APPLE V MOTOROLA in the EPO and Germany – patentability of user interface features

Guest Post by Paul Cole of the UK firm of Lucas & Co.

According to BBC News last Friday, Apple has succeeded in the German courts in enforcing a patent for a user interface feature for its mobile devices. The ruling demonstrates the value of European patents for "software" inventions where a "technical" effect can be demonstrated. The claims in the granted patents and the problems that they solve provide insight about what features of a user interface might be regarded as "technical" by the EPO. The advantages to a software developer of being able to patent innovative interface features that are important to the "look and feel" of the device and the software running on it are self-evident.

The affirmed patent is EP-B-1964022 which relates to the "slide to unlock" feature found in iPhones. The claim as granted is set out below:

A computer-implemented method of controlling a portable electronic device comprising a touch-sensitive display, comprising:
-detecting contact with the touch-sensitive display while the device is in a user-interface lock state;
-transitioning the device to a user-interface unlock state if the detected contact corresponds to a predefined gesture; and
-maintaining the device in the user-interface lock state if the detected contact does not correspond to the predefined gesture; characterized by
moving an unlock image along a predefined displayed path on the touch-sensitive display in accordance with the contact, wherein the unlock image is a graphical, interactive user-interface object with which a user interacts in order to unlock the device.

A copy of the decision is not yet available online, but study of the online file of the European patent application (which was not opposed after grant) is instructive. The Examining Division accepted that the provision of a device control method with visual feedback was a technical problem but objected that the claimed subject matter was obvious because dragging and dropping were known. In their reply, Apple argued that the objective technical problem was to provide a more efficient user-friendly procedure for unlocking a portable device and to provide a sensory feedback to the user regarding progress towards satisfaction of a user input condition that was required for unlocking to occur. As set out in the claim, the unlock image signalled to the user that the device was locked and simultaneously indicated a contact point that a user had to touch in order to unlock the device. The displayed path indicated to the user where and how the unlock image had to be moved and the current position of the image indicated progress already made towards the unlocked condition. The method was easier than in the prior art where a sequence of operations had to be memorised.

The second patent, EP-B-2059868 which relates to the handling of digital images, has not yet been ruled on by the German courts However, the granted claim and the reasons for grant are also of interest since any iPhone user will be familiar with the "Camera-Roll" feature in question.The main claim is set out below.

A computer-implemented method, comprising: at a device with a touch screen display:
-detecting a first movement of a physical object on or near the touch screen display;
-while detecting the first movement, translating a first digital object displayed on the touch screen display in a first direction, wherein the first digital object is associated with a set of digital objects; characterized in that:
-in response to display of a previously hidden edge of the first digital object and continued detection of the first movement, displaying an area beyond the edge of the first digital object;
-after the first movement is no longer detected, translating the first digital object in a second direction until the area beyond the edge of the first digital object is no longer displayed;
-detecting a second movement of the physical object on or near the touch screen display; and
-in response to detecting the second movement while the previously hidden edge of the first digital object is displayed, translating the first digital object in the first direction and displaying a second digital object in the set of digital objects.

It appears from the file of the granted patent (which again was not opposed) that the technical effect of allowing a user to navigate within an image and to switch between images with a minimum of user input types was sufficient to support patentability.

The EPO acted as International Searching Authority, International Preliminary Examination was not necessary since the written opinion accompanying the search was favourable to patentability, and no objections were raised on entry into the European regional phase. The advantages to US applicants of using the EPO as ISA and possibly subsequently IPEA if allowable subject matter is likely to be identified are also self-evident.

It is instructive to compare these two granted European patents with another "look and feel" application which was refused by the EPO (EP1249014, Appeal Board decision T 0050/07; US 6396520). Interestingly this is the only Apple patent or application which appears to have been the subject of proceedings before an EPO Appeal Board. The invention concerned transition of a window between a maximised state and an icon state on the taskbar.

The main claim before the EPO Appeal Board read:

A method of transitioning a window on a computer screen between an open state and a minimized state, comprising the steps of:
-obtaining location information associated with a first window position in the open state;
-obtaining location information associated with a second window position in the minimized state;
-defining a set of curves, wherein said curves connect two selected points that relate to a dimension of said window in its first position to corresponding points of said window in its second position; and
-displaying said window at successive positions within said curves from said first position to said second position while scaling said dimension of the window to fit within said curves in a manner so as to give the appearance of sliding.

The issues before the Appeal Board provide an object lesson in how the state of the art at the application date, the exclusions as to patentable subject matter under a.52 EPC and the limitations of the disclosure of the application itself can exert a collective "squeeze" such that the result is refusal.

The closest prior art was US 6002402 (Schacher, Symantec) which showed a window transitioning between a maximised and an icon state, and novelty was to be found in the set of curves through which the transition took place producing a "funnel-like" effect and the display of the window at successive positions while it was being scaled down.

Arguments based on improved functionality received short shrift, the Appeal Board observing:

"Moreover, the alleged ergonomic improvement achieved by directing the user's attention to the final destination of the minimized window, so that the user will remember its location and, thus, find it again more rapidly, is not convincing either. As far as the precise location of the minimized window on the task bar is remembered at all by the user, this will only be ergonomically valuable to the user for a short amount of time, after which it will normally be forgotten. Furthermore, as minimized windows are at any rate typically arranged according to some predefined scheme (typically added at the end of the task bar or returned to the corresponding application button on the task bar) the user would already know where to find the minimized window. Therefore, the board is not convinced that there would be any added ergonomic value in drawing the user's attention to the final destination of the minimized window in the claimed manner."

The differences between the invention and the prior art were therefore held to reside in the production of an aesthetic effect. Since that effect had no technical character, it could not in itself contribute to inventive step. However, it could be taken into account in formulating the objective technical problem over Schacher which was how to achieve the specified "funnel-like" effect. The information in the specification in this regard was limited, as indicated by the flowchart below:

The description did not show that there was any difficulty in the shifting and scaling operations, and on the contrary the description explained that a variety of techniques for doing this would be apparent to those of ordinary skill in the art. Unsurprisingly, therefore, the Appeal Board held that the achievement of the indicated technical effect was held to be straightforward for a designer of graphical user interfaces.

If Apple had drilled further down into the transition method than they did, was there anything else that could have saved the application? The look and feel of a window as it transitions to and from the taskbar is a striking effect which it is submitted impresses most users each time they see it happen. The specification explains that the display is updated line-by-line during the transition and the image is recalculated for each line, but that was evidently not enough for allowance and in any event would be easy to avoid. However, in addition to software the invention is in the field of moving images where visibility and human persistence of vision are important. Was there an optimum time, or a range of optimum times within which the transition could take place without interfering with the operation of the computer and which would display the most clearly visible and most aesthetically satisfying sequence of images to the user? It is possible that the range of times for which the "micro-movie" that users see at each window transition lasts would not have been held to be obvious and instead would have been held to require thought both from the operating system point of view and from the standpoint of user trials. A limitation along these lines could have been something that the Appeal Board might have found less easy to treat dismissively.

One take-away message for US applicants is the need to draft applications bearing in mind the exclusions under the EPC: stating as one of the main objects of the inventions "to provide more aesthetically pleasing operations" plays straight into the hands of an Examining Division or Appeal Board within the EPO and even if such objects can and should be stated, functional objects are best set out first. Another message is not to overlook the role of the human user in the invention: in the refused application the needs of the computer and the attractiveness of the micro-movie as a matter of shape were explained but what was necessary for the user to see the "micro-movie" and how long it should last were left unstated.

