Computer-implemented Inventions Research Articles

The Disclosure Requirements of Software Patents: Suggestions for Developing Countries

This is a research study of available options of Intellectual Property (IP) protections for software in the present IP systems, in most of the countries including copyright and patent protection. Each type of IP protection has its own advantages and limitations like enablement of subject matter for registration requirements, scope of rights conferred and period of protection etc. The trends and demands of software industry for the grant of patents protection for Computer Implemented Inventions (CIIs) were also discussed. The present research paper discusses a best mode of technical disclosure, more than an algorithm, of software patents and additional recommendations are also given as a solution to the technical problem of a suitable IP protection for software. A sui generis IP protection was suggested as a best option for a composite IP protection covering all aspects of advanced software inventions.

Patenting of inventions created with the use of artificial intelligence: problems of theory and practice

In the article, based on the tools of intellectual property analysis, international and national patent legislation is analyzed, the problems of inventing inventions created with the use of artificial intelligence (AI) are investigated: the dynamics of patenting, patent activity in the field of AI technologies, the peculiarities of patentability examination of inventions in different jurisdictions are analyzed (EPO, Germany, China, USA, Japan) and judicial practice on this issue. The main provisions of the draft law “On Amendments to the Law of Ukraine “On the Protection of Rights to Inventions and Utility Models” regarding the regulation of relations arising in relation to inventions and utility models created with the use of artificial intelligence” were considered. It was concluded that the law “On protection of rights to inventions and utility models” excludes computer programs from patented objects. It is recommended to implement the rules of the EPC Guidelines on computer-implemented inventions into the Rules for drawing up, submitting and considering an application for an invention and an application for a utility model, which do not reflect these aspects.

РЕФОРМА ПАТЕНТНОГО ЗАКОНОДАВСТВА (2020): ОСНОВНІ НОВАЦІЇ ЩОДО ВИНАХОДІВ (КОРИСНИХ МОДЕЛЕЙ)

The article considers the main innovations of current legislation concerning inventions and utility models. The conditions for granting legal protection of an invention (utility model), the procedure for filing and considering an application for an invention and a utility model, the application of «pre grant opposition» and «post grant opposition» procedures, and ways to protect patent rights are studied and analyzed. The author proves the importance of creating a national patent office (NIPO) in Ukraine. The article substantiates the need to adopt a separate law on NIPO instead of duplicating the rules on the legal status of NIPO, its structure, competence, etc. in several legislative acts. The author determines that the law eliminated the inaccuracy in the definition of a patent that certifies intellectual property rights to an invention and utility model, rather than ownership of them. This is fully consistent with the application of the theory of exclusive rights in the legislation of Ukraine on intellectual property. The article states that the law provides for only two types of patents (excluding secret and official inventions, utility models): a patent for an invention granted for 20 years based on the results of a qualifying examination, and a patent for a utility model granted for 10 years based on the results of a formal examination. The author notes that this patent by its legal nature remains declaratory, and it is granted under the responsibility of the applicant. The researcher proves the importance of legislative innovations, which eliminated the possibility of granting so-called «evergreen patents» (by improving the content of the inventive step as a condition of patentability). The article substantiates the need for a legislative solution to the issue of ownership of property patent rights to an official invention (utility model). The author notes that the reform of patent legislation (2020) bypassed the improvement of legal regulation on the use of inventions (utility models) taking into account digitalization (in particular, the legal regime «computer implemented inventions» is not defined). The researcher proves that the publication of information about the application for the invention is important, because from that moment the application becomes public, and an indefinite number of people have the opportunity to read its contents, and may see the technical essence of the invention. The author justifies the need to transfer the authority to decide on the issuance of compulsory licenses to the National Intellectual Property Office (or a specialized court after its creation). The article finds that instead of invalidating a patent for an invention (utility model), it was introduced that the rights to an invention (utility model) might be recognized as invalid, which is not currently accepted by case law. The article proves that an important innovation of the patent law reform (2020) is the introduction of a procedure for declaring inventions (utility model) invalid out of court («post-grant opposition») in order to curb the practice of patenting by unscrupulous applicants of well-known technical solutions.

