Software patents in Israel

January 12, 2012

The long awaited guidelines regarding the patentability of software inventions in Israel have finally been published by the Israel Patent Authority.

In brief, it appears that the term ‘industrial application’ as required by section 3 of the Israel Patent Law 1967 may be fulfilled by patents in any field of technology.

  1. Software inventions having a real world effect are considered technological and thus patentable. To establish whether a  software implemented invention is technological it has to be considered in its entirety. I think this means that the Commissioner of Patents requires examiners to take a holistic approach to the question.
  2. Business methods are not considered industrial, nor are algorithms.
  3. A real world effect may be indicated by something that may be perceived by the senses.
  4. Software that creates new links and causes a computer to work better or faster may be considered a real world effect.
  5. Software per se, abstract thought processes and algorithms not having a real world effect are not patentable, but may be protected as a literary creation under copyright law.
  6. Beauregard claims are allowable.
  7. A software invention that enables automation that is more than simply doing something automatically that could previously be achieved manually, may be patentable.  I think this means that software inventions that enable a result to be obtained that could not hitherto realistically be obtained, could be patentable.

Helpfully, the relevant guidelines for the Examiner are appended to the circular, together with a number of specific examples from real patent applications, a verdict regarding whether the claimed invention is patentable subject matter and a brief explanation.

For reference purposes, I am reproducing the examples below:

GB 2391348

A data processing apparatus, comprising:
a processor;
a compiler for compiling application code to generate instructions for execution by the processor;
a non-invasive trace unit coupled to the processor for generating, from input signals received from the processor, trace signals indicative of the instructions being executed by the processor;
the compiler being arranged to control the compilation of the application code dependent on the trace signals.

This is considered patentable.

GB 2407655

A method of operating a computing device having an operating system and a dynamic link library containing a plurality of functions accessible by an executable program, each function in the dynamic link library being associated with an ordinal number, the method comprising:
Providing the dynamic link library as a first part and an extension part each containing one or more of the plurality of functions;
Causing the executable program to link to functions in the first part directly by means of the associated ordinal numbers;
and Causing the executable program to link to functions in the extension part indirectly via a further library containing additional functions.

This is also considered patentable.

WO2007002296

A method for automatically calculating a discount for a customer offered by a merchant through a reservation system, comprising:
accessing at least one reservation file relating to a reservation;
accessing transaction data relating to at least one payment card transaction;
comparing one or more elements of the transaction data against one or more elements of the reservation file to determine a match;
and electronically calculating the discount based on[e or more] one or more elements of the transaction data and one or more elements of the reservation file.

This is considered non-patentable as although computer implemented, the real world effect is a business method which is not considered as having a technological effect.

EP 1301912

A method of operating a transaction processing system enabling users to authorize transactions, said system comprising a central transaction processing system (19) having at least a first data communications interface and a second data communications interface, comprising the following steps carried out by said central transaction processing system (19):
receiving transaction data from an offering party, relating to a specific transaction to be authorized by a user, and receiving a first transaction reference (TRN) relating to and uniquely identifying said specific transaction, via a first data communication path (16), at said first data communications interface;
generating a second transaction reference (TRR) which is different to the first transaction reference (TRN) and which uniquely identifies the transaction within the central transaction processing system (19);
sending said second transaction reference (TRR) to the offering party; after receiving said transaction data, conducting communications over a second data communication path (22), different to said first data communication path, with said user over said second data communications interface;
using said second path, conducting a secure access procedure in which authentication data is received and said authentication data is verified;
using said second path, receiving said first transaction reference (TRN) relating to and uniquely identifying said specific transaction from said user, said transaction reference not being previously transmitted to said user in said second communication path (22);
using said second path, receiving confirmation from said user; and
in response to said confirmation, transmitting an authorization signal to authorize said transaction, said authorization signal including said second transaction reference (TRR), wherein said second transaction reference (TRR) is not known to said user.

Despite being applied to business applications, there is a technological effect of improved data security so the claimed invention is patentable.

