WEB-CONTENT MEASUREMENTS – T 1422/19-3.5.07 – May 19, 2021 – non-technical features which contribute to technical character
The software discussed in this decision carries out an indirect measurement. The software measures/ determines a web page viewing area based on the measurement/ input data/ raw data of the size of a browser window. Such indirect measurements are of a technical nature, regardless of what use is made of the results (cf. G 1/19, point 99).
At the EPO, data relating to software-related inventions may, under certain conditions, be regarded as data of a technical character. This means that such data will be taken into account as a distinguishing feature in the examination of inventive step. Data may have a technical character if they are so-called “functional data”. A typical example of “functional data” is data intended to control a technical device. In the following decision T 1806/20, the appellant tried to present “cognitive data” as “functional data”. The appellant relied on the earlier decision T 1194/97, which identifies a type of test method that can be used to determine whether the data are “functional data”.
The amendments concern, inter alia, Rules 126(2), 127(2) and 131(2) EPC, which deal with service by postal services and by electronic means as well as the calculation of time limits triggered by the service of a document. (https://www.epo.org/en/legal/official-journal/2023/03/a29.html)
A Technical Board of Appeal of the EPO has referred questions to the EPO’s Enlarged Board of Appeal regarding the definition of the state of the art in relation to a commercially available product (link).
The referring Board asks whether the commercial availability of a product and partial information about its composition (e.g. datasheets) can be state of the art, even when the composition or internal structure cannot be analysed or reproduced. This is critical for the referring case, as the possibility to use such a product in the inventive step assessment is decisive. The last question considers what threshold is required for the “undue burden” criterion in r.1.4 of G 1/92.
The bar for patenting software is generally higher than for traditional technology. This is mainly due to the fact that “programs for computers” and “mathematical methods” are not considered to be inventions under a legal provision in the European Patent Convention (EPC). This is the intention of the legislator and a political decision. Nevertheless, it is possible to patent software. This whitepaper provides an insight into how software respectively computer-implemented inventions (CII) are dealt with at the European Patent Office (EPO). The information is mainly based on the decision G1/19 of the EPO’s Enlarged Board of Appeal issued 2021. This decision is an all-out attack on CII and provides a good basis for an inside view into the software patenting at the EPO.
2023年1月より、当事務所に2名の新しいパートナーが加わりましたので、お知らせいたします：
ティエンハオ・ミャオ（Tianhao Miao）
ティエンハオ・ミャオ（Tianhao Miao), 1988年生まれ、2015年より知的財産法分野に従事。
主に欧州特許庁、ドイツ特許商標庁、ドイツ特許裁判所、中国特許庁における特許審査、異議申立、無効審判を担当しています。
さらに、侵害鑑定、デューディリジェンス、FTO調査・分析、見本市の知的財産権保護、電子商取引の知的財産権保護も重要な分野です。
ヨーロッパ、ドイツ、中国の弁理士として、異なる管轄区域間の特許法の違いと類似性に精通しており、国際的な大企業に可能な限り最高のサービスを提供することが可能です。
専門技術分野は、機械工学、自動車工学、医療技術、新エネルギー、電気通信。
ミヒャエル・ヴェゲラー(Michael Wegerer)
ミヒャエル・ヴェゲラー（Michael Wegerer), 1989年生まれ。2014年より知的財産法の分野で活動。
技術的および非技術的な知的財産権の取得と防御、異議申立、審判、実用新案取消訴訟および無効訴訟、侵害、有効性およびFTOに関する意見書、ライセンス契約などを主な業務としている。
日本の知財関連企業での数ヶ月間のインターンシップと、国内クライアントのための世界各地における特許審査手続に関する長年の経験により、異なる法域間の特許法の違いと類似性に精通しており、これらの知識を活用して新しい特許出願の作成や、世界各地における効果的な特許審査手続を行う。
専門技術分野は、医療技術、自動車工学、材料技術、製造技術、一般機械工学。
The Enlarged Board of Appeal of the European Patent Office discussed older case law in its decision G 1/19 about computer implemented inventions, including decision T 1351/04. This decision is discussed with respect to “data intended for controlling a technical device”. According to G1/19 this data may be considered to have technical character because it has the potential to cause technical effects. In the following, we will take a closer look at this relevant decision T 1351/04.