Computer-Implemented Inventions and Computer Programs – Status Quo in Slovenia and EU

In Slovenia, there is no legal basis for computer-implemented inventions, and in the European Union (EU) such inventions are not yet clearly defined. Over the last twenty years there have been many heated debates in the EU arena concerning a single legal instrument, but a final solution remains elusive. In Slovenia and the EU, legal protection of computer-implemented inventions thus remains on thin ice: there are certain non-obvious combinations for obtaining a patent, but ultimately the decisive factor may as well be how the patent application is written. This status quo therefore necessitates an examination of this field: to arrive at a legal basis that would regulate the patenting of computer-implemented inventions it is necessary to identify and address the most critical points. This paper deals with this issue. It starts by presenting examples of computer-implemented inventions, followed by an overview of the state of play – the status quo concerning legal protection in Slovenia and the EU. This paper also provides an overview of copyright as a legal basis for computer programs, which is the same in Slovenia and in the EU. Copyright is not exclusive, as computer programs are often also protected as trade secrets and as know-how.

The Patentability of Computer-Implemented Simulations and Implications for Computer-Implemented Inventions (CIIs)

Abstract G 1/19 (Simulations), Enlarged Board of Appeal of the European Patent Office, 10 March 2021 The Enlarged Board of Appeal of the European Patent Office (EPO) held that a computer-implemented simulation of a technical system or process which is claimed as such can, for the purpose of assessing inventive step, solve a technical problem by producing a technical effect going beyond the simulation’s implementation on a computer; and that the established case law on computer-implemented inventions (COMVIK approach) applies to computer-implemented simulations even if these do not have an output having a direct link with physical reality.

Technical Character in European Patent Law

The technical character, which appeared in 19th century German law in the chemical sector, reappeared in the 1980s in Europe with computer-implemented inventions and biotechnology. Without being expressly mentioned in the texts, this requirement is nonetheless fundamental, as it draws the boundaries of the field of patent law. Its definition remains little debated, because it is convenient for examiners and judges to propose an assessment of it on a case-by-case basis. Thus, case law has essentially focused on the methods for assessing the notion of technicality. This approach nevertheless leaves a truncated and commonly accepted view of what is technical in the sense of patent law. Moreover, the silence of the texts also tends to leave a permanent doubt as to the scope of the field of patentability. The gaps in substantive law lead to the proposal to remove the exclusions in Article 52(2) of the Munich Convention and to lay down an explicit and autonomous condition of a technical character defined by the texts.

Wonders of technicality: technical features, technical problems, functional chains and a review of the Comvik approach

A patent is an industrial property right that protects a technical solution for a technical problem. An invention is a technical teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result.1 Patent claims legally define what technical subject matter should be protected by listing its technical features required for solving an associated technical problem. Only products that incorporate all of these features actually infringe the granted patent. Thus, patent claims are an essential part of every patent application for providing the legal infringement requirements. Actual patent claims often contain both technical and non-technical features. This is often the case in patent applications for computer-implemented inventions. In granting procedures, the European Patent Office (EPO) often disregards the non-technical features in claims when assessing the inventive step. This follows the Comvik approach2 that deals with what happens when a claim includes both technical and non-technical features. ... Currently, most people believe that a particular feature is either technical or non-technical merely by its nature.3 For example, a nail or a computer is always regarded as a technical feature, whereas a vase is seen as a non-technical feature in the form of an aesthetic creation.4 This article critically analyses the Comvik approach, sheds light on whether features can be classified as technical or non-technical and explains functional chains as a measure to overcome the Comvik approach. It offers a hands-on guide to improve the drafting of patent applications and to practically eliminate Comvik objections regarding non-technicality of features.

New Guidelines Issued by the U.S. Patent & Trademark Office on Patenting Computer-Implemented Inventions That Broaden Patent Eligibility by Restricting Abstract Idea Determinations

New Guidelines Issued by the U.S. Patent & Trademark Office on Patenting Computer-Implemented Inventions That Broaden Patent Eligibility by Restricting Abstract Idea Determinations