GB 2171877

A method of making a telephone call from any available telephone, comprising: obtaining a special code by making a prepayment;
inserting the prepayment in a memory in a special exchange and being allocated to the special code in the memory for use in verifying a calling party call;
dialing the special exchange when a telephone call connection is desired;
inputting the special code for verification; inputting the number of called party;
verifying at the special exchange by checking the special code and comparing the prepayment less any deductions for previous calls in the memory with the minimum cost of a call to the called party station;
connecting the called and calling parties’ stations in response to said verification; monitoring the remaining prepayment less deductions for the running cost of the call;
and disconnecting the call when the remaining prepayment has been spent by the running cost of the call.

Despite being a business method, by virtue of the ‘special exchange’, there is a redeeming device and the invention is patentable.

GB 2418281

A method of creating a document having a displayable area on which information is placed, the method comprising:
a. providing a plurality of content-items which contain information that it is possible to display on the displayable area;
b. dividing the displayable area into a set of subareas each capable of receiving one or more of the content-items;
c. generating at least one set of proposed arrangements in which the content items have been arranged within the set of sub-areas;
d. selecting at least one of the proposed arrangements, according to predetermine criteria, as the layout of the content-items within the sub-areas of the displayable area to create the document; and
e. causing a printing means to print the created document.

This is considered simply automation of manual type-setting and is not considered as patentable.


US 2007033615

A method for transferring programs to a secondary storage device using an interactive television program guide implemented on user television equipment, to cause a first display: in a display screen of at least one program listing related to at least one program;
using the interactive television program guide to enable a user to select a program listing from at least one displayed program listing;
using the interactive television program guide to cause the program related to the selected program listing to be recorded on a digital storage device;
using the interactive television program guide to cause a second display in the display screen that includes at least one recorded program listing for at least one program recorded on the digital storage device, wherein at least one recorded program listing includes a recorded program listing for the program recorded on the digital storage device;
using the interactive television program guide to enable the user to select the recorded program listing to transfer the recorded program from the digital storage device to a secondary storage device; and
using the interactive television program guide to transfer the recorded program from the digital storage device to the secondary storage device.

This is considered as having a real world effect and is therefore patentable.

 

EP 1062615

A method of monitoring, diagnosing and treating medical conditions of a plurality of remotely located patients using a central data processing system configured to communicate with and receive data from a plurality of respective patient monitoring systems, wherein each patient monitoring system is capable of receiving and storing patient data, the method comprising the steps of:
obtaining patient data from a plurality of patient monitoring systems at the central data processing system;
analyzing the obtained patient data from each respective patient monitoring system at the central data processing system to identify medical conditions of each respective patient;
displaying identified patient medical conditions for each respective patient in selectable, prioritized order according to medical severity; and
in response to selecting an identified medical condition for a respective patient, displaying treatment options for treating the medical condition.

This is considered as having a real world effect. Presumably the diagnosis – since methods of treatment are not statutory subject matter under Section 7(i).

WO 2010128511

A method for determining a matching score between a first set of H1 feature points, and a second set of n2 feature points, the method comprising the procedures of: producing a triple-wise affinity tensor, including the affinity score of assignments of triplets of feature points of said first set of feature points and triplets of feature points of said second set of feature points; determining a leading eigenvector of said triple-wise affinity tensor; iteratively producing a binary optimal assignment vector by discretization of said leading eigenvector; and determining a matching score between said first set of feature points and said second set of feature points according to said triple-wise affinity tensor and according to said optimal assignment vector.

As claimed, not patentable, since the invention relates to a mathematical abstraction. If image analysis and comparison using the method had been claimed, the result would have been different.

WO 2006082590

A method for adaptive filtering of at least one pixel having an initial value of an image composed of pixels, the method comprising: calculating local expected value for the pixel; calculating local signal to noise ratio; calculating local filtration ratio based at least on said local signal to noise ratio; calculating a weighted average of the initial value and local expected value using said local filtration ratio as weight; and assigning the weighted average as a new value for the pixel.

