By Moeller IP.
Patentability of Computer-Implemented Inventions in Latin America
Join Moeller experts on this coming webinar organized by the Section of Intellectual Property of the American Bar Association on Tuesday, March 31 at 12ET
Our experts are:
- Jose Santacroce, Head of Moeller Patent Department and a former patent examiner who retired as Director at the European Patent Office in the field of Computers (Human-Computer Interaction) after working there for 30 years.
- And Mariano Municoy, Head of the Regional Legal Department at Moeller and Adjunct Professor at Universidad de San Andres as well as Austral in Argentina, plus a regular foreign visiting professor at Chicago Kent in the USA,
- They will be joined by Helena Galan. She is a specialist at Darts IP, the top global IP caselaw database provider
This will be a live webinar where they will analyze the most important issues when filing, prosecuting and enforcing Computer-Implemented Inventions (CII) in Latin America. Particularly in Argentina, Brazil, and Mexico.
Even though in absolute terms the number of CII patent applications in Latin America is still very low when compared to those of developed countries/regions. Relatively speaking they have been growing faster than applications in other fields of technology. Fact that is also expanding the non-very distant almost non-existing caselaw
However, there are many serious challenges to obtain legal protection which start at the time of filing and prosecuting such as navigating. For example the exclusions from patentability, establishing the technical character /contribution of the invention as well as assessing the presence of inventive step.
During the webinar, we will present both a general picture and some particular administrative and judicial cases. That way you can get the knowledge about the best ways to achieve the best possible legal protection of CII inventions in Latin America.
To register go to this website: https://www.americanbar.org/events-cle/mtg/web/395256589/Read More
La periodista Pamela Hernández entrevistó a José Santacroce, Director del clúster de invenciones implementadas por computador la oficina europea de patentes, quien explica brevemente la diferencia entre lo que conocemos como software y una invención implementada por computador, la cual conlleva un concepto mucho más extenso dada su definición, ejecución y aplicación tomando como base el desarrollo económico de un país como Colombia, sus retos, la cobertura tecnológica y la búsqueda de conceptos comunes con el fin de beneficiar la certidumbre del inventor. Lea la nota en: www.sic.gov.co/ruta-pi/julio19/que-hay-detras-de-las-invenciones-implementadas-por-computador
On 1 November 2018 the EPO issued the new CII Guidelines, in which all substantial changes relate mainly to sections discussing the First Hurdle (technical character), that is Parts F-IV and G-VII.
Moreover, the new EPO CII Guidelines include for the first time new sections on Artificial Intelligence (AI) and Machine Learning (ML), and on Simulation, design or modelling.
The main aspects of the 2018 EPO CII Guidelines are explained below:
Mathematical methods (G-II 3.3)
The section on mathematical methods has been completely revised, adding a distinction between contribution in producing a technical effect that serves a technical purpose, by its application to a field of technology and/or by being adapted to a specific technical implementation.
Concerning contribution by way of application to a particular field of technology, the following specific examples are given:
De-noising, detecting persons in a digital image, estimating the quality of a transmitted digital audio signal;
Mapping a speech input to a text output;
Error-correction coding of data for transmission over a noisy channel, compression of audio, image, video or sensor data;
Optimizing load distribution in a computer network;
Determining the energy expenditure of a subject by processing data obtained from physiological sensors;
Providing a genotype estimate based on an analysis of DNA samples, as well as providing a confidence interval for this estimate so as to quantify its reliability;
Providing a medical diagnosis by an automated system processing physiological measurements.
Concerning the contribution by way of specific technical implementation, a mathematical method also may contribute to the technical character of the invention independently of any technical application when the claim is directed to a specific technical implementation of the mathematical method and the mathematical method is particularly adapted for that implementation in that its design is motivated by technical considerations of the internal functioning of the computer.