122 thoughts on “APPLE V MOTOROLA in the EPO and Germany – patentability of user interface features

  1. Maybe if you asked me the question I would have answered it. As it is, you had directed your question to Annie Mouse.

    Considering the p1sspoor logic of the reply of perplexed at 8:28, I no longer think it was sent by Ned (too bad, that at least had some panache).

    Looking at the reply post, the use of “that” is ambiguous (exactly what was remarkable? the guess of Ned as author? the better answers? the wondering why someone is jumping to defend someone in an indefensible position? or even the wondering of why perplexed is perplexed?), throwing in an assumed/i> team effort (counterparts?), improperly alleging some establishment of a basis for a question (no such basis in fact exists, since the premise of the question itself has not been established as a legitimate question, much less established by any intervening comments), this has the earmarks of a post by 6 in one of his sockpuppets.

    At least there is some level of panache as Ned had listed 6 as someone on Ned’s side of the “war” that only uses a consistent moniker (and of course, Ned is wrong in that too).

  2. Wow, now that is truly remarkable.

    But while you and several of your counterparts have demonstrated the basis for my question, you have not answered my question. I’ll repeat it so that there is no confusion:

    What on earth is wrong with you?

  3. Well the obvious answer is that Ned is perplexed and perplexed is Ned.

    It would fall right into line with Ned using a sockpuppet while complaining of “those” who do not post in consistent monikers.

    As if somehow the magic of consistent monikers somehow creates truth and righteousness, somehow creates accountability.

    I’ll have to search a different fiction to find that invention. I think neither Aladdin nor Mickey had that covered.

  4. One of my favourite inventions is Cavorite in the First Men in the Moon by H.G. Wells. It is a metal alloy that excludes a gravitational field in the same way that a metal cage excludes an electric field (Faraday cage). Not such a foolish thought for 1901! The idea of making the alloy has already been put into the public domain, so there should be no problem of implementtion, should there? Why is nobody researching this nowadays, and where is Aladdin’s lamp now? Somewhere in the basement of the Smithsonian, I suspect.

  5. You all remind me of a scene in a movie or a documentary . A bunch of Sharks eating on an object, any object. But while you are all lost in your frenzy and the view of what you are charging at is evident you don’t see what it is you are attacking, it’s a Puffer. Someone pass the Popcorn.

  6. Anyone else notice how the high and mighty Ned Heller disrespects those who hold different opinions by his choice of addressing that person?

    I have noticed that in the past he has called simple questions “simple minded” and above he calls Just a Working Stiff “Just a Stiff.”

    Yet when people don’t address him “properly” or note that he has not addressed an issue, or that he has made a strawman argument, his indignation is (self) righteous, and flares quickly out of control.

    The fact as noted by several people of his admiration of those like Malcolm and 6, because of how those people treat the great Ned Heller (and screw everyone else) also gives pause.

    Ned,

    I think Anon’s calling you out for your high and mighty pronouncemnet of respect for the law only scratches the surface of what you should be called out for, and especially given your I-use-my-own-name stance in your so called war, your own deplorable behavior “speaks volumes,” just not the words you think such behavior speaks.

  7. Interesting that Ned makes the excuse when he misses a question that he only looks at his emails, yet Ned doesn’t miss Asking the Wrong Person even though Asking the Wrong Person replied to perplexed and thus Asking the Wrong Person’s post would not show up on Ned’s email.

    Although this smacks of more dishonesty if you ask me, I cannot say that I am at all surprised.

    Perhaps this dishonesty is part of what Ned considers “all fair” since he feels that there is a GD war going on.

    And Ned, believe me, your “regret” is the last thing that anyone should be concerned about. Your ego seems to know no bounds.

  8. From Ned’s very own email records:

    Goalpost position one:

    OFFENSIVE, your knowledge of my post there betrays you. Yes, I believe any claims directed to an article of manufacture passes 101. I have been converted by the Government brief in Prometheus. But that does not end the problem with B-claims. The subject matter of the programming has no functional relationship to the article of manufacture. This creates a problem with them in terms of 102/103/112.

    Goalpost position two:

    I agree that software has a functional relationship to the disk.

    I am pretty sure that it doesn’t take even a somewhat smart lawyer to recognize the difference between “no functional relationship” and “has a functional relationship.”

    What happened between the two statements?

    That’s right – someone, some evil troll actually made a comment on substantive law to remind Ned that not only that a functional relationship does exist, but that the exception to the written matter doctrine covers that functional relationship.

    So what does the good Ned do? He twists the argument into a strawman and tries to conflate the overall novelty argument into the exception to the written matter doctrine position, where it has no earthly reason for being.

    Same s h i t happens every single time Ned’s position is shot down with a substantive legal position.

  9. Your fall back to the troll-sockie-Malcolm position is being used as a scapegoat.

    You were nailed for an errant legal position by multiple people and instead of admitting that you tried to pull a fast one, it looks to everyone reading the blog that you are just playing games again.

    Bingo. We have a winner!

  10. You will notice the contrast when I engage in conversation with 6, MM, MaxDrei, EG, IBP, IANAE or the like

    I wonder why Anon was left off this list.

    Oh, I know, because Anon wipes the floor with Ned, albeit in a polite and respectful manner, and Ned refuses to engage in conversations with Anon because Ned would have to stop and change his philosophies. the major source of conflict there being that Ned is full of shtt and Ned won’t let himself be convinced of something that would force Ned to change on such a drastic scale.

    Ned still hasn’t responded in the first place to Anon’s Question 3 on the 500+ comment thread. That kind of non-talk speaks volumes.

  11. Don’t be a schmuck on top of it and make it like this is some GD war.

    Too late. Ned’s already a schmuck.

  12. in a better way.

    In US jurisprudence, a “better way” is merely a different way, as the increase in multitude of available paths is considered a promotion of the arts worthy of a patent right, as long as all other legal conditions are met.

    In a nutshell, this “merely a different way” is a critical distinction and, as you so aptly point out, applies from the most humble to the Nobel prizewinner, and emphasizes the point that patents, at least in the US, are not reserved to only those advances that would earn a Nobel prize.

  13. When a post suggests states that “there is no lack of functional relationship” without making clear what they are talking about, which one, then a proper responsi is “so?”, as it the questioner who is erecting the strawman and moving goalposts and simply not acknowledging the argument I had just made and the disctinctions I just drew.

    W

    T

    F

    Not buying it. You want to be able to say your flippant one word response is appropriate, and yet you want everyone else to bend over backwards to address your choice of answering by email. On top of that, you are the one moving the goalposts, as clearly can be seen in black and white, as clearly pointed out to you by me in my last email which you have conveniently ignored, and yet you claim you are in a GD war with “sockpuppets” who engage in the behavior you are doing.

    Sorry, but no dice.

    This is just like the lame behavior of Malcolm Mooney who accuses others of what he does. This fools no one. The fact that you keep on including Malcolm on your list of people who engage in conversations is itself impossible to believe. But let’s not get distracted with that fluff as it has nothing to do with you getting caught making a strawman argument or moving goalposts.

    The distinctions you “just drew” (your strawman argument) are immaterial to the exceptions to the printed matter doctrine. How many people have to tell you this for this to sink in? This is a known “fact,” and one you are not free to simply make go away in your strawman arguments.

    As has been posted now by several, you are the one making a conflated strawman argument (conflating overall novelty with an exception) and trying to move goalposts (from no functional relationship to a particular type of functional relationship).