Since this is applied to at least one pixel, this is not an abstract algorithm, but rather an applied algorithm for image processing and is patentable. Furthermore, this cannot be simply considered as automation of something formerly done by hand since manually processing in this manner would not have been practicable.

 

WO 01/37131

A method of classifying an image, comprising the steps of segmenting the image into a plurality of regions and, for each of at least one of the regions: quantifying each of a plurality of visual properties of the region on a numeric scale for the property; comparing each quantified property with a plurality of bands of the numeric scale for the property, each band being associated with a computer-readable character; and arranging in a predetermined order the characters associated with the bands in which the quantified properties fall to form a region character string.

Can not be done manually and classification is considered a real world effect. Patentable.

 

WO 2005005004 

A method comprising the following steps to be performed electronically: selecting at least two participants from a plurality of participants; presenting a first image to each selected participant; and requesting each said selected participant to provide a description of said first image.

Although implemented by a computer, this is a manual process and is therefore not industrially applicable.

 

EP1184798

1.    A method of processing and presenting data, comprising the steps of:
(1) identifying claim dependencies of claims in a user-selected patent;
(2) constructing a patent claims hyperbolic tree for said user-selected patent using said identified claim dependencies; and
(3) displaying said patent claims hyperbolic tree. 

4.    A method of processing and presenting data, comprising the steps of:
(1) retrieving patent citation information pertaining to a user-selected patent, wherein said patent citation information is backward patent citation information or forward patent citation information;
(2) constructing a patent citation hyperbolic tree using said retrieved patent citation information; and
(3) emphasizing nodes of said patent citation hyperbolic tree according to time-based criteria, wherein said time-based criteria includes at least one of filing date, priority date, length of pendency, effective filing date, invention date, critical date, on-sale date, public disclosure date, and public use date.

Although computerized, could be performed manually by a data searcher, therefore not patentable. However, if linked to specific electronic processes, might be considered patentable.

EP 1618498

A method for managing a treelike data structure for text-to-phoneme mapping for automatic speech recognition or text-to-speech, which method comprises steps for creating a decision tree comprising a parent node and at least one leaf node, said method comprising also steps for searching data from said nodes, characterized in that the decision tree is created by storing the nodes sequentially in such a manner that nodes follow the parent node in storage order, wherein the nodes refining the context of the searchable data can be reached without a link from their parent node.

Unlike the previous example, by virtue of the highlighted section, the claimed software implemented invention is linked to specific hardware and is thus patentable.

COMMENTS

In general, I think the Commissioner has got this right.

It is a shame that the guidelines issued a year after they were promised.

3 Comments | Business Method, Israel, Israel IP, Israel Patent, Israel Patent Agency, Israel Related, software Patents | Permalink
Posted by Dr Michael Factor

Innovation, Intellectual Property, and Economic Growth

January 20, 2011

Innovation, Intellectual Property, and Economic Growth by Christine Greenhalgh and Mark Rogers (Jan 24, 2010)

I reviewed this book for the Oxford Journal of Intellectual Property Law and Practice.  doi: 10.1093/jiplp/jpq211

The knife-edge on which the intellectual property law tries to balance is that of defining enough private property rights to preserve adequate incentives for innovation while avoiding the gift of excessive monopoly power, which will lead to socially inefficient exploitation of that creation. This book analyses the effect of intellectual property rights (IPRs) on the market. While certainly capitalists, the authors view Milton’s free market as a system that is inherently inefficient at wealth maximization and prone to duplication of effort and wastage. The market thus needs intervention and regulation to optimize the usage of resources and to maximize progress. The book takes the position that IPRs, by granting property rights over intangible assets, moderate the forces of the market and promote progress. The optimal periods of protection for patents and copyright are those that find the correct balance between the creator’s rights and the public domain or the free market, to encourage development and progress. The difference between the protection given by ……[Full Text of this Article]

Full Text (PDF)

Leave a Comment » | book review, Business Method, Intellectual Property | Permalink
Posted by Dr Michael Factor

Re Bilski – Not worth the wait

June 29, 2010

On the last day of their sitting, the United States Supreme Court issued the long-waited Re Bilksi decision.

