Intro to computer-implemented inventions / software patents (VOCABULARY flashcards)

A set of 100 vocabulary flashcards covering key concepts from the lecture notes on computer-implemented inventions and software patents.

According to the EPO, what defines an 'inventive step', and how does the concept of the 'person skilled in the art' contribute to its assessment?

The 'inventive step' means the invention is not obvious to a 'person skilled in the art' (PSITA) in light of the state of the art. The PSITA is a hypothetical individual with average knowledge, skill, and common general knowledge in the relevant technical field, and access to all prior art. For computer-implemented inventions, the PSITA evaluates if the combination of technical features (which may include software) provides an unobvious technical solution over existing technology. Non-technical features, while recognized by the PSITA, do not contribute to inventive step unless they interact with technical features to produce a technical effect.

What are the five steps of the 'problem-solution approach' for evaluating inventive step, and how does the 'person skilled in the art' engage with each step?

The EPO's standard five-step 'problem-solution approach' involves: 1. Identifying the closest prior art: The PSITA selects the most relevant prior art document. 2. Determining the differences: The PSITA compares the claimed invention to the closest prior art, identifying distinguishing features. 3. Assessing the technical effects: The PSITA evaluates the technical advantages or results of these differences. 4. Formulating the objective problem: The PSITA, avoiding hindsight, defines the technical problem solved by the invention, based on the differences and effects. 5. Considering combinations (Could-would approach): The PSITA determines if they 'would' have 'obvious'ly arrived at the invention to solve the objective problem, given prior art and common general knowledge. Non-technical features are treated as 'givens' for the PSITA to find a technical solution.

What constitutes a 'technical feature' for the 'person skilled in the art' when assessing computer-implemented inventions for inventive step?

For the PSITA, a 'technical feature' contributes to a technical solution and is part of the invention’s technical character. Purely abstract or cognitive steps are not. Technical features involve specific algorithms, data structures, or hardware interactions that produce a technical effect, such as improving internal computer functioning, controlling a physical process, or processing data in a technically optimized way, going beyond mere algorithm execution on a generic computer. The PSITA looks for tangible, practical technical contributions.

How is 'technical effect' understood in the context of inventive step, and why is its identification crucial for the 'person skilled in the art' when evaluating computer-implemented inventions?

The 'technical effect' is the technical advantage or result produced by the claim’s distinguishing features. For the PSITA, this effect must be measurable and go beyond generic computer operations. It is essential for computer-implemented inventions to overcome the 'as such' exclusion (e.g., for programs for computers). The PSITA identifies effects like faster processing, reduced memory usage, improved security, more accurate measurement, or control of a physical process. Conversely, the PSITA would not consider mere information presentation or solving a purely business problem, without a tangible technical consequence, as a 'technical effect'.

In the assessment of inventive step for mixed-type or computer-implemented inventions, how are 'non-technical features' handled, and what role do they play for the 'person skilled in the art'?

'Non-technical features' (e.g., business rules, mental acts, aesthetic criteria) do not inherently contribute to a technical solution. For the PSITA during inventive step analysis, especially for mixed-type or computer-implemented inventions, these features are generally not decisive for inventiveness unless they interact with technical features to produce a 'further technical effect'. The PSITA typically treats them as 'givens' or 'constraints' within the problem-solution approach, meaning the PSITA is assumed to work towards these non-technical prerequisites when seeking a technical solution, but the inventive step must reside in the technical means used.

How does the EPO determine the patentability of 'programs for computers' regarding inventive step, and what must the 'person skilled in the art' identify?

'Programs for computers' (software) are not patentable 'as such' (Article 52(2) EPC). However, if they possess 'technical character' and provide a 'technical contribution', they can be patentable. For the PSITA to deem such a program inventive, it must go beyond merely running on a computer; the PSITA must identify that it provides a specific, non-obvious technical solution to a technical problem, leading to a 'further technical effect' (e.g., improved system performance, control of a physical process), which is not inherent in any generic computer program.

What makes 'software-implemented inventions' patentable regarding inventive step, and what kind of 'technical contribution' must a 'person skilled in the art' be able to identify?

'Software-implemented inventions' are patentable if they have a 'technical contribution'. For the PSITA, this means the software must play a key role in solving a technical problem in a non-obvious way. The PSITA looks for contributions that provide a concrete technical effect, such as improved efficiency of a computer, enhanced security protocols, or the control of physical processes, rather than just implementing an abstract idea or a business method on a generic computer. The inventive step lies in this specific technical realization.

