Categories of Claims in the Field of CII

Edoardo PastoreEuropean Patent Office

Torino, 13-14 October 2011

The presentation and in particular the treatment of the examples reflects the personal opinion of the authors and does in no means prejudice any Examination Division or Opposition Division working on related applications.

Disclaimer:

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Agenda

1. Computer Programs

2. Categories of Claims

3. Drafting of Claims

4. Example

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1. Computer Programs

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C-IV, 2.3.6 Programs for Computers

Basic patentability considerations in respect of claims for computer programs are in principle the same as for other subject-matter.

If the claimed subject-matter has a technical character it is not excluded from patentability by provision of Art. 52(2) EPC.

Guidelines for the Examination in the EPO

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C-II, 4.15 Computer Programs

• program listings in programming languages cannot be relied on as the sole disclosure of the invention

• description: - to be written substantially in normal language,

possibly by flow diagrams - to be understood by a skilled person having general programming skills

• short excerpts from programs written in commonly used programming languages can be accepted if they serve to illustrate an embodiment of the invention

Guidelines for the Examination in the EPO - Description

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Computer Programs

- With regard to Art. 52(2) & (3), it does not make a difference whether a computer program is claimed by itself or as a record carrier.

- Interpretation of “as such”: programs for computer must be considered as patentable inventions when they have a technical character.

- Physical modifications of the hardware, causing e.g. the flow of electrical currents, cannot per se constitute the technical character.

- If computer program produces a “further technical effect” or solves a technical problem, it is considered as an invention in the sense of Art. 52(1).

IBM: T1173/97 (01.07.1998) & T935/97 (04.02.1999)

- Computer program products are not excluded from patentability under all circumstances.

- A computer program product which (implicitly) comprises all the features of a patentable method is therefore in principle considered as not being excluded from patentability under Art. 52(2) and (3).

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Computer Programs

further technical effect

control of a brake in a car

faster communication between mobile phones

secure data transmission (encryption of data)

resource allocation in an operating system

no further technical effect

aesthetical effects of music or a video

new rules for an auction scheme

selling and booking sailing cruise packages

calculation of a pension contributions

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2. Types of Claims

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C-III, 3.1 - Claim Categories

There are only two basic kinds of claim:

Guidelines for the Examination in the EPO

entity: product, apparatus,

device

activity: process, method, use

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Claim Categories

For many inventions, however,claims in more than one category are needed for full protection.

computer programs

systems consisting of apparatuses and devices

storage media with computer program

signals

data structures

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3. Drafting of Claims

1. A method of operating a data processing system comprising steps A, B ... .

Drafting of Claims - Method Claim

Method claims involving technical means are not excluded under Art. 52(2) and (3) (T258/03)

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2. a) A data processing apparatus/ system comprising means for carrying out the method of claim 1.

b) A data processing apparatus/ system comprising means for carrying out steps A, means for carrying out step B ... .

Drafting of Claims - Apparatus Claim

Apparatus/system claims are not excluded under Article 52(2) and (3) (T931/95)

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3. a) A computer program [product] adapted to perform the method of claim 1.

b) A computer program comprising software code adapted to perform steps A, B...

4. a) A computer readable storage medium comprising the program of claim 3.

b) A computer readable storage medium comprising instructions to cause a dataprocessing apparatus to carry out steps A, B ....

Drafting of Claims - Computer Program Product

Types 3 and 4 are of the same nature, both are a consequence of T1173/97. Independent claims of these two types may exist together without infringing Rule 43(2)

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1. A method of operating a data processing system comprising steps A, B ... .

2. a) A data processing apparatus/ system comprising means for carrying out the method of claim 1.

b) A data processing apparatus/ system comprising means for carrying out steps A, means for carrying out step B ... .

3. a) A computer program [product] adapted to perform the method of claim 1.

b) A computer program [product] comprising software code adapted to performsteps A, B...

4. a) A computer readable storage medium comprising the program of claim 3.

b) A computer readable storage medium comprising instructions to cause a dataprocessing apparatus to carry out steps A, B ....

Drafting of Claims

These formulations can be allowed as additional independent claims if the method claim (type 1) is allowable (T1173/97)

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1. A method of operating a data processing system comprising steps A, B ... .

2. a) A data processing apparatus/ system comprising means for carrying out the method of claim 1.

b) A data processing apparatus/ system comprising means for carrying out steps A, means for carrying out step B ... .

3. a) A computer program [product] adapted to perform the method of claim 1.

b) A computer program comprising software code adapted to perform steps A, B...

4. a) A computer readable storage medium comprising the program of claim 3.

b) A computer readable storage medium comprising instructions to cause a dataprocessing apparatus to carry out steps A, B ....

Drafting of Claims

5. Data structures, signals

Can be allowed in specific cases (see T1194/97)

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4. Example

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Druckexemplar: IBM 1173/97Asynchronous resynchronization of a commit procedure

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Druckexemplar: IBM 1173/97

Any Questions?

Thank you

for your attention!

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