This article follows up a post by Gene on 19 September entitled Remembering Nuijten and Comisky 5 Years Later. I commented that in the EPO the practice relating to signals is directly contrary to the U.S. Gene commented in response, inviting me to write an article on the topic.
It should be remembered that the USPTO and courts traditionally granted signal claims, and Nuijten was an innovative decision and arguably an outlier that deserved more challenge than it received. The pre-Nuitjen position and the desirability of allowing signal claims or claims to computer program products without specifying non-transitory media embodiment is recorded in a paper by Stephen G.Kunin et al., Patent Eligibility of Signal Claims, Journal of the Patent and Trademark Office Society, 87, No. 12, 907 – 1002 (December 2005). Many positive reasons for allowance of such claims are described in that paper, and they are traced back in history to O’Reilly v Morse.
The good news is that signal claims and broad claims to computer program products are obtainable in Europe. However, such claims are only grantable if the necessary language is present in the European application or the International application as filed, otherwise objection will arise under a.123(2) EPC. Further, the EPO rules on priority are strict, and if the necessary language is missing from the US provisional or utility application from which priority is claimed, then signal or unrestricted computer program product claims will not benefit from priority. It is at the time of US filing that the necessary language must be introduced, and in particular entry into the European regional phase is too late.
Patentability of signals
Since the Appeal Board decision in T 163/85 Television signal/BBC, EPO practice has been to grant signal claims. The patent in issue, EP-B-008335 related to a signal of defined structure for a television picture. The signal claim was held to be patentable because it covered a physical reality that could be detected by technical means, as can be understood from Fig. 2 of the patent (see left).
The granted claim read:
A color television signal adapted to generate a picture with an aspect ratio of greater than 4 : 3, and in which the active-video portion of a line constitutes at least 85% and preferably 90% of the line period.
The reasons for grant were further explained in T 1194/97 PHILIPS (EP-B-0500927), in which the Appeal Board expressly approved the BBC decision and drew a distinction that had previously been identified by Shannon in his theory of communication between information that can be protected and content which is excluded from protection. It explained:
“… the deciding board considered it appropriate to distinguish between two kinds of information, when discussing its presentation. According to this distinction, a TV signal solely characterized by the information per se, e.g. moving pictures, modulated upon a standard TV signal, may fall under the exclusion of Article 52(2)(d) and (3) EPC but not a TV signal defined in terms which inherently comprise the technical features of the TV system in which it occurs. The present board regards a record carrier having data recorded thereon as being in this respect analogous to a modulated TV signal and considers it appropriate to distinguish in a corresponding way between data which encodes cognitive content, e.g. a picture, in a standard manner and functional data defined in terms which inherently comprise the technical features of the system (reader plus record carrier) in which the record carrier is operative. The significance of the distinction between functional data and cognitive information content in relation to technical effect and character may be illustrated by the fact that in the present context complete loss of the cognitive content resulting in a humanly meaningless picture like “snow” on a television screen has no effect on the technical working of the system, while loss of functional data will impair the technical operation and in the limit bring the system to a complete halt. In particular the board sees no reason to ascribe less technical character to a synchronization signal recorded as digital data, e.g. a predetermined binary string, than to an analog synchronization signal transmitted or recorded as a pulse having a distinctive shape.”
There are several Nuijten specifications relating to digital watermarking, and further research has revealed that the true counterpart of In re Nuijten is WO 00/33226 and not WO 98/33324 as incorrectly stated in my recent comment on Gene’s earlier posting. It is not apparent that the US counterpart of ‘226 USSN 09/211928 proceeded to grant, although as noted in the CAFC decision a number of its claims were held to be allowable. Nuitjen is the subject of granted EP-B-0962094 in which the broadest method claim (also allowed by the USPTO) reads:
A method of embedding supplemental data in a signal, comprising the steps of
encoding the signal in accordance with an encoding process which includes the step of feeding back the encoded signal to control said encoding, and
modifying selected samples of the encoded signal to represent said supplemental data, characterized in that
the step of modifying the selected samples is carried out prior to said feedback of the encoded signal and includes modifying at least one further sample of the encoded signal preceding the selected sample if said further sample modification is found to improve the quality of said encoding process.
