Eligible Subject Matter in EP and US

M U N I C H · D Ü S S E L D O R F · D R E S D E N · S I N G A P O R E · C H I N A · T A I W A N · U S A

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Eligible Subject Matter in EP and US

„Statutory Subject-matter“

“Statutory Subject-matter”

Article 52 (1) EPC

Article 52 (1) EPC

European patents shall be granted for any inventions, in allfields of technology, provided that they are new, involve aninventive step and are susceptible of industrial application.


Article 52 (2) EPC

Article 52 (2) EPC

The following in particular shall not be regarded as inventionswithin the meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts,playing games or doing business, and programs forcomputers;

(d) presentations of information.


Article 52 (3) EPC

Article 52 (3) EPC

The provisions of paragraph 2 shall exclude patentability of thesubject-matter or activities referred to therein only to the extentto which a European patent application or a European patentrelates to such subject-matter or activities as such.


Technical Character

Technical Character

“As such” is interpreted as any subject matter that does nothave a “technical character”, i.e. invention must have “technicalcharacter”

Physical features of an entity or the nature of a (technical ornon-technical) activity by the use of technical means provides“technical character” for an invention.


T 258/03 – Auction method

T 258/03 - Auction method

An apparatus as well as a method involving technical means isan invention within the meaning of Article 52 (1) EPC.

Inventive Step

Inventive Step

Article 56 EPC

An invention shall be considered as involving an inventive stepif, having regard to the state of the art, it is not obvious to aperson skilled in the art.

Inventive Step - General Discussion

Determine Closest Prior Art

Determine differences of the claim to be evaluated and Closest Prior Art

Determine technical effect(s) that are caused by the differences

Determine objective technical problem from the technical effect(s)

Determine whether the claimed solution of the objective technical problem

is obvious in view of the entire prior art

e.g. T 1043/03

D1


A ...

...comprising:

Feature A

Feature B

Reference Documents

Feature C


Claim 1

Determine differences

of the claim and

Closest Prior Art

Determine technical

effect(s) that are caused

by the differences

Determine objective

technical problem from

the technical effect(s)

NEW!

Determine whether (or not) the

claimed solution of the objective

technical problem is obvious in

view of the entire prior art

D2 D3

Problem/Solution Approach

Problem/Solution Approach

When technical and non-technical features are set out in theclaim, the non-technical features are not considered whendetermining the inventive step(T 641/00; T 531/03).

Exception:Non-technical features provide a technical contribution to thestate of the art (maybe together with the technical features ofthe claim).

D1


A ...

...comprising:

Feature A

Feature B

Feature C

Feature D

Feature E

Reference Documents


Claim 1

Determine objective technical

problem from the technical

effect(s)

NEW!

Determine technical

effect(s) that are caused

by the differences

non-technical

technical

technical +

non-technical

D2 D3

Computer-Implemented Inventions

Further technical effect

Further technical effect

has to go beyond the pure automization of a non-technical process

has to go beyond the pure operation of a processor logice.g. improved cache algorithm

may include technical considerations about a technical systeme.g. circuit simulation

success of the solution may not rely on the cognitive capabilities of a usere.g. graphical user interface has to provide effect independent from thecognitive capabilities of a user



A method

...comprising:

•Feature A

•Feature B

•...

A processor

configured to

perform the

method ...

comprising:

• Feature A

• Feature B

• ...

Implementation

No technical effect(s) technical effect(s) related

to running a processor

A processor

configured to

perform the

method ...

comprising:

• Feature A

• Feature B

• ...

Implementation

technical effect(s) +

further technical effect(s)

Interaction

+++

Abstract method

+


Further technical effect - Safe Harbors

General Examples

Interaction with physical world

Controlling a technical system

Computer-external (Anti-blocking system in a car)

Computer-internal (e.g. Memory controller)


Further technical effect – Borderline regions

Examples

Graphical User Interface

Software modelling

“pure” Business Method (generally not accepted by the EPO)

“pure” data sorting (generally not accepted by the EPO)

Eligibility Framework

EPO vs USPTO

Mayo/Alice Test

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Eligibility Guidance (2014)https://www.uspto.gov/patents/law/exam/2014_eligibility_qrs.pdf

Updated Examples (2016)http://www.uspto.gov/patent/laws-and-regulations/examination-policy/2014-interim-guidance-subject-matter-eligibility-0