Essentially, Mr Bilski tried to get a patent for hedging, particularly as applied to energy resources. The examiner, the USPTO on Appeal, the Court and the Federal Circuit Court of Appeal (en banc) all held that the invention claimed was not patentable subject matter.

Many observers, including myself, were somewhat surprised that the Supreme Court, which hears maybe one patent case a year, decided to hear this one.

The possible ramifications were wider than Bilski. We wondered whether business method patents per se. – which issued in the US in large numbers over the last decade would be voided or upheld; would software per se. be patentable or would it require to be tied to a particular machine? What about gene sequences and other biological discoveries that arguably were not inventions, and could not fairly be described as processes, new matter, machines, etc.

In the event, perhaps wisely, the decision was to uphold the invalidity of the specific Bilksi business patent as being an abstract idea or not a process, and therefore outside the scope of patentable inventions. The Federal Circuit’s attempt to tie patentable subject matter to technological areas (Meyer) or to the machine or material transformation test was, however rejected. The transformation test remains a useful symptom of patentability but is not axiomatic. It is not in the US Constitution or in the Patent Law, nor is a technological requirement. These indications of patentability are helpful but not sufficient.

Since business method patents are still allowable per se. Those allowed until now have a presumption of validity, but one would be wary to sue others based on them since there is every likelihood that they would be invalidated by the court. Indeed, with a 40% reversal rate on appeal in the US, the presumption of validity is not strong anyway.  

Patent attorneys like myself who cannot understand when to consider an applied method is to be considered an abstract thought and when it is a process will have to tell applicants that the issue is not yet resolved, try to discourage them from filing, and then, since we are professionals in an intellectual version of the oldest profession, simply pocket our fees and try our best.

The case was the wrong to hear and the judges declined to say anything of substance. There were a few interesting facts, like a pre 1790 patent in the UK for a business method,  but long-awaited decision actually clarified very little.

Congress should now amend the Patent Law and introduce definitions. Patentability is, afer all, a matter of policy. Oddities like grace periods and first to invent could be scrapped.

One good way to adopt a fairly sensible system would be to adopt the European Patent Convention. Can’t see it happening…

Many of the arguments used in Israeli decisions and patent office circulars were rejected by the US Supreme Court that saw itself as not being authorized to add terminology into the Law.  I am not sure that business patents or software per se. which the Israel Patent Office considers not patentable subject matter should not be. Nor am I convinced that gene sequences are not better understood as discoveries than inventions.

The trouble is, of course, that the commissioner of Patents, possibly does n’t have the authority to do what he does, but despite arguably lacking legal competence, he is professionally competent. The courts here are not. Nor, from some of their arguments, are the justices in the US.

 The 71 page decision was worth reading. Some paragraphs were even somewhat amusing (in a dry academic sort of way). Does it ellucidate much? No. Worth waiting for? Hardly.

Leave a Comment » | Business Method, patentable subject matter, Patents, USPTO | Permalink
Posted by Dr Michael Factor

Seller of Fake Detergents Gets Fine and Jail sentence

June 9, 2010

 

The Nazareth District Court sentenced 27-year-old Khalid Hamuda, an Arab shop-keeper, to a year in prison and a NIS 30,000 fine for selling fake goods. The sentence was the result of a plea bargain. 

The shop-keeper sold laundry detergents bearing fake trademarks for Tide, Ariel, fake chocolate-spread of the Israeli brand-leading Shahar Ha-Oleh brand, and fake Pantene and Head & Shoulders shampoos in his grocery store.

In passing sentence, Nazareth District Court President George Azouli stated that “with economic crime of this nature, the public interest requires a severe punishment which acts as a deterrent and prevents systematic trademark fraud from becoming widespread and damaging the brand owners economically and undermines their hard-earned reputation”. He went on to say that the public is damaged as they spend hard-earned cash on what appears to be leading brands but is, in fact, cheap rubbish.” With respect to the issuance of a fine, in addition to jail sentence, the judge explained that crimes committed for financial gain should be punished by fines to get the criminal where it hurts.

