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Re: libdts patent issue?

Nathanael Nerode wrote:
> galactus@stack.nl wrote:
> > To me the distinction is clear: you have to add something to the
> > algorithm before you arrive at patentable matter. You apparently
> > consider the addition (a computing device with a memory) to be
> > irrelevant, and hence you don't see a distinction.
> The addition should be irrelevant because there's no inventiveness
> involved in the addition.  :-P 

Inventiveness has nothing to do with whether something is statutory
subject matter. Today, the wheel is patentable in principle, but
you will never get that patent because the wheel is known. A wheel
of exactly 38.25" diameter is also statutory subject matter, it's
(probably) new but such a specific choice of diameter is obvious.

> This is why I noted that the US
> standard, theoretically, allows a new piece of *artwork* plus a
> generic computer to be patented. 

US patent law would say that this "computer with artwork" is
statutory subject matter. It'd probably be rejected for lack
of inventiveness though, as computers that show artwork are well-known
so it would be obvious to a skilled person to pick yet another piece
of artwork and display it.

> The dispute is quite specific here: it is over whether
> (a) the innovation must be in the technical area.  If it doesn't have to be, 
> you get results exactly like the US results: patentable artwork.
> (b) the technical area must be a patentable area.  If it doesn't have to be, 
> you get results exactly like the US results: patentable artwork.

See above. The claim _as a whole_ must be in a patentable area.
In Europe that means it must be in a technical area.

And in Europe, the _innovation_ must be in a technical area as well.

For instance, "A method of selling items, involving giving a 10%
discount if you buy more than five items at once" is not in a
patentable area in Europe. That's what we would call a pure
business method. (I don't know if it is statutory in the USA).

I can rewrite that claim to "A cash register that is configured to
count the number of items rung up during one transaction and to
give a 10% discount if the counted number exceeds five."

This is _statutory subject matter_ in Europe, because cash registers
are technical devices. Same for the USA. 

But the application will be rejected because it does not involve
an inventive step. The innovation (giving the discount) is purely
a business method, which by definition cannot be inventive.

> This is no good if there's no innovation in the "technical" area.  I "invent" 
> a machine to display a woman holding dogs in a certain manner.  It's 
> "inventive" because the woman is holding dogs in an unusual and inventive 
> manner.  It's "technical" because it's a machine to display the image.  

In Europe, we'd say "yes, this is technical -it's a machine- but
there's no inventiveness involved in displaying yet another picture."
So it's just a trivial variation on a known machine.

If I take a washing machine and paint it purple, would you say
it's no longer a machine? 

> > That's what European patent law also pretends to be. FFII is pushing
> > a very restrictive definition of what "manipulating the physical
> > world" means, but otherwise they're completely in line with how
> > patent law works.
> I'm not sure whether you caught the key point here.  The key point here is 
> that the *inventive* part must be attached to the manipulation of the 
> physical world.

There is a difference in approach here. FFII (and apparently you
as well) judges whether something is _statutory_ by looking only
at the contribution over the prior art. European patent laws by
and large determine this question by looking at the _claim as a

A washing machine is a washing machine is a washing machine.
That kind of machine is statutory subject matter. If the contribution
you claim to have invented is no _technical contribution_ then
you have an obvious variation on a washing machine. 

FFII would say in this example "the invention is not statutory."
The EPO would say "the invention is statutory but trivial".

This is the difference between 'Kerntheorie' and 'whole claim

>  Innovative "software patents" generally feature an 
> *uninventive* part which manipulates the physical world -- a generic 
> bit-twiddling machine -- combined with inventive mathematics.

The inventive step is part maths and part practical (technical)
application of the mathematics. A formula by itself is not
a patentable contribution. "A method of recognizing spoken words,
comprising using new formula X to recognize the words" provides
a technical contribution: the _use_of_ the formula to manipulate
the physical world.

> > The problem is exactly the same: European patent law does not
> > exclude patents on mathematical methods, but only on mathematical
> > methods _as such_. Apparently this is not the same thing for the
> > people who wrote that law.
> This is such an overuse of "as such" so as to render the entire list of 
> exclusions from patentability meaningless, and as such (ahem) is invalid 
> under traditional rules of statute construction.

Could you provide a different construction that makes more
sense to you?

52(2) [...], Computer programs, and [...] are excluded.
52(3) Article 52(2) applies only when the invention relates to
the stated subject matter as such.

> The "as such" phrase is presumably intended to allow patents on
> material which happens to use a mathematical method/artwork/etc.,
> not on material for which the entirety of the inventive portion is
> the mathematical method/artwork/etc.

I'm not sure how to interpret your "entirety of the inventive
portion", but yes, that's how I understand it. You can only
patent _applications_ of mathematics to real-world situations.


Arnoud Engelfriet, Dutch & European patent attorney - Speaking only for myself
Patents, copyright and IPR explained for techies: http://www.iusmentis.com/

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