Updates to Indian computer related inventions guidelines
What are the main changes in the updated guidelines for applicants looking to protect their computer related inventions?
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There are a number of challenges to be faced when obtaining patent protection for software related inventions. The most notable being that ‘programs for a computer’ form part of the subject matter excluded from patentability under both UK law and the European Patent Convention (EPC).
However, as stated in Art 52(3) EPC, programs for a computer are only excluded from patentability to the extent that the European patent application relates to a program for a computer as such.
For a software related invention to not be merely considered a program for a computer as such, the invention must comprise ‘technical character’. In order for a computer program to have technical character, the computer program must produce a ‘further technical effect’ which goes beyond the normal physical interactions between the program for a computer and the computer itself.
If the invention is objected to by the European Patent Office (EPO) under Art 52(2) and 52(3) EPC on the grounds of falling solely within the subject matter of a program for a computer as such, the applicant can file arguments justifying why the current features of claims provide a further technical effect and/or amendments to the claims to include additional features from the specification which provide a further technical effect. When relying on arguments to overcome objections, it is necessary to take care that these are persuasive and do not rely on interpretations that the EPO can readily dismiss.
In this context, the EPO have identified three particular arguments, often made by applicants, which are unlikely to successfully overcome an excluded subject matter objection. These three arguments are known as the three technical fallacies:
The technical leakage fallacy is defined as when ‘intrinsic technical nature of the implementation leaks back into the intrinsically non-technical nature of the problem.’
The broken technical chain fallacy is defined as when ‘a technical effect might result from the user’s reaction to information.’ In other words, ‘the possible final technical effect brought about by the action of user cannot be used to establish an overall technical effect because it is conditional on the mental activities of the user.’
Finally, the non-technical prejudice fallacy is defined as when the ‘argument essentially invokes non-technical aspects as a reason for not modifying the prior art, whereas these features cannot in fact contribute to inventive step.’ Therefore, arguments for why the skilled person would not modify the prior art which rely on non-technical features of the invention are not adequate to demonstrate that the invention is not an obvious modification since the non-technical features cannot contribute to the inventive step.
The three technical fallacies were all developed as part of decision T1670/07 by the members of the Technical Board of Appeal. As such, T1670/07 provides an illustration of how each of the three technical fallacies work in practice.
Decision T1670/07 concerned an appeal made by the applicant, Nokia, in relation to a decision of the Examining Division to refuse the application on the grounds that the method of claim 1 lacked an inventive step. The patent application described a method of facilitating shopping with a mobile wireless communications device in which the user enters multiple desired goods and/or services into the mobile device. The output of such method would be a shopping itinerary comprising an order in which to efficiently visit a plurality of shops to obtain such goods and/or services.
The method was found to be novel over the cited prior art as it provides the user with a plurality of shops and an order in which to visit these shops based on the profile of the user. The closest prior art provided a system for finding an individual shop capable of providing the goods and services required by the user.
The Examining Division considered that the features of obtaining goods and services from a plurality of shops and providing a shopping itinerary did not provide a further technical effect. The Examining Division further considered the features of providing an order to visit the shops and that the itinerary was based upon the user’s profile were obvious and therefore the invention lacked an inventive step. The patent application was therefore refused. Nokia appealed the decision to the Technical Board of Appeal.
In the decision by the Technical Board of Appeal, it was found that none of the above features provided a further technical effect. In such decision, the Technical Board of Appeal identified and applied the three fallacies to explain why the features of the invention did not comprise a further technical effect.
The appellant, Nokia, argued that the invention comprised a further technical effect because of the information regarding the shops to visit and the order in which to visit them, interacting with a server. However, the Technical Board of Appeal considered this argument to fall within the technical leakage fallacy since a non-technical feature, the information of which shops to visit, was interacting with a technical feature, the server.
The appellant also argued that the physical act of the user going to different locations on the itinerary produced by the method provided a further technical effect. However, the Technical Board of Appeal objected to this line of argument as they considered it to fall within the definition of the broken technical chain fallacy as the user going to the different locations depended upon the user’s reaction to the itinerary.
Finally, the appellant also argued that since the prior art was only capable of identifying a single shop selling all the products required, the requested order could often not be satisfied by a single shop, as such the present invention solved the problem of reducing the number of failed attempts to fulfil an order. However, the Technical Board of Appeal deemed this line of argument to fall within the non-technical prejudice fallacy since these features are non-technical and cannot contribute to the inventive step of the claimed invention.
The three technical fallacies as outlined by the EPO Technical Board of Appeal provide guidance for applicants on the types of arguments that should be avoided when arguing a claimed computer program invention comprises a further technical effect.
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