The appeal in the case T 1351/04 is against the decision of the examining division to refuse the European patent application No. 02 258 100.3.
The claimed subject matter is in regard to create a specific index-file from a csv-file (e.g. an Excel-file). By employing the index-file, it is possible to significantly increase the speed of data extraction from a large-size csv-file. In the figure 1 below, you can see an example of the csv-file (on the right hand) and of the index-file (on the left hand).
For the claimed subject matter, the csv-file requires records containing fields forming different hierarchical levels, see figure 1 above on right hand side (top hierarchical level, lower hierarchical level). The index-file is in principle built as a tree structure. This means, in the index-file information of the csv-file are connected/arranged in a tree structure. This looks schematically as follows in figure 2:
Because the records in the index-file (based on the csv-file) are arranged in the tree structure, the respective record is called a “node”. When you look in figure 1 right hand, you can see that in the csv-file there are records like “COOLING AND HEATING” and “HOUSEWORK” as the top hierarchical level. Depending on these there are further records respectively. The hierarchical records in a row of the csv-file are key character strings. The hierarchical record of the csv-file is mapped in the tree structure of the index-file. At each node there is also so-called management information, which includes information about the starting position and the number of corresponding records in the csv-file to be searched. This information permits the desired records of the csv-file to be retrieved directly when the node having the desired key character string has been found (cf para. [0042] of the description). When only keys of high-level nodes are used it is thus not necessary to follow the tree structure all the way down to the leaf nodes in order to retrieve the desired record information.
In other words, the hierarchical structure of the csv-file is transformed in the tree structure of the index-file, wherein addition information like starting position and number of corresponding records are stored. With this arrangement information of the csv-file can be retrieved by the index-file faster.
Yes, since the claimed method requires the use of a computer.
To assess the inventive step it must first be considered in how far the features of the claim contribute to the solution of a technical problem. The board took a look at the following feature since it is a distinguishing feature over the prior art:
“each node in the index includes the starting position information and number information used for retrieving records”.
As mentioned above, these features are part of the index-file and are called management information.
According to the description of the present application, the invention relates to a method for “promptly searching for and extracting data from a file” (cf paragraph [0001]). The data searched for can be of any kind, eg of a commercial nature as in the described embodiment, and thus have no technical relevance in themselves.
The data are stored as records having certain “start positions“, ie memory addresses in the file to be searched. The computer reads these addresses in the form of the “management information” in the index-file and retrieves the associated data from the csv-file to be searched. The management information thus controls the computer by directing it to a certain memory location.
Functional data, intended for controlling a technical device, are normally regarded as having technical character. The management information contained in the present claims should be regarded as contributing to the technical character of the search method according to the Board of Appeal.
It follows that the mentioned feature that has a direct bearing on how the search is conducted should be considered for inventive step.
Further, in the decision the BoA refers to the decision T 52/85. This seems to suggest that as long as a claimed method for searching a data file is concerned with the way a computer performs the search, it may be technical. If however the kind of data is decisive, the method’s contribution is nontechnical (cf T 52/85, point 5.2). As noted above, in the present case the kind of data searched for is of no importance.
In order to support possible argumentation of the technical character of claimed subject matter comprising “functional data” it would be beneficial, when the functional data is not only disclosed in a abstract manner but also in regard to the machine-level of the computer. E.g. as mentioned above it could be disclosed that the management information controls the computer by directing it to a certain memory location.
Claim 2 of the main request in the appeal:
A computer-executable file search method for searching a file to be searched (3),
said file to be searched (3) including records having fields allocated to each of a plurality of hierarchical levels and being constructed so that records having the same key character string in a field at the same hierarchical level are arranged in series and wherein for each record, the first field is the top hierarchical level, and subsequent fields form lower hierarchical levels,
the method comprising computer-executed steps of:
wherein the retrieving and extracting steps comprise
when the data extraction output is selected, retrieving (S7) start position information and number information as management information about records related to the specified key character string and extracting (S8) data of a number of records specified by the number information from a position specified by the start position information;
and when the drill-down business form output is selected, retrieving (S12, S13), based on the pointer, a start position of a record of the node management information of the lower hierarchical level, and extracting (S14) data of the record based on the retrieved start position of the record.