    Let me repeat that so we can be perfectly clear:

    As has been posted now by several, you are the one making a conflated strawman argument (conflating overall novelty with an exception) and trying to move goalposts (from no functional relationship to a particular type of functional relationship).

    It is simply preposterous and downright infuriating that I have to point this out to you. Maybe if I repeat this several times, one of those times will break through to your understanding. You were busted trying to move the goalposts and now you claim “others” are trying to do this.

    W

    T

    F

    You want “them” to address an argument you have created out of whole cloth and that has no basis in the point of law being discussed. And you wonder why “they” don’t engage your strawman?

    You say you have no takers making a substantive response to a post of yours, when quite frankly NO SUBSTANTIVE RESPONSE is required to your strawman. Merely identifying your fallacy, which several have done, is enough.

    When you define “substantive” to meet some unnamed and undisclosed condition of your strawman argument, are you really that surprised that no one has taken you up?

    The facts of the matter are that you were caught and now you are making a big fuss over nothing to cover your tracks.

    Let me repeat again parts of my previous post that may have skipped your attention:

    Clearly your first posts were to the effect of an absence of any functional relationship. You got called on this. And rightfully so.

    You then changed your tune to emphasize that although there is a clear functional relationship, that relationship was not the novel claimed one.

    But this position is a strawman position because the exception to the printed matter doctrine is not about addressing the overall novelty of a claim. It is about addressing a separate point of law. As Annie clearly pointed out, this separate point of law only requires “A” functional relationship. Most everyone knows this and I bet Just A Working Stiff was just pointing this out to you.

    I noticed that you have chosen not to respond to this part of my post. Clearly, this part of my post, which merely captures what others have already said to you is a substantive response. This substantively deals with the real issue of what is involved in the exception to the printed matter doctrine. It is the only substance that is needed.

    I don’t see how you can get off now claiming what you are claiming.

    So, “regardless” of anything else, I hope you understand the distinction you wish to draw is immaterial to the exception to the printed matter doctrine as a matter of law, and thus there is no need for any further discussion along the lines that you want to create. The fact of the matter is that only and merely a functional relationship is required to pass the printed matter exception and that functional relationship is not, nor must be, connected with the overall question of a claim’s novelty.

    It is not a matter that there is no one who wants to discuss B-claims. It is a matter of discussing B-claims with an understanding of what the exception to the written matter doctrine means. It is a matter of not ignoring an inconvenient point of law while not conflating some larger novelty point into the exception.

    It is also about respecting the fact that you got busted and you are trying to throw up a cloud of dust around the issue, dragging in some GD war and sockpuppets and all this other BS that has no place in discussing B-claims.

  14. It is important to reconstruct the problem as it existed just before the invention was made. Often the hypothetical problem is half way to the soluton, and the remainder then is and looks obvious. But that is hindsight whereas the legal test is foresight.

    The JWS comment below is also of interest. If you are looking for a better way of switching a mobile device on or off using a touch screen, is Aladdin’s lamp a prior proposal that you would consider, or are the mobile device and Aladdin’s lamp things that would only be brought together with foresight using the Infinite Improbability Drive of the Heart of Gold spaceship?

  15. On the whole it helps to have achieved a new result, or an old result in a better way. That is a hurdle that as a practical matter all inventors from the most humble to the Nobel prizewinner level have to overcome

  16. looking glass,
     
    Regarding "functional relationship:"  I agree that software has a functional relationship to the disk.  It has a different functional relationship to the computer.  I have made that clear over many months and years.
     
    When a post suggests states that "there is no lack of functional relationship" without making clear what they are talking about, which one, then a proper responsi is "so?", as it the questioner who is erecting the strawman and moving goalposts and simply not acknowledging the argument I had just made and the disctinctions I just drew. 
     
    You will note that the major source of conflict between me and the trolls is precisely this kind of argument from them.  They will not agree on a set of facts and will not address the argument I make.  Instead, they move the goalpost or erect a strawman or some such.  It is always that way.
     
    I can never pin them down to an agreed set of facts.  They are as slippery as eels.  And, as I said, in the end, I deeply regret ever having responded in the first place.
     
    You will notice the contrast when I engage in conversation with 6, MM, MaxDrei, EG, IBP, IANAE or the like.  They respond to what I said and point out where I am wrong if they disagree.  They do not engage in troll-like behavior.  If, in the end, they convince me of a point, I say so.  I agree.  There are very few posters of the sockpuppet variety who will ever do that, as most of them speak of "victories," "wiping the floor" and such.  That kind of talk speaks volumes.
     
    Regardless, I posted earlier today the facts as I see them when discussing B-claims.  I have had no takers making a substantive response to that post.  That too speaks volumes, as they have real interest in discussing B-claims.
     

     

  17. looking, there are posters here who have a genuine interest in the law.  Then there are those who do not, but who specialize in twisting arguments into strawmen and by knocking them down declare themselves the smartest lawyers on the planet.
     
    As I said, I deeply regret replying to their posts as the same s h i t happens every single time.
     

     

  18. the proper response is to not fly off the handle, but to repeat the question.

    cf

    there is no love lost between the posters here who use consistent monikers and those of you us do not. There is GD war between the two factions, and you know it.

    W

    T

    F

    Ned,

    I use a constant moniker, and you are the one flying off the handle.

    To me, this is stemming from both a lack of response and also a flippant response to Just a Working Stiff.

    As Annie Mouse pointed out, when you replied “which question”, Just A Working Stiff had only asked you one question.

    If your email responses don’t let you see this clearly, then you owe it to the rest of us to check the blog. That would be a proper response from you, as you are the one who is seeking clarity. Don’t make everyone else do double work just to make things easy for you. As it is, it looks like you are playing games by not answering questions, something you have been known to do. Like it or not, you have a bad reputation for that.

    Secondly, you had a reponse of “So?” to a separate clear point (explicitly not a question) of law.

    W

    T

    F

    What the h_e11 kind of response was that?

    You were rightfully taken to task on that response.

    As for Annie chiming in, she hasn’t liked you for a long time. As far as I can tell, she too uses a constant moniker. She too laid into you for the clear errors of your posts (I will be generous and call them errors instead of lies, although as Anon pointed out, this topic of the exceptions to the written matter doctrine has been addressed before and there is no reason for the law not to be known and understood).

    Your fall back to the troll-sockie-Malcolm position is being used as a scapegoat.

    You were nailed for an errant legal position by multiple people and instead of admitting that you tried to pull a fast one, it looks to everyone reading the blog that you are just playing games again.

    Clearly your first posts were to the effect of an absence of any functional relationship. You got called on this. And rightfully so.

    You then changed your tune to emphasize that although there is a clear functional relationship, that relationship was not the novel claimed one. But this position is a strawman position because the exception to the printed matter doctrine is not about addressing the overall novelty of a claim. It is about addressing a separate point of law. As Annie clearly pointed out, this separate point of law only requires “A” functional relationship. Most everyone knows this and I bet Just A Working Stiff was just pointing this out to you.

    Yet you chose to answer with a flippant “So?,” thus bringing all of this huge blow out down upon yourself.

    Don’t be a schmuck on top of it and make it like this is some GD war. That would be just another insulting red herring, non sequitur, game-playing excuse and attempt to shift from a well-understood point of law that you tried to make out was something else, in order to support your contention that Beauregard claims are legally deficient.

