The Patenters - חברה לרישום פטנטים

Updates May 2018 on examination of software related inventions


Software related inventions were one of the major topics for the biannnual  AIPPI  conference in Israel (“The economy of Innovation”), held April 30th to May 1st in Israel.

As I have reported in a previous article, there are some profound changes in the attitude of the examiners towards such inventions.

Dr Morgan Chu mentioned that recently in USPTO a lot of new examination guidelines have been added.  The motivation behind the progress was the new director’s quest for more clarity.  It is very welcome news that examiners must now base their position on a publication.  If their position is based upon the personal experience or viewpoint, it still has to be fleshed out in full.  The personal view also must be supported by an affidavit.

Such arguments may be used against the subject matter being an unpatentable type of software related invention.

In Israel I have had a 70+ hour interview & argumentation to overturn a Refusal.  One of the examiners was very dismissive of my viewpoints but didn’t bother to provide factual support.  I just happened to have hands-on scientific expertise in the subject matter.  Finally I overturned the Refusal but I wonder how many hours would have been saved by such a guideline.

Makato Onda explained the Japanese Patent Office (JPO) Guidelines of 2000.  Computer programs, software and readable storage media are patentable subject matter.  However, signals are not.  In order to render the claim patentable each step needs to be implemented with hardware.  But signal are implemented by hardware -?

To avoid an allegation that a step can be carried out by humans (“even 10,000 of them”), one can write: “an information processing method using a computer…to accept an order with a computer….processing with the computer”.

Means & function language is acceptable in Japanese patent practice.  However, many examples should be described in the specification.

Makato also explained that many inventive step JPO rejections of applications in this field are overturned in appeals.

Duncan White compared software-related patent regimes under UKIPO and EPO.  He explained that even if a feature is not technical but it has a technical contribution and/or effect, such as to control a process, it should be patentable.  Therefore, computer programs can be such a feature, even without reciting a memory storage device etc.

This approach seems very sensible rather than artificially and forcefully adding hardware elements.

Mathematical methods draw less rejections than software, but should have a technical purpose, e.g., accelerating a transaction will not curry favour with the examiners.

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