What is the significance of the EPO decision G3/08 (Programs for Computers) for the 'person skilled in the art' when evaluating inventive step in computer-implemented inventions?

G3/08 is a landmark EPO Enlarged Board of Appeal decision that confirmed the approach for assessing inventive step in computer-implemented inventions. For the PSITA, G3/08 clarified that a computer program must produce a 'further technical effect' beyond the normal physical interactions with computer hardware to be considered inventive. This decision reinforced that the inventive step for software inventions lies in their non-obvious technical contribution and technical effect, guiding the PSITA in their assessment.

How does the EPO decision G01/19 (Pedestrian Simulation) guide the 'person skilled in the art' on the patentability of simulations regarding inventive step?

G01/19 is an EPO Enlarged Board of Appeal decision that clarified the patentability of simulations. For the PSITA, G01/19 confirms that computer-implemented simulations can have the necessary technical character and thus be patentable (and inventive) if they provide a technical effect or contribute to a technical solution beyond merely representing the physical world. This typically involves the PSITA identifying that the simulation is integrated into a technical system, influences a physical process, or leads to technical optimization, rather than just providing abstract data for human interpretation.

How is the 'objective problem' formulated in the problem-solution approach, and why is it important for the 'person skilled in the art' to assess it independently of the inventor's view?

The 'objective problem' is the technical problem defined from the differences between the claimed invention and the closest prior art, assessed independently of the inventor’s actual viewpoint. For the PSITA, it's crucial that this problem is framed in purely 'technical terms', even if the underlying motivation was non-technical (e.g., a business goal). The PSITA's independence ensures that the problem is not formulated with hindsight to fit the solution, which would obscure whether the solution was truly non-obvious.

What is the 'Comviq approach' (T641/00), and how does it guide the 'person skilled in the art' in determining technical character and inventive step for mixed-type inventions?

The 'Comviq approach' (from T641/00) is a key methodology for the PSITA to evaluate technical character and inventive step in mixed-type inventions (technical and non-technical features). It directs that non-technical features, while part of the claim, generally do not contribute to inventive step themselves. Instead, the PSITA treats them as 'givens' or 'constraints' on the technical problem. Inventive step must arise from the technical solution provided in response to these constraints, unless the non-technical features interact with technical features to produce a 'further technical effect'. This approach ensures the PSITA focuses on the technical merits.

What lessons does the Cardinal Commerce case (T1463/11) offer the 'person skilled in the art' regarding the interaction of business methods and technical aspects in inventive step?

The 'Cardinal Commerce case' (T1463/11) illustrates for the PSITA how to assess inventive step in computer-implemented inventions combining business and technical features, specifically regarding centralized payment plugins. This decision clarifies that only features providing a 'technical contribution' can support inventive step, even if the overall invention addresses a practical business need. The PSITA must distinguish the business goal (a non-technical constraint) from the technical means (e.g., plugin architecture, communication protocols) used to achieve it, focusing the inventive step analysis on the latter.

What is the purpose of a 'technical character check' for an invention, and why is it a preliminary step for the 'person skilled in the art' before assessing inventive step?

A 'technical character check' is a fundamental preliminary assessment. Before the PSITA evaluates novelty and inventive step, it must be confirmed that the claimed invention possesses inherent 'technical character'. This means it must provide a technical solution to a technical problem or produce a technical effect. Claims identified by the PSITA as lacking technical character 'as such' (e.g., purely abstract mathematical methods, business schemes, or programs for computers 'as such' under Article 52(2) EPC exclusions) are not considered 'inventions' and are thus excluded from patentability, making an inventive step assessment irrelevant.

How does the 'person skilled in the art' analyze 'mixed-type inventions' for inventive step?

'Mixed-type inventions' contain both technical and non-technical features. For the PSITA, the inventive step assessment mainly focuses on the 'technical features'. Non-technical features are generally treated as 'givens' or constraints in the problem-solution approach. Inventive step exists only if the technical features, potentially through their interaction with non-technical features, provide a non-obvious technical contribution or effect over the prior art. The PSITA applies the Comviq approach to differentiate these contributions effectively.

Why is 'interaction with physical reality' a strong indicator for the 'person skilled in the art' that a computer-implemented invention possesses technical character for inventive step?