    To bring this full circle then, you still have not answered Just A Working Stiff’s first real question to you as to how your offered examples of Aladdin’s lamp or Mickey Mouse’s waving of a wand were accompanied by an enabled invention. You blew off his point on science fiction in order to rant about your notorious and well known subject matter.

    Is there any doubt that this makes you appear to be full of yourself and self centered?

    If there is a GD war, you are shooting yourself in the foot and then blaming others.

  19. The regret is more likely to come from you getting hosed in the legal arguments than from any non-consistent moniker poster.

    You really are out of control Ned.

    More power to Annie.

  20. Asking, there is no love lost between the posters here who use consistent monikers and those of you us do not. There is GD war between the two factions, and you know it.

    I have no idea why I even bother to respond to a poster who is not using a consistent moniker, as it inevitably turns out to be one of the A holes from the sockpuppet faction. I normally deeply regret it.

  21. I think he asked two questions.  I think I answered one of them. 
     
    However, rather than ask me ask me about point that I had missed in my response to him, he asked me to answer his question without stating what his question was. Since I use e-mail, I had no idea what question he was talking about, so I asked him to tell me what the question was. After he made a big fuss about that, I had to go to the thread itself to find out what he was talking about.

    It seems to me that there a lot of people on this blog who demand that their questions be answered, and that if they are not answered they throw a fit. They also do not take into consideration that there are people who are not reading the blog per se, but who are responding via e-mail. So when they ask us to answer a question that was previously asked, and people respond, "What question?", the proper response is to not fly off the handle, but to repeat the question.

  22. Max, OK.
     
    But when "arguing" non obviousness with respect to "recogonition of the problem" patents, it is almost offensive to discuss aspects of the implementation that are trivial and well known, such as a "cursor" following the gesture.
     
    Given the triviality of most implementations, many of these software patents have to be considered to be non obvious, if at all, based on recognizing a problem in the first place.

  23. A better question is why is perplexed sticking up for Ned?

    Ned has the biggest mouth on the boards and it is good to see that he is getting what is coming to him.

    I often wonder at the whiners that come out of the woodwork when when of the “empty wagon” crowd gets nailed. Why the selective criticism? Where is the criticism for the crxp that gets put up in the first place?

    More power to Annie.

  24. Here again Ned your ego is getting in the way.

    Just A Working Stiff point blank tells you that your “answer” was not an answer to his question. At that point in time, he had asked only a single question, which makes your reply of “What question?” either duplicitous or ignorant.

    This is what generated the second question of “Are you for real? .”

    Your choice of answer to that question (no opinion) is puzzling at best. Instead of expressing even a mild statement of independence, your answer feeds the existing perception that you are nothing but a shill.

    And not a very good one at that (unless, of course, your incompetence/deceit is intentional).

  25. Ned I take issue with your idea that it is legitimate to use hindsight to state the problem. At least with problem inventions, where the very act of invention lies in peceiving the problem, that’s not fair to the inventor.

    The EPO PSA approach involves stating the problem, sure, but the problem stated is not within the freedom of the judge to enunciate. Rather, it emerges exclusively from a strict comparison of the content of two docs, the spec and D1, both written before the date governing the validity of the claim. So the pronblem, the objective problem, is the one documented anterior to the validity date. The judges have no power, ex post facto, to set any problem other than that anterior one.

    The patent here was not opposed. So the EPO only ever heard one side of the story. After hearing you for the opponent, perhaps they would have revoked the claim.

    Why did nobody oppose? Perhaps because they thought they might lose. Would that matter? In return for all their expense, they get a patent of enhanced presumption of validity, franked “NOT invalid” by the EPO Technical Board of Appeal. In Europe, its imprimatur matters.

  26. Just a Stiff,”Define trivial.”

    OK

    Well within the skill of one of ordinary skill in the art…

    given the technical problem as proposed to be solved by the inventor.

  27. Your reading skills need work too.

    The question I asked at 5:43 PM on Feb 24.

    The question you even referenced with the comment “Interesting question, there.

    Here’s a new question: Are you for real?

  28. Max, secondary evidence should always be welcome.
     
    But isn't this a solution that is very simple and well within the skill of the art once the problem is stated?
     
    What was the problem?  I think I know what it was, but why don't you help out here just a bit.  Why did the Germans like the iphone unlock feature?

  29. JAWS,

    What you see is a philosophical remnant left over from the non-egalitarian, it-takes-a-genius-to-invent view.

    Our American culture, may be unique in its appreciation and even its calling to allow the common man a piece of that prize. However, this view is under constant attack, in many guises. “Flash of Genius” is one such label and anyone who has studied history, especially the history of patents, studied the ebb and flow of Supreme Court rulings can identify forces inimical to the ability of the common man to have his fair share.

    Those forces tremble especially at the concept of the programmed computer. Because we have a machine built to be changed, to be re-invented without genius.

    That is why you see this topic be the focus of such concerted efforts to befuddle, to obfuscate, and to deny the very rights our forefathers wanted for the common man. Add to this culmination the entrenched passion against personal property and witness the posts that you see all around you, where non-answers (and nonsense) reign supreme. OR would, if it were not for those who also believe in what the founding fathers believed and who see the greatest invention – an invention that enables unparalleled invention for what it really is.

    “Trivial?” perhaps.

    But as PIN notes (and I may add to), sometimes whimsy and “triviality” is mankind’s inspiration, its greatest hope, its only hope.

  30. Ned, your “seems well within the skill in the art” test smells to me of ex post facto. The EPO has a TSM test called PSA which shuts out the ex post facto subjective judgement. Absent a hint or suggestion it ain’t obvious at the EPO, even to the PHOSITA with the cgk, the “mental furniture” and the background knowledge of the PHOSITA. In litigation circles in Germany, it is often said that a German PHOSITA knows a lot more than an EPO PHOSITA. That’s perhaps because the courts in Germany still do obviousness the ex post facto way.

    Anyway Ned, when people first encounter the “Swipe to Unlock” feature, they admire it, and fall in love with it. It shifts units. To me, that alone speaks against “trivial”.

  31. Only one Person could have done that. Only one Person could have gotten them in trouble. Only one person could have taken what was mine… for a time.. MAY DAY MAY DAY… AUOOOOGGAAHHHH AUOOOOGGAHHH. MAN ALL STATIONS. You are going down!

  32. You have confused “trivial” and “obvious.”

    While the effect may have overlap, the definitions are different.

    You should use more care, given the profession.

  33. Interesting question, there.

    I take that if the subject matter claim was notorious and well known, such as a cursor following mouse controlled hand gestures, it would be entirely beyond the skill of the art to implement the same functionality in response to an hand gesture.

    But assuming that it was within the skill, and I think it is fair to assume it was, then the claimed subject matter reduces to using a well known process for a particular purpose: unlocking a device. One should not be able to re-patent the prior art unless it would not have been obvious to use well known and notorious technology for the particular purpose.

    It seems to me at least that the argument that it would not have been obvious to have the unlock graphic follow the gesture should have been unavailing given that following a gesture was old and notorious.

  34. But Max,

    There are kinds of patents that withdraw from the public domain things that are there when one adds to the prior art the things that a person of ordinary skill can do. It seems that in this case that the claimed subject matter would meet such a test.

    But what you are saying, I think, is that Germany does not have a clear concept in its patent law of ordinary skill in the art – otherwise known as triviality.