The EPO also granted a signal claim that reads:
A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing said supplemental data, characterized in that at least one of the samples preceding said selected samples is different from the sample corresponding to said given encoding process.
Support was derived inter alia from Fig. 2 of ‘094 which will be familiar to readers of the CAFC decision, and the decision to grant a claim of this type is plainly in accordance with the precedent set by the BBC case.
A more recent example is found in EP-B-1878185 (France Telecom; US 2008/0260061 corresponds) where the following claims were granted:
1. Method for coding an OFDM/OQAM multicarrier signal formed by a temporal succession of symbols consisting of a set of data elements, each of said data elements modulating a carrier frequency of said signal, characterized in that each of said data elements is formed by the summation (32) of two real values in quadrature each corresponding to a binary word of a source signal (301, 302), modulated according to a predetermined modulation constellation (311, 312), so as to transmit information over a real channel and over an imaginary channel of said OFDM/OQAM symbols.
8. OFDM/OQAM multicarrier signal formed by a temporal succession of symbols consisting of a set of data elements, each of said data elements modulating a carrier frequency of said signal,
characterized in that each of said data elements is formed by the summation of two real values in quadrature each corresponding to a binary word of a source signal, modulated according to a predetermined modulation constellation, so as to transmit information over a real channel and over an imaginary channel of said OFDM/OQAM symbols.
9. Computer program product downloadable from a communication network and/or stored on a computer-readable and/or microprocessor-executable medium, characterized in that it comprises program code instructions for implementing a method for coding a multicarrier signal according to any one of Claims 1 to 7.
Downloadable computer program products.
It will be noted that claim 9 of the ‘185 patent covers a computer program product downloadable from the Internet and is not restricted to such a product embodied in a non-transitory form. Claims of this scope were held to be in principle allowable in T 1173/97 IBM/Computer related product (EP-B-0457112)
where the main claim, which had been held to be acceptable read:
1. A method for resource recovery in a computer system running an application which requests a work operation involving a resource, said method comprising the steps of:
implementing a commit procedure for said work request;
in case the said commit procedure is not completed due to a failure, notifying the application after some time that it can continue to run, whereby said application need not wait for resynchronization; and
while said application continues to run, resynchronising said incomplete commit procedure for said resource asynchronously relative to said application.
A product claim that was objected to read:
20. A computer program product directly loadable into the internal memory of a digital computer comprising software code portions for performing the steps of claim 1 when said product is run on a computer.
The Board held that claim 20 was in principle allowable, and that it was not appropriate to exclude all computer programs as such, irrespective of their contents It depended on whether the software produced a “further technical effect” which is identified in the decision as follows:
It could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. Where said further effects have a technical character or where they cause the software to solve a technical problem, an invention which brings about such an effect may be considered an invention, which can, in principle, be the subject matter of a patent …
Consequently a patent could be granted not only in the case of an invention where a piece of software manages, by means of a computer, an industrial process or the working of a piece of machinery, but in every case where a program for a computer is the only means, or one of the necessary means, of obtaining a technical effect within the meaning specified above, where, for instance, a technical effect of that kind is achieved by the internal functioning of the computer itself under the influence of said program.
The Board went on to say that:
“The Board has analysed some aspects of the meaning of the expression ‘computer programs as such’, with the emphasis on the ‘as such’, and has arrived at the conclusion that a computer program product is not excluded from patentability if it possesses the potential to bring about a ‘further’ technical effect.”