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Currently, the new European Unified Patent System is being implemented, which is planned to start on April 1, 2023. The introduction of the Unified Patent System will have an impact on all European patents, including “old” European patents that have already been granted and are in force. Please find below more information on the new Unified Patent System.
After the start of the European Unified Patent System, an applicant of a European patent application can choose between the following options after grant:
The new Unified Patent System provides for a Unified Patent Court. Patent infringement proceedings or nullity proceedings relating to a Unitary Patent can be conducted centrally via this court. The Unified Patent Court is responsible for European Unitary Patents and for classic European Patents and thus also for “old” European Patents which are still in force. However, in the case of a classical European Patent, during a transitional period of between 7 and 14 years after the start of the Unified Patent System, the national courts in the countries where the classic European Patent is validated will have jurisdiction in addition to the Unified Patent Court as before. In other words, for example, patent infringement proceedings in the case of a Unitary Patent will take place centrally before the Unified Patent Court, whereas in the case of a classic European Patent, a choice can be made between the Unified Patent Court and the national courts.
A patentee of a classic European Patent has the possibility – during the transitional period mentioned above – to exclude the jurisdiction of the Unified Patent Court. For this purpose, it is necessary to file a so-called “opt-out-request” for the classic European Patent. After the exclusion of the Unified Patent Court due to an opt-out-request, the national courts will continue to have exclusive jurisdiction for the classic European Patent.
Fig. 2 below shows the different possibilities.
Figure 2: different possibilities regarding a European patent protection
An opt-out-request can already be filed 3 months before the start of the Unified Patent system in the so-called “sunrise period”. It is currently planned that the sunrise period starts on January 1, 2023. The question as whether an opt-out-request should be filed for a classic European Patent depends on the individual case. An opt-out-request is only possible as long as no action is pending before the Unified Patent Court.
Patentees and applicants of classic European Patents should take the following steps with regard to the new Unified Patent System:
If you have any questions about the new Unified Patent System – for example, about the steps mentioned above – we will be pleased to answer them personally.
„経過規定-欧州特許庁審判部手続規則2020発効前に口頭審理の召喚状が通知された場合の欧州特許庁審判部手続規則2020第13条1項の適用性“
Transitional provisions – applicability of Article 13(1) RPBA 2020 to cases where the summons to oral proceedings was notified before the entry into force of the RPBA 2020. (Catchword of the Board)
BoA, Decision of January 20, 2020 – T 1386/18; Article 13(1) RPBA 2020
The appellant (applicant) lodged an appeal within the prescribed period and in the prescribed form against the decision of the examining division to refuse the European patent application No. 10840300.7.
The revised RPBA 2020 is in force from January 1, 2020. Therefore, the written submissions of the appellant mentioned above have been filed before the RPBA 2020 came into force. The oral proceeding was held after the RPBA 2020 came into force.
In its decision, the BoA noted that the RPBA 2020 applies, except for “new” Articles 12(4) to (6) and 13(2) RPBA 2020. Instead of which the “old” Articles 12(4) and 13 RPBA 2007 remain applicable.
This is laid down in the transitional provisions according to Article 25 RPBA 2020. “New” Articles 12(4) to (6) RPBA 2020 refer to the first stage (filing stage) of the appeal, see Fig. 1 below.
“New” Article 12(4) RPBA 2020 defines that a request, fact, objection, argument, and/ or evidence on which the decision under appeal was/were not based is considered as an amendment. Any such amendment may be admitted only at the discretion of the Board. Nevertheless, if the party demonstrates that the request, fact, objection, argument, and evidence was/ were admissibly raised and maintained in the proceedings leading to the decision under appeal, then it is not considered as an amendment. Compared to this, the “old” Article 12(4) RPBA 2007 –here applicable – has less stringent limitations on amendments at the first stage.