    This is why I like reading the posts of Malcolm so much in that many times he pokes fun at alleged software inventions because they take well-known principles and re-patent them in software, and somehow they are nonobvious because there is no prior software that is done this exact thing!

    In the case at bar, having a screen display follow a mouse gesture is notorious and well-known. Applying that same principle to a finger gesture for a specific purpose seems well within the skill in the art.

  35. OK Hagbard, I understand you better now thanks.

    But (to the despair of the Germans) “trivial” isn’t good enough, is it? The rule is, if novel matter, however “trivial” it is, stands up to examination under the PSA, it shall get through to issue.

  36. It’s funny how “triviality” is in the eye of the beholder.

    It’s wondrous that true innovation sometimes is critically dependent on such “triviality.”

    It’s a wondrous thing that promotion is intended not just for those things that some consider “flash of genius,” that promotion is also intended for the width of knowledge, because everybody knows that innovation doesn’t always happen in a “straight line.”

    It’s a thing of beauty that sometimes whimsy and “triviality” are so begrudgingly tolerated.

  37. No Grrrr Max, and no quarrel with technicality. In a world full of touch/click buttons and sliders, I just think it’s on its face trivial, especially given the known unlock gestures. I have enough experience parenting UI features at the EPO to think they ought to have rejected this.

  38. Hag I think you have the burden wrong. It is not for the Applicant to prove inventiveness but, rather, for the EPO to establish that the subject matter is obvious. Good so, but it does mean that cases get through which many think ought not to have got through.

    Patents are to promote the progress of the useful arts. I suppose you think that this subject matter is in “Anybody could have thought of that” class. For the EPO though, “could” is not enough. You will concede, I guess, that the invention is also in the “Grrrrrrh. Why didn’t I think of that?” class.

    Or have I misunderstood your position? Are you arguing that the subject matter solves no problem which is “technical”?

  39. Where have we seen such gestures before? Aladdin rubbing his magic lamp? Mickey Mouse as a wizard waving his wand with a shower of stars following its tip?

    Were either of these accompanied by an enabled invention?

    And I thought the comments of awhile back regarding science fiction being fair game for patent rejections was a silly put-on by the blog-trolls.

  40. You have a point there. Where have we seen such gestures before? Aladdin rubbing his magic lamp? Mickey Mouse as a wizard waving his wand with a shower of stars following its tip?

    Next, Apple with patent a voice command to unlock the phone. Of course, the command will be the familiar, “Open sesame.” Undoubtedly, the EPO will grant the patent.

  41. Mine is not to reason why, simply to report and to try to figure out the EPO’s reasoning. That is difficult enough! I am not concerned with whether the EPO’s reasons for grant are correct, but the type of reasoning which can lead to grant. It seems if the specification is appropriately drafted and the right arguments are put forward that you can get more through than you might think.

    And the posting is more concerned with patentability issues than with inventive step. True that in Europe we deal with a lot of patentability issues under s. 103, but that is simply a feature of the way that the EPO appeal boards tackle these cases. What is of interest is what kind of things appear to be allowable and what are excluded.

    Of some hypothetical interest is what would be the attitude of the UK courts and IPO to an invention of the same type as the two granted Apple patents. I suspect that they would be more likely to say that the inventions are pure software and hence unpatentable. The UK IPO and courts are tougher on these issues than the EPO even though both are operating the same “harmonised” law.

  42. Back on topic (sort of…) then Paul:

    So “transitioning the device to a user-interface unlock state if the detected contact corresponds to a predefined gesture” was known (pre-characterising), but “moving an unlock image along a predefined displayed path on the touch-sensitive display in accordance with the contact, wherein the unlock image is a graphical, interactive user-interface object with which a user interacts in order to unlock the device” – i.e. providing an analog of a mechanical switch on a touch-screen – was inventive?

  43. CC: Thanks for the links. However, the guidelines, particularly the command to use “synthetical propensity,” is not what we consider to be BRI. Rather, it fairly well describes the rules laid out in Phillips and its predecessor Vitronics. Nowhere do I see the word “broadest.”

    Moreover, if the claim terms have special meaning in the US, the only way the examiner can require that the special meaning be integrated into the claims is by rejecting the claims using the broader construction over the prior art, thereby forcing the clarifying amendment. Thus, on the whole, BRI ignores the specification.

    For the reader, this from the EPO Guidelines

    “4.2 Interpretation

    Each claim should be read giving the words the meaning and scope which they normally have in the relevant art, unless in particular cases the description gives the words a special meaning, by explicit definition or otherwise. Moreover, if such a special meaning applies, the examiner should, so far as possible, require the claim to be amended whereby the meaning is clear from the wording of the claim alone. This is important because it is only the claims of the European patent, not the description, which will be published in all the official languages of the EPO. The claim should also be read with an attempt to make technical sense out of it. Such a reading may involve a departure from the strict literal meaning of the wording of the claims. Art. 69 and its Protocol do not provide a basis for excluding what is literally covered by the terms of the claims (see T 223/05).”

  44. I suspect these latter are attorneys at law, taking pride in their ability to misunderstand.

    Perhaps, but if so I suspect they are not very good ones.

  45. Thanks CC. I think yours is a mind willing to understand. There are some here though that are seriously desirous of misunderstanding. I suspect these latter are attorneys at law, taking pride in their ability to misunderstand.

  46. Basic Error, I have no beef that the examiner's on a FIRST PASS should give the claims a very literal meaning without any interpretation that would NARROW the ordinary meaning in any way.  FIRST PASS.  I think this is what they actually do in the EPO as well, but the examiners there go on to work with the attorney to clarify the claims so that they fairly describe the invention without any narrowing constructions.

    There are search engines, I don't know if the PTO uses them, but they exist, where one copies and pastes a claim into the engine, and it does a remarkable job on quickly finding the most relevant art.  It is amazing.  Trust me.  So, I have no beef with the using the claim to search.

    What I do object to is searching PRIOR TO claim clarification.  Until the claim is clarified, the invention cannot properly be searched.

    The EPO seems to get it right because they do not exist in the straitjacket of compact prosecution.  We need to learn from the Europeans how to properly examine patents.  

  47. For me personally, a career as an attorney at law would have been desolate. I would even be embarrassed to admit that I am “a lawyer”.

    This says so much.

    And not what MaxDrei thinks it says. Join our special club MaxDrei

  48. I seem to remember this posting being about allowable subject matter in the EPO and the kinds of claims that you can obtain for user interface features. Sorry if that was boring!

  49. A historical accident resulted in separation of search and examination at the EPO, search first, then publication, then examination on the merits.

    If you can’t re-search during exam on the merits, that influences what you search, before examn begins. You search what Applicant will amend down to, no? That in turn helps Applicant to amend down, in one go, to something allowable.

    Well that’s how my EPO cases go.

  50. Quite frankly, your intellectual dishonesty is astounding. Let’s quote Max’s paragraph in full:

    So how about a set of claims? Set a hundred patent attorneys, all with an exhaustive knowledge of patent law, to write those claims, and what do you get? A hundred claim sets, some OK, some better than that, and some quite a lot worse than OK. There is no correlation between the quality of the claims and knowledge of the local law. Claim quality is international and does not vary with the local caselaw.

    Max was thus starting from the baseline of an “exhaustive knowledge of patent law”. And indeed, although there are local variations in claim construction, and some purely formal differences, the principles of patent law are far more universal than you appear to believe. Being able to understand a technology and identify what has been invented and what the client needs to protect is just as necessary for good drafting in any jurisdiction than being able to recite any number of legal provisions.