Our Comments

The crimes were committed in 2008 when a gang stole 100 tonnes of the chocolate spread from the Shachar Oleh factory warehouse, so one wonders if he wasn’t selling the real thing as the real thing.

The other products all are leading brands owned by Proctor & Gamble.

 Although clothing with fake logos from the Far East are more common, as is fake Viagra, music disks and software, we note that last year, fake suntan cream resulted in Israeli sunbathers getting severely sun-burnt.

1 Comment | Business Method, infringement, Israel IP, News, passing off, trademarks, Uncategorized | Permalink
Posted by Dr Michael Factor

CAFC rules that Patent Term Adjustments by the USPTO Inadequate

January 8, 2010

In an important case, Wyeth has successfully appealed to the CAFC about how patent term adjustments for delays in examining are calculated.

See http://www.cafc.uscourts.gov/opinions/09-1120.pdf

That the case was brought by Wyeth is not surprising. For a pharmaceutical company, days and weeks of patent protection is big money. I would, however, submit, that the time for a pharmaceutical patent to issue is rarely longer than the time for FDA approval, and thus the damage caused is virtual whereas the compensation by adding a period at the end of the patent term is very real indeed. Consequently I would like to see this adjustment running concurrently with patent term extensions since there is a public interest for pharmaceutical patents to expire eventually, enabling distribution of cheaper generic equivalents.

Leave a Comment » | Business Method, drugs, Intellectual Property, Patents, pharmaceuticals, Teva | Permalink
Posted by Dr Michael Factor

The Boundaries of Patentability

December 3, 2009

Yesterday,  December 2nd 2009, JMB, Factor & Co. hosted a seminar on the boundaries of patentability. The event was held at the “Israel Yaffa Conference Center”, and was attended by a select audience that included IP Law lecturers, patent attorneys and IP lawyers from the various Israeli firms, representatives of university and hospital tech transfer companies, visiting Korean and German patent attorneys, inventor-entrepeneurs and IP managers of several industrial companies.

After words of wecome from my partner and veteran patent attorney, Jeremy Ben-David, Greg Kirsch, a partner of leading US Law firm, Ballard Spahr, who heads up the software patent group there, spoke on the Bilski case, currently on appeal to the Supreme Court.  He took the audience through the main claim, the Patent Office Ruling and the Federal Circuit Court of Appeals ruling and the interim guidelines to examiners, but noting that the Supreme Court presumably took the case as they intended saying something, he declined to hypothesize which way the Supreme Court would rule. Greg finished by giving some practical guidelines and tips on claim drafting and writing the specification for software patent applications.

Dr. Ulrich Storz, Partner, Patent Attorney of Michalski Huettermann & Partner, Dusseldorf, Germany, spoke about gene patents in Europe and Dr. Aloys Huettermann, another partner of the same firm, spoke about embryonic Stem Cell research being non-patentable in the EPO but patentable in Germany, though on appeal to the European Court of Justice, and how the ECJ and EPO interact.

My brother, Adv. Aharon Factor provided some welcome light relief by briefly discussing the Order Public considerations in trademark law, and cases like Cocaine and Bong-Water for energy drinks, Big Pecker, Dykes on Bikes and Old Glory condoms.  

I then discussed what the Israel Law is and what perhaps it should be with regard to the patentability of business methods, software, genes and embryonic stem cell research.

The seminar finished with a vote of thanks from Mr. Michael Ophir, Israel Patent & Trademark Commissioner  between 1988 and 1998, who made a rare public appearance. Mr. Ophir regaled the audience with witty anecdotes regarding various controversial patent and trademarks decisions from the period of his tenure. He explained why he decided to allow a trademark for Jesus Boat, arguably offensive to Christians, and reminisced on one of his more significant decisions, when, in 1994 he rejected patent application No. 68409 of United Technologies Corporation, that dealt with computerizing a system for the energy-efficient flying of a helicopter, which was subsequently overturned by the Jerusalem District Court, C.A. 23/94 (Jerusalem) United Technologies Corporation v. The Registrar of Patents, Designs and Trademarks, District Court Decisions, Vol. 26 (8), 729.  He explained how he’d unsuccessfully petitioned the Attorney General to appeal the decision to the Supreme Court. Evidently, 15 years later and in his late  Seventies, the court ruling still rankles him. 

