates them from US’266, and as such there is not a sufficient inventive step forward. The examiner therefore raises his objection against grant.

 

How to Overcome Examiner Objections to Obtain Grant of a Software Patent

 

The patent examiners will often subtly point out potential areas that could be worked on to achieve grant.

 

For example, as outlined above, the examiner in this Apple application drew attention in item 3.3 of the examination report (snippet above) to what he considered to be the ‘distinguishing feature’. But, then explained why it was not suitably ‘technical’, and thus lacked inventive step.

 

Following removal of the ‘system’ claim 15, remaining independent claim 1 was amended as follows, with independent method claim 11 being similarly amended:

 

 

It is clear to see that the original phrase ‘determining dependencies’ was concentrated on. This was clarified by the inclusion from the patent specification of the term ‘intra-group’, as shown in the first red box above.

 

Once clarified, further ‘hardware’ type technical phrasing was utilised to explain that access of the table was based on the intra-group dependencies. This is akin to a ‘lock and key’, and as such conveys more of a ‘technical effect’. See the final red box above.

 

To back-up the submitted amendments and address the examiner’s lack of inventiveness concerns, a concise summary of the benefit of the improved system was provided to the examiner:

 

 

The examiner accepted this clarification of the distinguishing feature, and agreed that it differentiated sufficiently over the prior art patent. He thus accepted that a ‘technical problem’ was being solved, also accepted therefore that the novelty and inventive step hurdles were overcome, and consequently allowed grant of the patent.

 

Summary:

 

  • Have sufficient explanatory figures of the backend architecture, framework, and/or data processing
  • Use ‘hardware’ type technical language to explain movement or manipulation of the data, thereby overcoming the first ‘is it excluded matter?’ hurdle
  • Ensure that your patent specification is written with the ‘technical effect’ in mind
  • Include in the specification an explanation of the ‘technical problem’ that is being solved, thereby ensuring that both the novelty and inventive step hurdles are overcome

 

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.

 

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