  51. The patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding.”

    6 is dead.
    MaxDrei is dead.
    Ned is dead.
    Malcolm is dead.
    IANAE is dead.

    anyone else…

  52. Ned,

    This is a process failure, not a rule failure.

    Examiners are first supposed to read and understand the invention – claims as well as specification, and are supposed to use BRI (with the emphasis on (R)easonable).

    What happens is that the Examiners are not doing their job in the first instance. They key word search out of the claims, if even bothering to read the specification at all. There is no attempt at understanding prior to evaluation.

    Why does this continue? There is no A C C O U N T A B I L I T Y.

    Poor first rejections are not critically evaluated. Completeness of understanding is not evaluated.

    You think you have complaining of poor examination now? Wait until the fee shifts hit the fan. Any first Office Action that is overcome and a subsequent Second Action that should have been in place at the first Office Action will have people screaming that not only a time penalty has been incurred, but a potential significant cost penalty as well. If I were Kappos, I would see that the AIA and the fee structures are going to place MORE spotlight on the p1sspoor examination than ever before.

  53. No shameless rmisrepresentations on my part.

    When Max mentioned the part you now mention in your 11:01 post, my response was “Then you agree with me. Why didn’t you just say so?

    It was Max’s additional responses – which you do not comment on (now there is some misrepresentation) that drew the further comments.

    CC, you are adrift and know not what you speak of.

  54. Max, EPO practice has a lot to recommend it.  You seem to have a entire separate procedure simply to get the claims to be clear. In the US we have what we call "compact prosecution." There it examiner must load the first action on the merits with every possible rejection, including over prior art. He does not have the luxury to engage in a claim clarity phase prior to rejecting the claims over the prior art. Thus while the claims are still in a very unclear state such that their meaning cannot be ascertained, the examiner must still search the prior art. This is why many applicants in the United States bitterly complain that the prior art used by the examiner in the first action on the merits is absurd. In many cases, the art has nothing to do with the invention described in the specification. This leads to an amendment to clarify the claims, followed by a final office action, made final because the amendment raised so-called new issues. 

    As a practical matter this forces many applicants to file RCE's simply to begin prosecution on the merits of the prior art. The first real search is conducted, not in the initial prosecution, but in the RCE.

    This is why I consider compact prosecution as conducted by the PTO using a wild and woolly BRI, coupled with the move to place RCE's at the end of the application queue for future consideration, not exactly fair to applicants; that is unless you consider the whole procedure an incentive to draft clear claims in the first place.

  55. Ah, the Principle of Synthetical Propensity, of which in these columns IANAE is so fond. Yes, indeed. Certainly we have a large number of maverick difficult Examiners in the EPO (hardly surprising, given that they come in from any one of 40 EPC Member States)but there is a limit to the damage they can do, in relation to such things as functional featues in apparatus claims. First call for oral proceedings and address all three members of the Examining Division. There is no fee. If that doesn’t work (rare in my experience) then go and see the Technical Board of Appeal, which will quickly straighten the ED out.

    Non-specialist patet judges will always struggle mightily, even with a claim that is crystal clear, when the litigating parties are urging on him contradictory meanings. I think it unfair to blame the EPO for that deficiency of litigation outside the Big Three EPC patent litigation jurisdictions.

  56. Well, actually, a strict examiner may start discussing at which level of light absorption through what range of the visible light spectrum light “black” becomes “black”…

  57. With respect to “unreasonable”, I refer to the wonderful turn of phrase of the Boards of Appeal of the EPO in T 190/99: “The patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding.”

    For instance, I consider “unreasonable” to give a term a different and even opposite meaning of what it is generally understood to mean in the specific technical field of the invention, and even ignoring an explicit definition of this term in the specification (against Art. 69 EPC, of course).

    This, and even ignoring some inconvenient features of the claims altogether, I’ve encountered in both European and US practice, although it is indeed much more common, in my experience, among USPTO examiners.

    As for “far from consistent”, the worst example of this at the EPO is its approach (or rather: approaches) to functional features in the claims and claiming a “result to be achieved”. While some examiners let device claims through which express little more than sheer wishful thinking, others raise a red flag at such “functional” terms as “movable”.

    And no, I didn’t mean any of the Big Three, whose courts get more than enough practice, but rather (some of) the others. It does matter, because whereas multinationals can choose to litigate where it suits them best, small local litigants are forced to make do with the unpredictability of their own courts.

  58. Ned what did you read, to ascertain what BRI means at the EPO? Try Guidelines C III 4.2 which requires Examiners to go on insisting on amendment of the claim until “the meaning is clear from the wording of the claim alone”. What might they argue, to bring Applicant round to the idea of so amending?

  59. Ned what I wonder leads you to suppose that EPO Examiners are subject to a requirement to read a term like “black” as “white” just in order to cover the white preferred embodiment in the description? For the EPO Examiner, black means black, never mind what is in the description. Try an EPO Examiner with a word like “flexible” and don’t be surprised if he tells you that even diamond is “flexible”.

  60. You are shamelessly misrepresenting Max’s point there. If you read his whole comment, what he meant is that, while knowledge and understanding of the law are necessary for good patent drafting, they are not sufficient. After all, he had already written:

    “You can’t pass the lengthy written examination schedule to qualify as a European or a UK patent attorney without first acquiring an exhaustive knowledge and recall of the relevant patent statutes and patent caselaw.”

  61. Max, just for example, there is no requirement that the claim be construed to cover the disclosed embodiments if that is possible.  Rather, the command is to construe the claim as broadly as humanly possible, provided support in EXTRINSIC evidence.  (See, In re Morris, where the examiner's construction of "integral" was affirmed based on definitions in cases from other patents in unrelated technologies.)   Now that does lead to some very strange constructions.

  62. Thanks for that, CC. Now you are outside the EPO, how much prosecuting of cases at the USPTO do you do. I ask because I’m wondering what sort of a benchmark you have for “unreasonable” and “far from consistent”.

    These “other European countries” you mention. You are not talking, are you, about that other big patent litigation jurisdiction, The Netherlands? Outside that Big Three though: does it matter much how mightily they struggle? So what?

  63. Comparing apples with pears? I suppose so. Outside the USA,”Patent Attorney” and “Attorney at Law” are different professions whereas, inside the USA, a patent attorney is an attorney at law who, thinking like an attorney at law, has passed a supplementary MCQ exam.

    For me personally, a career as an attorney at law would have been desolate. I would even be embarrassed to admit that I am “a lawyer”. Lawyer jokes don’t apply to me. For me, it’s the technology, not the law, which provides the buzz.

    What I want to do in my career is to understand my client’s business need and her (or her competitor’s) technological innovation, then define that innovation in words, and then argue (in words) about its novelty and its inventiveness. The law has to be there, but only to frame the debate.