1 Comment | Academia, Business Method, Intellectual Property, Israel, Israel IP, Israel Patent, Israel Related | Permalink
Posted by Dr Michael Factor

Embezzler of USPTO client accounts Receives 18 months in Jail and Ordered to Restore Fees

November 22, 2009

It is sometimes possible to get a refund from the USPTO where it collects fees for services that are eventually not required or not performed. Unfortunately this does not seem to include refunds of International Search fees for PCT applications.

Anyway, a Ms Karen L. Parish succeeded in diverting these refunds into her personal bank accounts in a way that the USPTO thought they were refunded to customers.

She apparently succeeded in pocketing over half a million dollars over a 15 year period before getting caught.

For more details see: http://www2.insidenova.com/isn/news/local/article/woman_sentenced_for_embezzlement/47485/

Leave a Comment » | Business Method, Intellectual Property, News, Patents, US Patent Office, USPTO | Permalink
Posted by Dr Michael Factor

Patentability of human stem cell research referred to the European Court of Justice

November 18, 2009

Greenpeace considers that the German patent office was wrong to issue a patent number DE 19756864 to Oliver Brüstle, and the Germans have turned to the European Court of Justice for a ruling concerning Art. 6 of Directive 98/44/EC which relates to the legal protection of biotechnological inventions.

There are ethical issues concerning patentability of medicine and medical research and granting a monopoly on a treatment, which are generally bypassed with Swiss type claims. The issue here relates to public morals concerns with destruction of fertilized human egg cells, or when an embryo is considered a life.

One cannot get patents for genetic modification of human beings or over human life. The question is what is a human? I think in this issue, the halachic position is actually more lenient than that of the German Law. It is way outside my area of competence though.

In December, we are hosting an event with German Patent Attorney Ulrich Storz and with US Patent Attorney Greg Kirsch to look at whether software, business methods, genes and stem cells should be patentable. No answers, lots of questions.

2 Comments | Business Method, Intellectual Property, News, patentable subject matter, Patents, pharmaceuticals and Biotechnology | Permalink
Posted by Dr Michael Factor

Court Accepts the Pepsi Challenge

November 10, 2009

After granting enormous damages against Pepsico for breach of contract regarding trade secret of selling bottled water in an undefended court case, Pepsico successfully appealed the summary judgement and the case will be heard on its merits (if there are any).

For original posting see:

http://blog.ipfactor.co.il/2009/11/03/1-26-billion-awarded-against-pepsico-for-not-defending-trade-secret-case-regarding-bottled-water/

Leave a Comment » | Business Method, famous marks, infringement, Intellectual Property, US | Permalink
Posted by Dr Michael Factor

$1.26 Billion Awarded Against PepsiCo. For Not Defending Trade Secret Case Regarding Bottled Water

November 3, 2009

Apparently, PepsiCo. were revealed the trade secret of vending bottled water, and went ahead and marketed this revolutionary product as Aquafina without coming to a business arrangement with the entrepeneurs who gave them the idea. Anyway, PepsiCo. forgot to defend the charges and a Wisconsin judge awarded damages of 1.26 billion dollars against the rinks company.  The alleged infringement happened in 1981, so one wonders about Statute of Limitations issues.

For the full story, see: http://www.reuters.com/article/newsOne/idUSTRE59R58N20091028

Apparently the charges were ignored due to a misplaced letter and a conflicting board meeting, and PepsiCo. have requested that the case is heard and tried on its merits.  Bottling water wasn’t new back in 1981, so we find the whole issue a little weird.

This is somewhat reminiscent of Peckham Spring Water.  See the BBC hit series “Only Fools and Horses” 1992 Xmas Special – Mother Nature’s Son.

2 Comments | Business Method, famous marks, Intellectual Property, News | Permalink
Posted by Dr Michael Factor

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