McDonnell Boehnen Hulbert & Berghoff LLP

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Jan 17, 2005


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European Patent Attorneys see numerous incoming business method cases of a non-technical character and sometimes wonder whether these are really worth filing even in their country of origin. European law is said to be more restrictive than US law, but the underlying differences can be overstated. I suspect that there is much irrational exuberance (to quote Alan Greenspan) which accounts for the low grant rate. The relevant examining divisions of the EPO have a similar low grant rate, and in a recent hearing on a European application which just made it into the grantable 10%, the very experienced and computer-literate chairman of the Examining Division commented that one of his major concerns was to allow claims with credible technical character and avoid the EPO becoming a laughing-stock in the computer hardware and software community.

Business method claims, like other claims, will have a set of features, a set of relationships between the features and hopefully some unexpected new function or result that is original to the inventor and that supports patentability. At least in the UK, the presence or absence of the latter aspect of the claimed subject matter is a strong predictor of whether the patent if granted is likely to survive litigation.

Very large numbers of applications that I have seen do not even attempt to meet the third requirement. To invoke the patent system, there has to be an element of inventor creativity and I suspect as a practical matter even in the US that creativity has to be in a technical field. The criterion I teach is based on Shannon's concept of the difference in a message between information and meaning, - see the EPO Appeal Board decision in PHILLIPS and the important BBC TELEVISION SIGNAL decision which was slightly earlier. We should recall that information refers to the technical features of the message. In the case of a TV signal information refers to synchronising pulses, flyback pulses and the like which enable transmitter and receiver to work in synchronism to display a signal. Content refers to the part of the signal that displays the picture. If all your novel disclosure is on the content side (in the case of a business method the business administration and accounting details) and there is no advance in terms of how the method is implemented from a technical standpoint, then it is legitimate to question whether even if an examiner has granted the case the necessary technical evidence to support patentability would be forthcoming during litigation.

It is important for the patent attorney to know the prior art relevant to the cases he writes, and to include technical detail supporting the new and original discoveries of the inventor. If he or she does that, then there are grounds for optimism about the outcome even if the application has tgo wait in the Examiner's in-tray.

Paul Cole
European Patent Attorney

Patent Consultancy offer services such as prior art search, patent ability search, outsourcing patent drafting, patent drafting, patent analytics, patent search service and other patent services are provided by communicating to TT Consultants in India.

Santa Barbara business attorney Harvey Wolf is a real estate, construction and litigation lawyer in Santa Barbara California.

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