  64. Having been an EPO examiner in the past, I can assure you that they do apply the broadest reasonable (and sometimes even unreasonable) interpretation to the claims. Indeed, very, very often, EPO examiners also find US-drafted claims so overly broad that their first official action considers them too vague to start comparing with the prior art.
    What EPO examiners don’t have is RCEs. Instead, starting with the second official action of the Examination division, they can at least summon the attorney to last-chance oral proceedings, which usually concentrates minds wonderfully (and this if the attorney has had the foresight to request oral proceedings: otherwise the second OA may directly be a definitive rejection).
    This said, in my experience, and contrary to what MaxDrei says, the EPO’s approach to clarity is far from consistent, and while German or British courts are quite pragmatic in claim construction, the courts in other European countries often struggle mightily to make sense of patent claims…

  65. The EPO publishes each year the statistics of how many persons sat the European Patent Attorney examination paper set, and how many of them satisfied the Examiners. From the UK, writing their answers to the 2011 exam papers in English, 45% of candidates passed. From Germany, writing in German, it was 23%. Candidates from France, writing in French, managed a 28% pass rate. Italy managed only 14% and Spain just 10% but, of course, Italian and Spanish are not EPO languages. Austria (a German-speaking country) got 25%. From the Republic of Ireland, 6 of the 9 candidates passed. Well done those guys, because satisfying the examiners of inter alia the necessary claim-drafting skills is not easy.

    link to epo.org

  66. As MaxDrei points out, you can’t draft correctly in the vacuum of understanding what the law is.

    Um, Max did not point that out. In fact, that was the point impressed upon Max. Max pointed out “There is no correlation between the quality of the claims and knowledge of the local law.

    Other than that, your comparison of the EQE and the patent bar exam is apples to oranges, so what is your point?

  67. As MaxDrei points out, you can’t draft correctly in the vacuum of understanding what the law is.

    I also find it quite worrying if the patent bar examination in the US has been reduced to an MCQ test. Life isn’t an MCQ test, and I really don’t think that “understanding what the law is”, never mind the ability to apply this understanding in real life, can be measured with an MCQ test. Your clients aren’t going to give a sh*t if you passed your test with flying colors, they want you to be able to solve their problems with the least possible cost and hassle.

    It is for this reason that the European Qualifying Examination, which is a three-day exam in which candidates easily write 50-100 pages by hand, is mostly based on hypothetical cases which the candidate has to solve in very little time. Same with various examinations for access to the national patent bar in Europe. Not that pure legal knowledge is neglected either, but the emphasis is on casework, and even then, the EQE has often been criticised as too removed from reality.

    Of course, such an exam requires much more effort to prepare and mark than an MCQ test, but this probably saves much work and trouble to the candidates’ firms, their clients, the EPO and the general public afterwards.

  68. Ned, you write: European patent office does not use broadest reasonable interpretation in construing the claims.

    My experience is that it does use BRI, with emphasis on the “reasonable”. BRI is an extremely effective tool to bring clarity to the claim, prior to issue.

    The statutory task imposed on EPO Examiners is to grant patents but only after they have found the application to meet all requirements of the Convention and Rules, including Art 84, clarity.

    There is heavy pressure on EPO Examiners to block claims that are unclear. Why? Because, after issue, non-compliance with Art 84 is not a ground of invalidity. This is logical, for there never was a claim granted, in the entire history of the patent system, immune to assault by a clever litigator on the ground that it is less than 100% clear.

    Applicants at the EPO can acquiesce in the process of amendment towards clarity. Why? Because of the strikingly pragmatic way European infringement courts decide on the scope of an issued claim. Thus, in Germany the Doctrine of Equivalents is very much alive and kicking whereas in England the court asks “What was the writer of the claim using the language of the claim to mean?”. In a case like Chef America, everybody in England would know for sure what the claim covers and does not cover.

    Get claim construction right in patent litigation and the BRI problem at the PTO will fall away.

  69. Pedro, At times, one finds oneself in an RCE due to a phenomena called “broadest reasonable interpretation.” The phenomena you described about wild claim constructions is a well-known artifact of BRI.

    From my understanding, European patent office does not use broadest reasonable interpretation in construing the claims. Thus one can quickly get into substantive examination rather than spend the first two with three office actions trying to clarify claim construction.

    The consistent complaints we have by many, many posters about the completely crazy claim constructions from the patent office examiners should tell us that something is seriously wrong with the administration of broadest reasonable interpretation in the patent office. We really do need at least one more office action to simply to handle broadest reasonable interpretation so that we can have at least two actions on the “merits.” That is the only solution I can really think of that will work.

  70. Crouch stated:

    “The advantages to US applicants of using the EPO as ISA and possibly subsequently IPEA if allowable subject matter is likely to be identified are also self-evident.”

    So true, because USPTO examiners tend to be poorly trained, poorly supervised and sloppy. Maybe after the second RCE does one every get around to substantiative examination with applicable references. The first few rounds are usually wasted describing how a sleeping bag reference doesn’t include all the elements of your telecommunications application.

  71. there is nothing I can now do to stop you.:”

    Except, maybe, show you understand by posting with some degree of intelligence…

    …nah, we already know what we get with MaxDrei’s posts. Why change now?

  72. I call it as I see it,

    Lol – that explains the pile of dead horses next to MaxDrei’s water trough.

    One can only wonder how much comfort that brings MaxDrei.

  73. Paul:

    You’re wasting your time. A guy who once read the claim saw a computer in a shop window, so to MM it’s not patentable subject matter, lacking novelty, obvious, and indefinite.

    We only thinks the middle of things that already exist (e.g., a DNA strand, a Twix bar, a branch, etc.) are patentable subject matter, and novel and unobvious because “nobody ever done gone and thought to cut it on this end and on this end” (direct quote from MM – or maybe that’s a paraphrase, who can remember . . .)

  74. I call it as I see it, after several decades of working with claims written in the USA.

    I’ve tried, but if you want to believe that I do not understand what “understanding the law” means, there is nothing I can now do to stop you. Feel free, please, if it comforts you so to believe.

  75. So how about a set of claims? Set a hundred patent attorneys, all with an exhaustive knowledge of patent law, to write those claims, and what do you get? A hundred claim sets, some OK, some better than that, and some quite a lot worse than OK. There is no correlation between the quality of the claims and knowledge of the local law.

    Pure conjecture, and completely false to the points I make. Those that have achieved the proper legal understanding would not write the claims that you purport to be “quite a lot worse than OK,” as understanding the law entails understanding that which they write in the claims must meet.

    Clearly, you lack understanding of just what “understanding the law” means.

  76. Stroking a screen to control a virtual/computerized activity is old.

    Fair enough, but combining a touch-based user interface with a cursor? That’s pretty nifty.

  77. What do you mean by “considered”, Dave Kappos?”

    Fixed. Let’s get an answer that means something

  78. No, sorry, I don’t agree with you, on what I thought we were debating – whether claim drafting is substance.

    Come to think of it though, there might be a difference between mech eng and chemistry.

    When the inventor brings you Molecule X then you claim Molecule X. The words you use will depend on the caselaw on chemical claiming. But what about when the inventor brings you her prototype mechanical device such as an instrument for performing some fancy endoscopic surgical procedure. You can easily and routinely do the detailed description and the drawings of the prototype but that’s not defining “the invention”. The invention is defined by the claim. The enabled prototype is of no particular significance. It is but a pinpoint location within the envelope defined by the claim. What the inventor needs is an envelope that can resist assault.

    So how about a set of claims? Set a hundred patent attorneys, all with an exhaustive knowledge of patent law, to write those claims, and what do you get? A hundred claim sets, some OK, some better than that, and some quite a lot worse than OK. There is no correlation between the quality of the claims and knowledge of the local law. Claim quality is international and does not vary with the local caselaw.

    We can leave out of it, for the time being, whether identifying the invention is a skill that can be taught to anybody, or just those with some natural aptitude for it. Either way, those who want to protect their inventions need patent attorneys who have proven their competence to identify and define them safely.