“New” Article 13(2) RPBA 2020 refers to the third stage of the appeal, see Fig. 1 above. This Article imposes the most stringent limitations on appeal submissions which are made at an advanced stage of the proceedings. Advanced stage means after the expiry of a period set by the board of appeal in communication under Rule 100(2) EPC or, where no such communication is issued, after notification of a summons to oral proceedings. In contrast, the “old” Article 13 RPBA 2007 – here applicable – has less stringent limitations.
In the present decision, the BoA clarified, that the “new” Article 13(1) RPBA 2020 applies to the present proceedings because this Article is not excluded by the transitional provisions defined in Article 25 RPBA 2020. “New” Article 13(1) RPBA 2020 refers to the second stage of the appeal – see Fig. 1 above – and to amendments before notification of a summons or before the expiry of a time-limit of a communication. “New” Article 13(1) RPBA 2020 defines the conditions under which a party may amend its appeal case after the initial stage of the proceedings and before the period set in a communication under Rule 100(2) EPC has expired or before a summons to oral proceedings has been notified. The party must provide reasons as to why the amendment is submitted at this stage of the appeal proceedings. Its admittance is subject to the Board’s discretion alone.
According to a further recent decision T 0032/16 of a different BoA, when compared, the revised wording in “new” Article 13(1) RPBA 2020 is more detailed in listing out the requirements on the party making an amendment to its appeal case and the criteria to be used by the Board when exercising its discretion. The difference however merely reflects much of the case law developed under “old” Article 13(1) RPBA 2007. Therefore, according to T 0032/16 no contradiction can be found in the wording of “new” Article 13(1) RPBA 2020 compared to “old” Article 13 RPBA 2007.
In a further recent BoA decision, T 0989/15 the Board saw no reason to apply the criteria of “new” Article 13(1) RPBA 2020 in addition.
Decision T 1386/18: https://www.epo.org/law-practice/case-law-appeals/pdf/t181386eu1.pdf
RPBA 2020: https://www.epo.org/law-practice/case-law-appeals/communications/2019/20190704.html
2020年11月26日、ベルリンにあるドイツ連邦議会（Bundestag）は、UPC協定を承認しました。これは、統一特許パッケージの実施に向けた重要な一歩となります。統一特許制度は、2022年春に開始される予定です。しかしながらまだいくつかのステップを乗り越えなければなりません。
On March 10, 2017, the German Bundestag already approved the UPC Agreement. However, on March 31, 2017, a constitutional complaint was filed with the German Constitutional Court. Therefore, the ratification process of the Unified Patent System was stopped by Germany. On February 13, 2020, the Constitutional Court decided inter alia that in the vote in the German Bundestag the 2/3 majority was missing. After this decision of the Constitutional Court, the German Bundestag approved a new, unchanged bill on the UPC Agreement with a sufficient majority on November 26, 2020.
In addition to the UPC Agreement, the German Bundestag also approved a protocol on provisional applicability on November 26, 2020. With this protocol, it is possible that the Preparatory Committee of the Unified Patent System can appoint judges for the UPC, rent office space, etc. before the certificate of ratification is deposited by Germany.
In Germany besides the Bundestag also the Bundesrat has to approve the UPC Agreement. The vote on this will take place on December 18, 2020. The approval of the UPC agreement in the Bundesrat is very likely since the same parties have a majority in the Bundesrat as in the Bundestag. Afterward a countersignature by the Federal Government and the German President takes place. In the end the approval is published in the German Federal Law Gazette. Then, the certificate of ratification is ready to be deposited by Germany.
Since the UK is going to leave the European Union on January 1, 2021, the UK is not part of the Unified Patent System and London will no longer be a location for the UPC Central Divisions. Therefore, the Central Divisions of the UPC will be located in Munich and Paris.
Information of the German Bundestag:
https://www.bundestag.de/dokumente/textarchiv/2020/kw48-de-patentgericht-808180
Information of the European Patent Office:
https://www.epo.org/news-events/news/2020/20201126b.html