For the PSITA, 'interaction with physical reality' is a strong indicator of technical character because it demonstrates a tangible technical effect beyond mere data processing. If software or a simulation directly controls, influences, or provides technical parameters to a physical process or device (e.g., controlling a robot, optimizing an engine, managing a communication network), the PSITA views it as distinctly technical. Conversely, purely mental acts, abstract data processing, or presentation of information without such physical interaction are less likely to be considered technical for inventive step.

How does the 'person skilled in the art' distinguish between an 'abstract idea' and its 'technical context' when evaluating inventive step?

The PSITA distinguishes 'abstract ideas' (e.g., mathematical methods, business schemes, presentations of information 'as such') which are not patentable, from their 'technical context.' An abstract idea becomes patentable if it is applied in a specific technical context to solve a technical problem or achieve a technical effect. The inventive step, as identified by the PSITA, then resides in this specific, non-obvious technical application or implementation of the idea, rather than the abstract idea itself or its generic realization on a computer.

In the context of evaluating inventive step for mixed-type inventions, what is the 'two skilled persons' concept, and how does it assist the 'person skilled in the art'?

The 'two skilled persons' concept is a framework sometimes used in inventive step assessment for mixed-type inventions (e.g., computer-implemented business methods). It suggests that the 'person skilled in the art' (PSITA) might embody two experts: a technical expert and a business-minded expert. The business expert identifies a business problem (a non-technical 'given'), which is then presented to the technical expert. The technical expert then attempts to find an obvious technical solution. This helps the PSITA ensure that the inventive step is assessed purely on the technical contribution, not on the novelty of the business concept.

What can the 'person skilled in the art' learn from the 'Sonos time-synchronised speakers case' regarding the problem-solution approach for computer-implemented inventions?

The 'Sonos time-synchronised speakers case' illustrates for the PSITA the problem-solution approach for computer-implemented inventions involving technical interaction between devices. The invention involved time-synchronizing two speakers via WiFi to improve audio output. The case highlights that the inventive step often hinges on the specific technical means employed for wireless synchronization (e.g., reducing latency, improving signal quality), which provide a technical effect (e.g., higher audio quality, efficient data transfer), rather than merely the non-technical goal of synchronized audio. The PSITA focuses on the technical solution.

What are the general requirements for an 'invention' to be 'patentable' under the EPC, which includes the criterion of inventive step, as understood by the 'person skilled in the art'?

For an 'invention' to be 'patentable' under the EPC, the PSITA confirms it must be: 1. New (novelty), 2. Involve an inventive step (non-obvious), and 3. Be susceptible of industrial application. An invention, for the PSITA, is a technical solution to a problem, defined in patent claims. The 'inventive step' criterion ensures that the solution goes beyond what an average PSITA would readily devise based on existing knowledge.

How do general definitions of 'invention' and 'technical solution' relate to the inventive step assessment performed by the 'person skilled in the art'?

An 'invention' is defined as a 'technical solution to a problem'. For the PSITA, this implies a practical application in industry and a technical character. When assessing inventive step, the PSITA evaluates whether this 'technical solution' is non-obvious over the state of the art. The 'problem' itself must often be framed in technical terms, or a non-technical problem must be solved using non-obvious technical means, for the invention to qualify for an inventive step.

What is 'closest prior art', and why is its correct identification by the 'person skilled in the art' the crucial first step in evaluating inventive step?

The 'closest prior art' is the most relevant single piece of prior art that provides the most promising starting point for assessing inventive step. It typically discloses all or most of the claimed features, or at least the features that are most technologically similar or address the same initial problem. Its correct identification by the PSITA is crucial because it sets the baseline against which the 'actual' novelty and inventive step of the invention are measured, impacting all subsequent steps of the problem-solution approach.

What is the 'state of the art', and why must it be considered by the 'person skilled in the art' when assessing both novelty and inventive step?

The 'state of the art' comprises everything publicly available before the effective date (usually the filing or priority date) through written or oral description, use, or any other means. For the PSITA, the entire 'state of the art' is used for analyzing both novelty (is the invention entirely new?) and inventive step (is the invention non-obvious?). The PSITA considers what an average practitioner in the field would know or could deduce from this collective body of knowledge when assessing obviousness.

What excluded categories under Article 52(2) EPC are not considered 'inventions' by the EPO, and how does the 'person skilled in the art' typically treat them in an inventive step analysis?

