Prosecution perspectives

Computer-implemented inventions continue to challenge patent offices and courts. Here are the views of patent professionals on how to get them protected in the US, Russia, the Philippines, the UK, the EU and India

Ian Schick

The ecosystem for patents covering computer-related inventions has been in flux in the US since the Supreme Court’s decision in Alice Corp v CLS Bank. In pertinent part, the Alice decision stands for the proposition that, unless there is “significantly more”, an abstract idea cannot be patented merely by virtue of it being implemented by a general purpose computer.

The court neglected, however, to set forth a clear rule for what constitutes “abstract idea” or “significantly more.” So, while Alice has been highly efficient in the lower courts at eradicating overly broad software patents popular with ‘patent trolls’, it has also left meritorious software innovations subject to a highly subjective “I know it when I see it” test at the US Patent and Trademark Office.

The real challenge in the post-Alice world is that all inventions involve some level of abstract idea, so arguing that your invention does not relate to any abstract idea is typically a non-starter with examiners. That leaves the “significantly more” prong, which can be equally subjective.

In both cases, it all too often comes down to a semantic argument between the examiner and patent counsel, but the examiner gets to decide who wins so the outcome is fairly predictable.

Therefore, taking the examiner’s own view out of the equation may offer the most promising pathway to patentability by aligning your claims, to the extent possible, with claims that have been deemed patentable by a lower court despite Alice.

For many computer-related inventions, the Court of Appeals for the Federal Circuit’s holding in DDR Holdings v may be the ray of hope for patentability. In DDR, the court held that claims stand apart from Alice when “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks”.

So, when considering whether and what to pursue patent protection on, I typically recommend that we think first about what problem inherent to computers or networks is being solved. Then we think about how to frame the invention as being a solution to that problem. If we can cast our invention in a DDR-light, we can avoid the often-fruitless battle over the issue of abstractness.

After a patent application is filed, however, there may be limited options for amending with DDR in mind. Then we must deal with the examiner head on. To add to the chaos resulting from Alice, we see different art units treating differently the inquiries of abstractness and significantly more. In some art units, it appears to be enough to satisfy the old ‘machine-or-transform’ test by describing the invention in the context of a physical computer system. In other art units, arguments regarding abstractness seem to only fall flat yielding rejection rates over 90 percent. With these art units, the best 0shot at securing a patent may be re-filing a carefully modified version of the application in an attempt to be assigned to a different art unit.

Vladimir Biriulin
Gorrodisky & Partners

An invention may be protected if it represents a technical solution. A computer program as such is protected by copyright, but it is not patentable as an invention, as explicitly stated in Russian law (Article 1350 of the Civil Code of Russia). Nevertheless, the opportunity to protect computer programs by a patent exists. Computer programs are not works of literature, and they cannot be perceived by the user. They are a set of instructions realised by a computer processor. A computer program may be patentable if, as a result of the operation of the processor running the software commands a new technical result.

It is possible to patent a computer program by including the algorithm of the operation of the program into patent claims that characterise a computer device that operates on that computer program. Proceeding from this basic consideration, the applicant can obtain a patent for computer related inventions. In so doing, the computer program is not included in the claims. The invention should be described as a method and a device for processing, transmitting and transforming the data. The claims should contain reference to a material carrier and describe how the computer operates using the software that the applicant wishes to protect and what technical result is achieved.

The Philippines
Rowanie Nakan
Senior associate
Cruz Marcelo & Tenefrancia

Programs for computers are excluded from patent protection under the Philippine Intellectual Property Code.

Under Section 22.2 of the Intellectual Property Code, a computer program is defined as:

“A set of instructions expressed in words, codes, schemes or in any other form, which is capable when incorporated in a medium that the computer can read, or causing the computer to perform or achieve a particular task or result.”

In line with this, the Philippine Intellectual Property Office (IPO) considers a computer program claimed by itself, or as a record on a carrier, as not patentable irrespective of its content.

On the other hand, the implementing rules and regulations of the Intellectual Property Code state that computer-related inventions are patentable.

In other words, as long as the invention being claimed does not refer to the computer program itself, patentability should not be denied merely because a computer program is involved if the subject matter makes a technical contribution to the known art.

For instance, the IPO has considered program-controlled machines and program-controlled manufacturing and control processes to be patentable subject matter.

If an applicant believes that the computer-implemented invention makes a technical contribution to the known art or is capable of producing a technical effect, then the applicant may seek patent protection for the invention in the Philippines, but not over the computer program itself.

Other than a patent, an applicant may opt to seek protection for a computer-implemented invention as a utility model, which is “any technical solution of a problem in any field of human activity which is new and industrially applicable”.

Unlike in patents, inventive step is not a requirement for registrability, and the IPO adopts an expeditious registration process for utility models.

