Don’t try to convince the primary examiner at an EPO oral hearing, go for the other two members instead

When your patent application faces an oral hearing at the end of the examination procedure, there is a subtle difference between the EPO and the GPTO:

  • GPTO: the hearing is handled by a single examiner (the same who also handled the written procedure)
  • EPO: the hearing is handled by a panel of three examiners (the primary examiner in charge of the written procedure and two further examiners)

So if you cannot convince the EPO primary examiner, you still have a chance of convincing the other two members of the examining division.

Therefore, your European patent attorney should always plead his case so that the two members less involved in the case can easily follow and make up their own minds.

I’ve seen countless cases where the primary examiner finally gets overruled by the other two members. The length of the examining division’s deliberations while you wait outside is a good indicator of the extent to which they disagree 😉

Happy innovating!
Bastian

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Distributed software systems: make sure you get your patent claims right

In times of the IoT, cloud and XaaS, most software products are geographically distributed, oftentimes even across countries. Make sure your software patent claims reflect this.

Don’t mix up functionality of different entities in the same claim.

If you do, your claim might never be directly infringed because no single infringer realizes all claim elements, or realizes some of the claim elements abroad.

So for instance, for a client-broker-server architecture, draft one separate independent method claim for each entity: a client claim, a broker claim and a server claim.

Also include one apparatus claim for each entity. If drafted properly, they might be infringed in Europe already if the entity is suitable for performing the claimed function, even if it does not actively do it.

This can be very helpful with software in which certain functionality is included in the code but not activated for the customer.

Happy innovating,
Bastian

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If you’re from the US, don’t neglect means-plus-function claims

Did you know that means-plus-function patent claims provide the broadest scope in Europe, because they are interpreted as covering anything that can perform the function?

This is quite useful in software patents where it often does not make sense to limit the inventive functionality to a specific hardware implementation.

The US is a completely different story though: There, means-plus-function claims are limited to the corresponding structures recited in the specification, i.e. they are usually rather narrow.

best practice is therefore to include multiple independent claims in the priority application: one in means-plus-function format and another which recites structure like a processor and memory.

Your US and EP outside counsel can then pick the best version for the corresponding regional application.

Happy innovating,
Bastian

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It’s the non-obvious technical contribution!

I was talking about the first hurdle to software patentability in my previous post (technical character) and how it can be easily overcome.

When it comes to software patents in Europe, the real challenge is the second hurdle: the non-obvious technical contribution.

When a patent claim includes a mix of technical and non-technical features, only the technical features enter into the examination of inventive step. This means that the EP examiner will simply strike any non-technical features from the claim. If only trivial technical features remain, the invention is obvious.

Whether a given feature is technical and thus counts towards non-obviousness is decided case-by-case with good arguments and case law.

So please make sure you choose a European patent attorney who knows his case law and who deeply understands your technology. Only he can carve out persuasive arguments why a certain feature provides a technical effect and therefore can establish non-obviousness.

Happy innovating,
Bastian

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Technical character, technical contribution… don’t get confused by the EPO lingo

I’m happy to see that my recent LinkedIn post on whether software is patent-eligible at the EPO got 1,200 views in two days! So let’s take a closer look at how the EPO deals with software patent inventions:

The European Patent Convention (EPC) sets two hurdles on the way to a European patent:

  1. An absolute hurdle stating that the invention has to be an “invention” in the sense of Art. 52 EPC. This is met when the invention has “technical character” (and I’ll explain in a second what that means).
  2. The invention has to have certain qualities relative to the prior art: it must be novel and non-obvious. In the software field this boils down to the requirement of a non-obvious “technical contribution“.

So when does an invention have “technical character” (first hurdle)?

The law does not provide an exhaustive definition of “invention” or “technical”, but Art. 52(2) EPC contains a non-exhaustive list of subject-matters that are not regarded as inventions by law – e.g. “programs for computers”, “mathematical methods” and “methods for doing business”. However, Art. 52(3) EPC states that these subject-matters are only excluded from patentability when claimed “as such”.

So what does that mean for software-related inventions?

Without going into too much detail about the complicated wording of the law, the jurisprudence (the EPO boards of appeal) has developed a quite pragmatic solution: the so called “any hardware” approach:

Any method involving technical means has “technical character” and is thus an invention within the meaning of Article 52(1) EPC (the corresponding landmark decision is T 0258/03 – Auction method/HITACHI).

So what does that mean in practice?

Any piece of hardware recited in a patent claim will make the claim pass the first hurdle. I’ve outlined how to draft a computer program claim at the EPO here.

Summary

The first hurdle to software patentability (“technical character”) can be overcome in virtually every case by proper claim drafting, namely when any sort of technical device is involved. Blame your European patent attorney if your case gets rejected for failing this hurdle 😉

The decisive hurdle then is regularly the second one, the “technical contribution” which I will cover in the next post.

Have a great weekend!
Bastian

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Are your patents ready for the 3D printing revolution?

3D printing is one of the hottest topics in tech right now and will probably revolutionize the manufacturing sector as we know it today.

But what if your patents only include claims for the end product and the classic manufacturing method?

Someone offering a template file for 3D-printing the product will probably not infringe these claims.

Have you ever considered something like:

“A computer file comprising instructions for manufacturing, preferably 3D printing, a <end product> of claim 1.”

Computer program claims are standard practice in Europe in the software field, but I haven’t seen a claim like the above in “classic” patents for mechanical / physical products.

What are your thoughts on protecting physical products from being copied by 3D printing? Let me know in the comments!

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Why I’m writing a book about startup patent strategy

I’m a European patent attorney. And I was frustrated.

Over the years, countless entrepreneurs came to me with a feeling that they need some form of protection for their innovation – be it their disruptive business model or their cool new technology, product or service concept. Many got in contact with me after a potential investor had asked them some tough questions about their intellectual property and patent strategy.

But in many instances it was simply too late. Continue reading Why I’m writing a book about startup patent strategy