Article 52(2) EPC lists categories not considered 'inventions as such': discoveries, mathematical methods, aesthetic creations, schemes for mental acts, playing games or doing business, and programs for computers. For the PSITA, these are generally deemed non-technical and do not offer an inventive step on their own. However, if integrated into a technical context to produce a technical effect, or if the inventive step lies in their technical application rather than the abstract concept itself, the PSITA may consider them patentable elements within a broader technical solution (e.g., an AI algorithm applied to control a technical process).

For the 'person skilled in the art', why are 'mathematical methods' generally not patentable as such, but can contribute to inventive step when applied in a technical context?

For the PSITA, 'mathematical methods' are pure mathematics and not technical by themselves, hence not patentable 'as such'. They lack a technical character. However, if a mathematical method is applied in a specific 'technical context' to solve a technical problem and produces a technical effect (e.g., a new algorithm for image compression that reduces data size more efficiently, or a control algorithm improving machine accuracy), the inventive step then lies in this particular technical application, not in the mathematical method itself. The PSITA looks for this technical application.

How might 'AI (Artificial Intelligence)' or 'Machine learning' be considered patentable regarding inventive step, according to the understanding of the 'person skilled in the art'?

For the PSITA, 'AI (Artificial Intelligence)' and 'Machine learning' (a subset of AI) models are essentially statistical and rule-based mathematical methods. As such, they are not patentable 'as such'. However, they may contribute to inventive step and be patentable if they are applied to a technical problem in a non-obvious way and produce a technical effect. The PSITA would look for instances where an AI/ML system is used, for example, to control a physical process, analyze medical images, or optimize the internal workings of a computer system, thereby providing a technical solution beyond merely processing abstract data.

How does 'digital data processing' become technical and contribute to inventive step, from the perspective of the 'person skilled in the art'?

'Digital data processing' is inherently non-technical when it's just about information manipulation or abstract calculations. For the PSITA, it becomes technical, and thus potentially inventive, when it contributes to a definite 'technical solution' or produces a 'technical effect'. This could involve optimized resource management within a computer, enhanced data security, improved data transfer rates over a network, or processing data in a way that directly relates to a physical technical process (e.g., processing sensor data for machine control). The inventive step lies in this technical contribution.

Under what conditions might a 'Graphical User Interface (GUI)' or 'Interactive GUI' be considered technical and contribute to inventive step by the 'person skilled in the art'?

A 'Graphical User Interface (GUI)' or 'Interactive GUI' is typically considered a presentation of information, which is generally non-technical. However, for the PSITA, a GUI can become technical and contribute to inventive step if it produces a 'technical effect' beyond merely displaying information aesthetically or facilitating mental acts. This occurs if the GUI's design or functionality specifically contributes to the technical operation of a device, improves computer efficiency, or enables a user to control a technical process in a specific, non-obvious technical manner (e.g., an interface for optimally configuring a complex industrial machine, or for displaying diagnostic data in a technically expedient way that improves fault detection).

What is the role of 'technical contribution' in inventive step, and why is it paramount for the 'person skilled in the art' to identify it in any invention?

A 'technical contribution' is an improvement over the prior art that provides a technical advantage or solves a technical problem. For the PSITA, it is paramount to identify this contribution because it is the core element that forms the basis for an inventive step. Without a demonstrable technical contribution that goes beyond what is obvious from the state of the art, an invention, particularly a computer-implemented one, will not be considered inventive. The PSITA looks for the specific, non-obvious technical difference that the invention introduces.

Why is the method of 'differences feature analysis' critical for the 'person skilled in the art' during the inventive step assessment?

The 'differences feature analysis' is a critical step within the problem-solution approach. It involves the PSITA meticulously comparing every feature of the claimed invention against the chosen closest prior art to identify all distinguishing features (elements present in the claim but absent from the prior art). This rigorous comparison is fundamental because it precisely defines what is new, and thereby sets the scope for the subsequent assessment of technical effects and objective problem formulation. Without this detailed analysis, the PSITA cannot accurately determine the inventive step.

According to the EPO, what defines 'Relatively stable case law' regarding computer-implemented inventions, and how does it guide the 'person skilled in the art' in assessing inventive step?

'Relatively stable case law' refers to the established legal precedents (like G3/08 and T641/00/Comviq) that consistently guide the EPO in applying the EPC to computer-implemented inventions. For the PSITA, this stable case law provides a predictable framework, clarifying how to assess 'technical character' and 'inventive step'. It helps the PSITA consistently identify 'technical effects', treat 'non-technical features as givens', and formulate