The Current Dilemma and Future of Software Patenting

The unprecedented division over patent eligibility based on the “abstract idea” construct among the courts and judges in the Alice v. CLS case, the post-Alice contradictory decisions and the trend of rejecting or invalidating software patents, as well as the uncertainty about the concept of “computer program as such” (or “per se”) in Europe and China, present a chaotic reality and serious dilemma as to the future direction of the software patenting regime around the world. The recent revisions to patent examination guidelines by the patent offices in the US, Europe and China, particularly the “grouping” of “abstract ideas” by the USPTO, providing examples of a “further technical effect” by the EPO, and distinguishing a “computer program per se” and “computer-implemented inventions” by the CNIPA, although helpful in patent examinations, cannot solve the root problem and fix the dilemma. A more general definition, or a “safe harbour”, for the “abstract idea” or computer program “as such” is needed. In addition, to prevent patent trolls and promote true software innovation, the scope and length of software patent protection should be limited, e.g. allowing only the means of implementation but not the function to be patented; and granting 10 years of utility-model-type or sui generis protection. All the above proposed reforms should be undertaken at the international level, e.g. by adopting a Software Treaty under the auspices of the WIPO, because the software patent dilemma is a global one that deserves an international solution, especially in the age of the internet where most of the software patents cover borderless internet technologies.

Theoretical Framework of Smart Intellectual Property Office in Developing Countries

Rapid ICT development, globalization challenges, intellectual property (IP) as indicators of economic development, and the challenge are the patentability of computer-implemented inventions and artificial intelligence implications for the IP Office (IPO) to transform from the digital paradigm to the smart paradigm. Nevertheless, because of the lack of literature on the smart IPO framework, we refer to smart government and smart city framework. The aim of this paper is to propose a framework for smart IPO in developing countries in the context of smart city framework. The study found that smart IPO composed of several components such as 1) Smart IPO Model; 2) Smart IPO Enterprise Architecture; 3) Smart IPO Collaboration Model; 4) Smart IPO Development Model; 5) Smart IPO Measurement Model; 6) Smart IPO Standard; and 7) Smart IPO Services. It also found that there are four models of IP office as follows: Model 1 (basic web-based, public services); Model 2 (advanced internal administration); Model 3 (full process automation); and Model 4 (knowledge-based IP services). Moreover, we found also three stages of IP development model: Stage 1 (automation of internal processes); Stage 2 (web-based e-services); Stage 3 (e-dossier, e-filing, e-payment).

Searching claims comprising non-technical features at the European Patent Office

Claims involving a mix of technical and non-technical features appear in patent applications across almost all technical fields nowadays, in particular in the context of computer-implemented inventions. This paper discusses how the European Patent Office (EPO) approaches the search of such mixed-type claims, taking into account both the legal framework of the search and the technical particularities of the inventions. Specific attention is given to the latest updates of the Guidelines for Examination at the EPO and to the recent development of the Case Law of the EPO's Boards of Appeal.

The Assessment of the Technicality of Computer-Implemented Inventions in Europe

Article 52 of the European Patent Convention provides for an exclusion of computer programs. The criterion of technical character (or technicality) is used to assess the patentability of computer implemented inventions. However, this assessment has varied over the years and according to the forum.

Patents on Computer-Related Inventions in India

In India, sec. 3(k) of the Patents Act 1970 clearly excludes the patentability of computer programmes per se. For many years, the regime of computer-implemented inventions has been unclear, until the Controller General of Patents, Designs and Trade Marks (the Indian homologous of the Intellectual Property Office) issued its Guidelines on the examination of computer-related inventions. Notably, this gave rise the civil society’s protests; indeed, there was the fear that the government was surreptisciously allowing the patentability of computer programmes per se. Therefore, the guidelines have been withdrawn and recently a new version has been published. It openly reaffirms the exclusion of the software patents and introduces a three-step test to determine the applicability of sec. 3(k) of the Patents Act to computer-related inventions. This opinion focuses the new guidance, by placing it in the context of the leading role of India in the technological and social developments revolving around the Internet of Things.

Which Types of Bioinformatics Inventions Are Eligible for Patent Protection?

The field of bioinformatics is flourishing, and strong growth is only projected to continue. Like any cutting edge technology, bioinformatics requires an integrated IP strategy involving patent, trade secret, and copyright laws. The patent system in particular can be a powerful protection for commercializing bioinformatics inventions as long as a corresponding patent application meets certain patent law standards. Recently, the most rapidly evolving of these patent law standards—patent eligibility—came to a crescendo last year when the Supreme Court in Alice v. CLS Bank introduced a two-step test for determining whether computer-implemented inventions are patent-eligible. Since then, other courts and the USPTO have applied the test on inventions implemented on a computer and/or using the Internet with fact-dependent results. Here, we discuss how these decisions relate to bioinformatics inventions. We then analyze bioinformatics patents that have recently issued post-Alice. While the law remains relatively underdeveloped, it becomes clear that relying on a general purpose computer to perform routine or conventional steps in a claim will not infuse patent-eligibility into a claim. However, bioinformatics inventions remain patentable, especially when the patent prosecution team properly and persuasively presents the technical improvements and commercial embodiments.