  79. I wonder if hand-held-unit display-screen control-strokes art like U.S. Patent No. 5,596,656 was considered?

    What do you mean by “considered”, Paul?

    Stroking a screen to control a virtual/computerized activity is old. The size of the screen can not turn a methods of stroking the screen into a non-obvious method, nor can the type or number of strokes that are made to effect the activity. You’re still just stroking a screen, just telling a computer “what to do”. You can do it with your toes, you can do it with eye movements, you can do it with your brainwaves, you can clench and unclench your sphincter, whatever. The moves themselves do not provide “unexpected results”. No “progress” is promoted by issuing patents reciting different “moves” for effecting different virtual acts.

    On the other hand, new machinery for detecting human movements and/or signals generally, and delivering those signals to a device — that’s something different entirely.

  80. I wonder if hand-held-unit display-screen control-strokes art like U.S. Patent No. 5,596,656 was considered?

  81. @ SIX: I completely agree with you that superior understanding of the law and process provides the right word.

    But in the EPO, the law sometimes demands particular presentations. For example a process claim may be excluded subject matter but a product claim (e.g. a ROM storing code) is allowable subject matter (but potentially obvious). That difference is not mere sophistry but arises from the statute. In the field of cardiac pacemakers, a device suitable for supplying particular pulses to the heart is allowable, whereas a device THAT SUPPLIES pulses to the heart is excluded subject matter and if the EPO inadvertently allows this language in a granted patent, then the claim is irrecoverably invalid. Finding our way through these minefields that the legislators have created for us is difficult and small differences in language can make the difference between success and failure.

  82. You can’t pass the lengthy written examination schedule to qualify as a European or a UK patent attorney without first acquiring an exhaustive knowledge and recall of the relevant patent statutes and patent caselaw.

    Then you agree with me. Why didn’t you just say so?

  83. Who said anything about a vacuum? You can’t pass the lengthy written examination schedule to qualify as a European or a UK patent attorney without first acquiring an exhaustive knowledge and recall of the relevant patent statutes and patent caselaw.

    Can we agree that dependent claims set forth optional and preferred features of an invention while the independent claim recites its irreducible minimum of essential features? Independent claims written in the USA, that I have to file and prosecute at the EPO often include too many features, or too few. It doesn’t matter in the USPTO, for you can pick and mix features later, during prosecution. I suspect that’s why US claim drafting skills are not valued. But getting the main claim right first time sure matters outside the USA. Drafting an independent claim with all the necessary features in there, and only those features, is not easy, nothing to do with parroting “the law” or “the procedure”, not mere form, and all substance.

    But we are going nowhere with this discussion. I suppose we will have to leave it there.

  84. The point I wish to impress Paul, as I noted to MaxDrei, is that the understanding of law and process is what provides the “right word” far better than a sophists’ manipulative tricks in the absence of understanding law and process. My stand is not to be confused with not understanding how to use words, but more to the point that the intent of the use of the words drives better results when that intent is grounded in a superior understanding of law and process.

  85. See above.

    And we learn more from our successes in this area than we do from our failures. These cases have passed the EPO’s problem-solution analysis (PSA) and have been treated as technical in nature. By seeing that arguments that succeeded for Apple in those two cases we can refine our own European applications.

    And what makes me puke is the cases that I cannot get through for my clients, because getting cases through is what I am hired to do.

  86. It is the attorney’s job to develop and advance arguments. It is the tribunal’s job to decide.

    Most of us are attorneys, and our concerns are what is likely to be acceptable to a patent office examiner. If we find ways of having an application accepted we use them. So we are in the sophistry business unavoidably, and those that are not will see their clients disappear in the direction of those that are. And have you noticed that in many situations saying the right thing may defuse a difficult situation whereas saying the wrong thing may prolong the difficulty?

  87. Claim drafting in the vacuum of understanding what the law is can never be called “substance.”

  88. In other words, Paul, form is more important because we play in a philosophy arena and the right magic words will obtain a patent that does the same thing, but (aghast) if it is honest enough about what that is, would fail.

    And this is the craft of words and claim manipulation that makes, for some, the right substance for practicioners to focus upon.

    Sorry to disagree, but an understanding of what the law really means and the proper way to go about it trumps such sophistry every time. At least in my book.

  89. A computer-implemented method of controlling a portable electronic device comprising a touch-sensitive display, comprising:

    In the absence of the recitation of a novel, non-obvious composition with improved properties, no steps following this preamble can possible be adjudged by a non-dissembling person to be “technical” in their effects.

    Apple argued that the objective technical problem was to provide a more efficient user-friendly procedure for unlocking a portable device

    LOL.

    and to provide a sensory feedback to the user regarding progress towards satisfaction of a user input condition

    [puke]

  90. Unfortunately presentation is everything in cases of this type.

    For example in the A&P case which came before the Supreme Court in 1950, the patented cashiers stand took more money than the prior art. This was considered to be an ignoble reason for granting a patent, and the resulting patent was held to be unenforceable. But if you present the same result as reducing processing time and hence queueing time you have identified technical features of the cashier’s stand and the financial advantage is relegated to a mere by-product.

    What is interesting in the three cases mentioned above is the nature of the technical problems that were identified by the Appeal Board and even in the window max/icon case the lengths to which the appeal board was prepared to go to find patentable subject-matter. In the latter case, it is perhaps an exercise for new trainees to pick out what amounts under US/EPO law to patent profanities (they are not necessarily the same statements).

  91. Thanks again Six. But the way I see it, patent applications drafted in the USA routinely fail to secure for their owners a scope of protection commensurate with their contribution to the art.

    I see now, it has something to do with all that emphasis on the law and the procedure, as opposed to working out rigorously what the invention is. Thus, a reasonable description of what the invention might be, and what it might do, in that part of the specification which used to be called the Summary of the Invention but now (because of the caselaw) is called the “Summary”, is followed by a slew of claims none of which defines the corresponding invention at the proper level of generality. A shame every time it happens.

    For me, where I am, claim drafting is the substance not the form.

  92. I thought it went without saying that what benefited the patent bar benefited inventors.

    My error. I will try to remember your penchant for pedantics.

    So let me rephrase: To gain a better benefit for both inventors and the larger public, inventor’s representatives would be better off placing more focus on the law and on the procedures than emphasis on manipulation of form in claim drafting.

  93. Thanks Six.

    In First to File country, there is much more to claim drafting than mere form. When rights go to the one who was “first to file” on a particular invention, you only get one chance to do the claim drafting right, so you have to get it right first time.

    Helpful to have from you what “would better benefit the patent bar”. I was thinking more about what might better benefit inventors.

  94. Too many had complained that the drafter “skill” is mere manipulation of “form” and that more emphasis on “content,” as in understanding of the law and procedures would better benefit the patent bar.

    It appears that some still long for the skill in manipulating form over understanding law and procedure (content).

  95. Thanks both. Is drafting then less a test of the competence of a patent attorney than it was before? Funny. I should have thought exactly the opposite.

  96. Max, When I took the test some years ago, more than half the test was drafting: we had to draft an entire patent application, an amendment and a 131 affidavit in the test I took.

  97. As Paul’s piece nicely reveals, in First to File jurisdictions, inventors (or rather, their drafters) have to “be careful what they ask for”, before the end of the Paris Convention year. After that, once their application is in the queue at the PTO, it’s simply too late to improve their position to one that is better than the one they had on their filing date. That is because any such improvement is incompatible with the fundamental principle of First to File. Is drafting competence needed, to qualify as a US patent attorney?

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