Alice; Myriad; Mayo• http://www.supremecourt.gov/opinions/13pdf/13-

298_7lh8.pdf• http://www.supremecourt.gov/opinions/12pdf/12-

398_1b7d.pdf• http://www.supremecourt.gov/opinions/11pdf/10-

1150.pdf

Enfish; TLI Comm• http://www.cafc.uscourts.gov/sites/default/files/opinions

-orders/15-1244.Opinion.5-10-2016.1.PDF• http://www.cafc.uscourts.gov/sites/default/files/opinions

-orders/15-1372.Opinion.5-12-2016.1.PDF

Mayo/Alice Test (Internal Combustion Engine)

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1. An internal combustion engine providingexhaust gas recirculation comprising:an air intake manifold;an exhaust manifold;a combustion chamber to receive air from the airintake manifold, combust a combination of thereceived air and fuel to turn a drive shaft, andoutput resulting exhaust gas to the exhaustmanifold;a throttle position sensor to detect the position ofan engine throttle;an exhaust gas recirculation valve to regulate theflow of exhaust gas from the exhaust manifold tothe air intake manifold; anda control system, comprising a processor andmemory, to receive the engine throttle positionfrom the throttle position sensor, calculate aposition of the exhaust gas recirculation valvebased upon the rate of change of the enginethrottle position and change the position of theexhaust gas recirculation valve to the calculatedposition.

Mayo/Alice Test (GUI)

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2. A computer‐implemented method for dynamicallyrelocating textual information within an underlyingwindow displayed in a graphical user interface, themethod comprising:displaying a first window containing textualinformation in a first format within a graphical userinterface on a computer screen;displaying a second window within the graphicaluser interface;constantly monitoring the boundaries of the firstwindow and the second window to detect an overlapcondition where the second window overlaps thefirst window such that the textual information in thefirst window is obscured from a user’s view;automatically relocating the textual information, by aprocessor, to an unobscured portion of the firstwindow in a second format during an overlapcondition so that the textual information is viewableon the computer screen by the user; andautomatically returning the relocated textualinformation, by the processor, to the first formatwithin the first window when the overlap conditionno longer exists.


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2. A computer implemented methodof resizing textual information withina window displayed in a graphicaluser interface, the methodcomprising:generating first data for describingthe area of a first graphical element;generating second data fordescribing the area of a secondgraphical element containing textualinformation; andcalculating a scaling factor for thetextual information which isproportional to the differencebetween the first data and seconddata.


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3. A computer‐implemented method ofresizing textual information within awindow displayed in a graphical userinterface, the method comprising:

generating first data for describing thearea of a first graphical element;

generating second data for describingthe area of a second graphical elementcontaining textual information; and

calculating, by the computer, a scalingfactor for the textual informationwhich is proportional to the differencebetween the first data and second data.

Eligible Subject Matter

Alice (Interim Guidance) vs EP approach

USPTO (significantly more)

1. Improvements to another technology or

technical field

2. Improvements to the functioning of the

computer itself

3. Applying the judicial exception with, or by

use of, a particular machine

4. Effecting a transformation or reduction of a

particular article to a different state or

thing

5. Adding a specific limitation other than

what is well-understood, routine and

conventional in the field, …, or

6. Other meaningful limitations beyond

generally linking the use of the judicial

except to a particular technological

environment

EPO (further technical effect)

1. Generally valid argument

2. Generally valid argument

3. Technical contribution must be provided by

the non-technical features when applied

with a particular machine

4. Processing of a physical article to another

physical state is generally valid argument

5. would usually only work in case the non-

technical features provide a technical

contribution to the field, generally difficult

6. This appears to be so broad that also this

argument only seems to work in case the

non- technical features provide a

technical contribution to the field,

generally difficult


Abstract Comparison

USPTO

1. 35 U.S.C. 101

„Statutory subject-matter“

2. 35 U.S.C. 103

„Obviousness“

EPO

1. Article 52 (2) EPC


2. Article 56 EPC

„Inventive Step“


101 – 52 (2)

USPTO

1. 35 U.S.C. 101


EPO

1. Article 52 (2) EPC



103 - 56

USPTO

2. 35 U.S.C. 103

„Obviousness“

Non-technical features are

always taken into

consideration

EPO

2. Article 56 EPC

„Inventive Step“

Non-technical features are only

taken into consideration

when they provide a technical

contribution

M U N I C H · D Ü S S E L D O R F · D R E S D E N · S I N G A P O R E · T A I W A N · U S A

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Tel: +49 351 6568 30 · E-Mail: [email protected]

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Eligible Subject Matter in EP and US

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