For a recent example, there may be mentioned RIM’s EP-B-2117263 directed to the handling of emergency calls. The product claims granted include the following:
A computer program comprising program code for use in a wireless telecommunications device, the computer program causing when executed on a computer the wireless communications devices to:
detect initiation of an emergency call when the device is out of service with a telecommunications network and searching for a suitable cell on which the device may camp to obtain normal service; and
in response to detection of an emergency call being initiated by the device when the device is out of service with the network, halt the search for a suitable cell and initiate a search for an acceptable cell on which the device may camp to obtain limited service and when an acceptable cell is found establishing the emergency call.
Another recent example is found in EP-B-1918003 (Enix) which relates to a network game system for playing a massively multiplayer online role-playing game. The allowed claim read:
A computer program product for displaying a game screen on a display device of each of a plurality of terminal apparatuses to execute a network game in a network game system,
in the network game system the plurality of terminal apparatuses being connected to a server apparatus via a network,
each of the terminal apparatuses allowing a plurality of player characters to participate in the network game,
the player characters caused to participate in the network game existing in a common virtual space,
the computer program product comprising computer program code for causing each of the terminal apparatuses to execute the steps of a method according to claim 20.
Computer program claims referring back to earlier method claims can be of very simple format. There may be mentioned Exent Technologies’ EP-B-2174288 concerning dynamically modifying graphics content, where the allowed product claim was unnecessarily limited and read:
A computer program product [comprising a computer-readable medium] having computer program logic [recorded thereon] arranged to put into effect the method of any of claims 1-15.
It appears that this claim would have been equally grantable without the features in square brackets since these features apparently contribute nothing to eligibility or to novelty, inventive step and enablement. Assuming that the application as filed contained only the limited language, then the EPO would almost certainly have refused a broadening amendment along the lines indicated. The reason is that such an amendment would have potentially introduced a new generalization to cover a computer program product not comprising a computer-readable medium. This type of objection is routinely made under a. 123(2) EPC as many readers will know, and is very difficult to overcome. Hence, as mentioned earlier, if broad coverage is desired, the necessary language must be in the priority application or International/European application as filed.
It is tempting for practitioners to assume that their familiar domestic law applies everywhere. Experience teaches, however, that this is a dangerous assumption, and an awareness of what is possible before the EPO should be part of the mental toolkit of every US practitioner in this field.
Finally, I will be attending the annual meeting of AIPLA in Washington next month, and anyone at that meeting with a query concerning the possibilities in Europe is welcome to contact me.
Join the Discussion
4 comments so far.
Mark NowotarskiSeptember 28, 2012 02:13 pm
And once every home has a 3D printer, it will be the standard channel for object distribution as well.
Mark NowotarskiSeptember 28, 2012 02:09 pm
especially since this is nowadays the standard channel for software distribution
Paul ColeSeptember 28, 2012 12:48 pm
I can happily adopt the language of Steve Kunin: “Signal claims, if drafted properly, provide an excellent way of obtaining patent protection for software and other digital functionally descriptive information transported via or in connection with a propogation medium. Such claims enable patent owners to have broad patent protection against those direct infringers who produce and transport software on propagation media such as wires, air, water and fiber optics. As compared with conventional method and apparatus claims, detecting infringement is often easier with signal claims because the signals are frequently outputted from a device and sent over a publicly accessible medium, such as wireless channels or the Internet.” My understanding is that the position in EPC contracting states is as stated above. For example, the importation of signals in e.g. the UK from a server in Mexico would amount to direct infringement as, arguably would be the trassmission of the signals from the Mexican server. The same would be true of a computer program product e.g. an app transmitted from the Mexican server to users in the UK following a payment made electronically. The practical value of claims of these types therefore needs no elaboration, especially since this is nowadays the standard channel for software distribution and the days when shelves of software on disks formed major parts of our local computer stores are long gone.
Mark NowotarskiSeptember 28, 2012 12:15 pm
Do you have any sense on how “computer program product” and “signal” claims impact enforceability?