Artificial Intelligence and Machine Learning (G-II 3.3.1)
The new CII Guidelines for the first time provide a section relating to AI and ML, which are first defined as computational models and algorithms for classification, clustering, regression and dimensionality reduction. They are considered per se to be of an abstract mathematical nature, irrespective of whether they can be “trained” based on (real) training data.
In order to overcome the first hurdle, a causal link to the technical purpose should be established, e.g. use of mathematical method in a heart monitoring apparatus for the purpose of identifying irregular heartbeats, classification of digital images, videos, audio or speech signals based on edges or pixel attributes, and avoid using expressions that may encompass cognitive aspects of data (e.g. textual content of a document).
Furthermore, the new EPO CII Guidelines now specify that steps of generating the training set and training the AI models also may contribute to the technical character of the invention if they support achieving a technical purpose.
Simulation, design or modelling (G-II 3.3.2)
Claims directed to methods of simulation, design or modelling can be considered technical under the same principles of the other computer-implemented inventions.
In particular, the computer-implemented simulation of the behavior of an adequately defined class of technical items, or specific technical processes, under technically relevant conditions qualifies as a technical purpose, as is the case of an electronic circuit subject to 1/f noise or of a specific industrial chemical process. This section of the new Guidelines makes it clear that lack of a final physical step of production of a product is not required for a simulation method to be patent-eligible.
This applies not only to simulation of behavior of a technical item but also in the context of computer-aided design of a specific technical object (product, system or process): determining a critical parameter such as a refractive index in an optical system or an operating parameter of a nuclear reactor constitute a technical contribution.
Schemes, rules and methods for performing mental acts, playing games or doing business (G-II 3.5)
It is explicitly defined, that if a method claim encompasses a purely mental/gaming/business realization of all method steps, it falls under the category of a non-invention and therefore is not patentable.
For example, when a simulation involves real world values obtained by a technical measurement, this is not patentable subject-matter, i.e., lacking technical character, unless:
A corresponding claim includes the step of carrying out the technical measurement, or
The use of other technical means (e.g. a computer, a measuring device etc.) or if it provides a physical entity as the resulting product, or
If it serves a technical purpose.
Steps involving non patentable subject matter can be included, however, they will be taken into account for assessing inventive step, only if, in the context of the invention, they contribute to producing a technical effect serving a technical purpose.
According to the new EPO CII Guidelines, examples of patentable subject-matter include:
When implementing a condition of matching random numbers for game paying, the use of a computer calculating a pseudo-random sequence or of mechanical means such as cubic dice or uniformly sectored reels;
A networked implementation of a game of chance like bingo, in which numbers physically drawn by an operator undergo a random mapping prior to transmission to remote players, since the scrambling of results has the technical effect of securing a data transmission; and
Interactive control of real-time manoeuvers in a game world, the display of which is subject to conflicting technical requirements.
On the contrary, as an example, computation which determine a game score or a skill rating for players, even if computationally complex, are usually considered non-technical.
Finally, concerning the Second Hurdle (inventive step assessment), a few examples are given for patentable subject-matter where, although a technical problem exists, it is not solved but circumvented:
A reduction of memory, network, or computational resources achieved by limiting the complexity of a game does not overcome a technical constraint by a technical solution;
An automated accounting method that avoids redundant bookkeeping does not solve a technical problem if such reduction of workload results from a reduction of the number of operations to be performed due to the business constraints.
Inventions realized in a distributed computing environment (F-IV 3.9.3)
This new section relates to CII realized in a distributed computing environment, in order to give guidance on unity requirements.
The new EPO CII Guidelines specify that it may be necessary to refer to the specific features of the different entities in the environment and to define how they interact to ensure the presence of all essential features, unless this is not essential to performing the invention. The different entities participating in the distributed system can be claimed without incurring a non-unity objection, however it may happen that not all claimed entities are new and inventive. This is the case when for example an entity encodes information in a more efficient way, but an information-receiving entity decodes such encoded information in a conventional way: the information-receiving entity is normally neither new nor inventive.
Source: www.epo.orgRead More