How is patent eligibility of computer-implemented inventions to be determined in the United States in view of Alice v CLS Bank?

How is patent eligibility of computer-implemented inventions to be determined in the United States in view of Alice v CLS Bank?

Rethinking Patent Eligibility for the Modern Scientific Age

As reflected in the Federal Circuit’s fractured opinion in CLS Bank v. Alice Corp., there is no greater confusion in contemporary patent law than that surrounding the scope of patent eligibility limitations. This Supreme Court amicus brief in that case traces the roots of the court-made doctrines excluding patents on laws of nature, physical phenomena, and abstract ideas. It argues that a test of inventive application neither serves the underlying purposes of the patent system nor comports with the process of modern technological advance. As a result of advances in scientific understanding and methods over the past 150 years, many if not most inventions today explicate, manipulate, and control physical, chemical, biological, and digital phenomena at elemental, molecular, algorithmic, and systemic levels. Doctrines that treat conventional application of even newly discovered computer algorithms, molecular pathways, and chemical synthesis as unpatentable threaten to exclude much of the inventive thrust of modern research. Mayo’s requirement for unconventional application shifts scientists’ efforts from the valuable scientific and technological advances that society seeks toward surmounting an amorphous test of non-obvious implementation. Specific and practical application, in conjunction with the technological arts limitation explicated in Justice Stevens’s concurrence in Bilski, would better serve as the test for patent eligibility in the modern scientific and technological age.Particularly in light of past experience, setting inventive application as the test for patent eligibility threatens to undermine invention incentives, hamper patent prosecution, and greatly complicate patent litigation. While recognizing that the problems posed by patents on software and other computer-implemented inventions are real, this brief contends that patent eligibility doctrines beyond requiring specific application and categorical exclusion of business methods and other non-technological processes are poorly suited to address those concerns. It therefore concludes that the Supreme Court should turn away from the Funk Brothers/Flook/Mayo paradigm, and instead focus on elucidating the statutory requirements of patentability. By clarifying the constitutional and jurisprudential foundation for subject matter exclusions, the Court can promote legislative and administrative solutions that more directly address the evolving needs of the patent system.

The protection of computer-implemented inventions - an analysis of the latest case law of the German Federal Court of Justice

The protection of computer-implemented inventions - an analysis of the latest case law of the German Federal Court of Justice

Indian Patent Office issues draft guidelines on examination of computer implemented inventions

Indian Patent Office issues draft guidelines on examination of computer implemented inventions

Section 101 and Computer-Implemented Inventions

The current case law on whether many computer-related inventions constitute patentable subject matter under § 101 of the Patent Act is extraordinarily unclear. In the past two years, the Supreme Court has twice taken § 101 cases, producing opinions that have generated serious controversy among the patent bar. As a result, the Federal Circuit has struggled to determine when computer-related claims pass § 101, with its post-Bilski case law being defined by a major circuit split over computer-implemented inventions.With the Federal Circuit’s en banc review of CLS Bank on the horizon, this Article attempts to end this confusion. This Article does not engage the debate over whether broad subject matter eligibility is preferable to the Supreme Court’s recent restrictions. Rather, the main goal of this paper is to accept the Court’s rulings and propose an administrable test drawn from current precedent that the Federal Circuit can adopt in its upcoming CLS Bank en banc decision. I follow a pragmatic approach, demonstrating how courts can apply the Supreme Court’s § 101 jurisprudence and existing Federal Circuit doctrine to focus on the real issue: the effect a computer element has on a claim’s patentability. As one Federal Circuit panel has already done, courts should examine the computer’s role in the invention.

Patentable Subject Matter: The View from Europe

This article presents a review of the position regarding the availability of patent protection for computer-implemented inventions (software in particular) in Europe. The specifics of the European Patent Office approach to this, i.e. providing a low threshold for exclusion on grounds of non-patentable subject matter, but not allowing non-technical features to contribute to inventive step, is contrasted with that in the UK where the EPO-derived “contribution approach” still holds. Some comparisons are made with the position in the US, post Bilski.