While protection for utility models is for a shorter term than for patents, seven years in lieu of 20 years, the shorter term of protection may already be sufficient considering the swift pace of obsolescence in the field of computer-implemented inventions.

Computer programs are also entitled to copyright protection under the Intellectual Property Code. The advantage of copyright protection is that it vests automatically from the moment of creation, and no formalities are required to enforce one’s copyright.

Moreover, under Republic Act No 10372, which took effect on 22 March 2013 and amended the Intellectual Property Code, the concept of copyright infringement was expanded to include those who are vicariously liable as well those who are liable for contributory infringement to provide more protection to copyright owners.

Mike Williams
Senior associate
Marks & Clerk

The European Patent Office (EPO) and the UK Intellectual Property Office (IPO) apply different tests to determine patentability, although they broadly come the same conclusion.

UK examiners firstly identify the contribution that the invention makes to human knowledge (ie, how is it different to the prior art), and then ask whether that contribution relates entirely to excluded subject matter.

Even inventions including technical features (for example, a computer) can be rejected by the UK IPO at this stage if their contribution relates entirely to excluded subject matter.

When considering patentability in isolation, the EPO determines whether an application’s claims include technical features.

If there are technical features present, the claims will pass to the next stage of examination where other criteria (novelty and inventive step) are assessed. It is, therefore, relatively easy to overcome this first hurdle.

However, to be eligible for patent protection, the EPO also requires inventions to provide a technical solution to a technical problem. Generally, only the ‘technical’ features of an invention will be considered when assessing inventive step.

If the technical features are not inventive, the application will normally be refused. This test is not usually a problem for inventions relating to improvements to computer hardware or computer-controlled devices and machines.

In both the UK and Europe at large, it is important to emphasise the technical features of an invention and problems that those technical features overcome, over any business or administrative considerations, throughout the description in a patent application.

Generally, even if an invention has been conceived to address what is ostensibly a ‘business problem’, there may be an underlying technical problem that is being solved.

In the patent application, it is important to identify this “underlying technical problem” and ensure that the majority of the description of the application focuses on this.

Generally speaking, the UK and the EPO allow patent protection in the following areas:

  • Software for controlling an apparatus or machinery;

  • Software that processes data representing images or data representing other physical entities;

  • Software that improves the operation of hardware, for example, improved operating systems or software achieving an increase in effective memory or speed;

  • Any other software where there are sufficient ‘technical’ considerations involved in the production of the software, or which produces a new technical effect.

Identifying whether the invention has any underlying technical aspects in these general areas, and appropriately focusing the description and the claims, will increase the chances of a patent application’s success.

Pravin Anand
Anand & Anand

Under Indian patent law, certain types of computer-implemented inventions that fulfill certain conditions are patentable. Computer-implemented inventions are viewed as falling into one of four categories: business methods, mathematical methods, algorithms and computer programs.

Of these, if the invention as claimed, relates to any of the first three categories, then the invention is not considered patentable.

However, in the fourth category, only if the invention as claimed, relates to a computer program, per se, is it not considered patentable.

A computer program is considered allowable if it: (i) involves or works on novel hardware; (ii) works on known hardware but goes beyond the normal interaction between such hardware and the computer program; or (iii) works on known hardware but affects a change or improvement in its functionality and/or performance.

These have been detailed and explained in the Guidelines for Examination of Computer Related Inventions’ released by the Indian patent office last year. However, these requirements had been changed with the manual being re-released earlier this year.

These changes are being heavily disputed and the manual is in the process of being reverted back to its original position as reflected in 2015, because the affected changes are not in line with the legislative intent. The legislative intent clearly is to allow patents for computer programs, which technically solved a technical problem or provided a technical effect.

While drafting the specification and/or while prosecuting the application before the Indian patent office, the following must be kept in mind and focused on:

  • Technical effect or contribution or advancement: Continue to stress on bringing out technical effect or advantage or contribution, as this is the required criteria mentioned in recent related IP Appeal Board and High Court judgements, which adjudicate on patents in this subject area.

  • Examples that elucidate these aspects or explanations would help in substantially presenting the invention as falling outside the disallowed category of computer program per se.

  • System diagrams and description: Give the invention a strong component or architectural feel while continuing to keep it general as to what the components would be for implementation. This would help in giving a structure to the invention showing involvement of hardware while the associated description and claims can use terms and give alternatives, which keep the scope as wide as possible.

  • Reference numerals: Keep these to additionally give the invention a strong component or architectural feel.

  • Avoid general or known hardware disclaimers: At the moment avoid such statements as controllers may get biased and base their rejection decisions on these statements stating that it is a computer program which is restricted to normal interactions with a known general purpose computer.

  • Descriptive units or modules: Avoid general terms and give specific names while keeping the scope large. This moves away from implementation of or use in generic or known hardware and gives the effect of special purpose or ‘non-general’ elements being involved.
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