Israel Patent Office Clarifies Patentability of Software Patents

Remix

Israel Patent Application Number 190125 to Digital Layers is titled “A method, a system and an apparatus for delivering media layers”. It was filed as a PCT application back in August 2006 (PCT/IL2006/000921), claiming priority from a US provisional application. It entered the national phase into Israel on 12 March 2008. On 12 June 2012, the corresponding US patent issued as US 8,199,935. The Applicant then conformed the pending claims in Israel to those that issued in US 8,199,935 and requested modified examination under section 17c. Although it is discretionary on the Examiner, in general the Israel Patent Office is willing to allow a claim set that has been examined and allowed by any of a number of examining patent offices including the USPTO.

Prior to requesting allowance under Section 17c, the examiner had found earlier claim sets lacking in novelty and inventiveness, and had refused the original claims and a first modified set under sections 4 and 5 of the Law. The new claim set was sufficiently different that the Examiner could rely on his US colleague, but there is a caveat. The claims have to be directed to what is considered patentable subject matter in Israel. Under section 7, claims directed to methods of therapeutic treatment are not patentable in Israel. By interpretation, claims directed to methods of doing business and software per se. are not considered patentable subject matter as they are not considered technological.

The main claim of the present invention, as allowed in the US is:

1. A system for facilitating access to multiple audio layer items over a communication network comprising: A network accessible media database, connected to a communication network, which stores multiple audio layer items each having a plurality of separate and different audio layers which are independently accessible; and at least one subscriber application for receiving a user selection of at least some of said multiple audio layer items, connecting to said media database, and receiving at least some of said plurality of audio layers; wherein said at least one subscriber application having a mixing module which digitally synchronizes and mixes said at least some audio layers to create an audio remix representing a mixed digital audio signal.

Other independent claims are:

16. A subscriber application for facilitating access to multiple audio layer items via a communication network, comprising: a port for communication with a media database via a communication network; and an interface configured to allow a user to select a multiple audio layer item from a plurality of multiple audio layer items each having a plurality of separate and different audio layers and to address separately at least some of said plurality of separate and different audio layers of said selected multiple audio layer item; and a mixing module configured for digitally synchronizing and mixing at least some of said plurality of audio layers to create locally, in the memory of a computing unit, a remix representing a mixed digital audio signal.

19. A method of creating a remix locally at a subscriber application by facilitating access to multiple audio layer items for subscribers via communication network, comprising: providing a media database comprising a plurality of multiple audio layer items each having a plurality of separate and different audio layers such that each said audio layer is independently accessible as a separate audio channel; providing at least one subscriber application capable of communicating with said media database; associating at least one of said multiple audio layer items with at least one of said subscriber applications, according to respective subscriber inputs; receiving a selection indicative of said at least some separate and different audio layers of at least one of said multiple audio layer items from a client terminal; and providing independent access and usage to said at least some separate and different audio layers to create a remix representing a mixed digital media signal by digitally mixing and synchronizing said at least some separate and different audio layers.

23. A system for facilitating access to multiple audio layer items over a communication network comprising: a network accessible media database, connected to a communication network, which stores a plurality of multiple audio layer items such that each layer of each said audio layer item is independently accessible; and at least one subscriber application for receiving a user selection of at least one of said multiple audio layer items, connecting to said media database, and receiving said first multiple audio layer item, said at least one subscriber application having a mixing module configured for digitally synchronizing and mixing at least one selected audio layer of said selected multiple audio layer item to create locally an audio remix representing a mixed digital audio signal.”.

The Examiner rejected the claimed invention as being content related and therefore a pure thought process or a business method. In reaching her decision, the Examiner relied on the background of the Application where it is stated:

“In the 1980’s computerization began to appear in professional recording studios. The first efforts were patchwork devices for automating manual console functions, and even today many automated consoles are analog audio consoles with digital equipment adapted to existing devices. During the 1990’s, the computer industry continuously introduced multi-media computers and mixing software, which started to replace the existing, manual, consoles, many of which have audio signal input/output capability together with animated image display capability. Such a multi-media computer generally employs a multi-window display system to display different information simultaneously and independently on different windows resulting from splitting a display screen, and plural icons are usually displayed so that an operator can activate any one of them using a mouse.”

The Commissioner of Patents ruled that the system is tied to physical equipment and requires physical equipment but is not merely automation of something known. It cannot fairly be considered software per se. a thought process or trivial computerization of something known. He quoted extensive European case law to show that this type of invention is patentable in Europe, and held that by analogy it was patentable here.

The claims as allowed in the US were allowed to publish for opposition purposes in Israel.He allowed the patent to publish for opposition purposes.

COMMENT

The patent has been allowed under section 17c. This does not imply an independent assessment of novelty or inventiveness. Merely, that the subject matter is not to be considered a mere thought process or software per se. It is still not clear what type of claims will be considered patentable, but it does appear that what is considered patentable in Europe will probably be considered patentable in Israel.

Israel Patent Application Number 190125 to Digital Layers is titled “A method, a system and an apparatus for delivering media layers”. It was filed as a PCT application back in August 2006 (PCT/IL2006/000921), claiming priority from a US provisional application. It entered the national phase into Israel on 12 March 2008.

On 12 June 2012, the corresponding US patent issued as US 8,199,935. The Applicant then conformed the pending claims in Israel to those that issued in US 8,199,935 and requested modified examination under section 17c.

Although it is discretionary on the Examiner, in general the Israel Patent Office is willing to allow a claim set that has been examined and allowed by any of a number of examining patent offices including the USPTO.

Prior to requesting allowance under Section 17c, the examiner had found earlier claim sets lacking in novelty and inventiveness, and had refused the original claims and a first modified set under sections 4 and 5 of the Law.

The new claim set was sufficiently different that the Examiner could rely on his US colleague, but there is a caveat. The claims have to be directed to what is considered patentable subject matter in Israel. Under section 7, claims directed to methods of therapeutic treatment are not patentable in Israel. By interpretation, claims directed to methods of doing business and software per se. are not considered patentable subject matter as they are not considered technological.

The main claim of the present invention, as allowed in the US is:

1. A system for facilitating access to multiple audio layer items over a communication network comprising: A network accessible media database, connected to a communication network, which stores multiple audio layer items each having a plurality of separate and different audio layers which are independently accessible; and at least one subscriber application for receiving a user selection of at least some of said multiple audio layer items, connecting to said media database, and receiving at least some of said plurality of audio layers; wherein said at least one subscriber application having a mixing module which digitally synchronizes and mixes said at least some audio layers to create an audio remix representing a mixed digital audio signal.

Other independent claims are:

16. A subscriber application for facilitating access to multiple audio layer items via a communication network, comprising: a port for communication with a media database via a communication network; and an interface configured to allow a user to select a multiple audio layer item from a plurality of multiple audio layer items each having a plurality of separate and different audio layers and to address separately at least some of said plurality of separate and different audio layers of said selected multiple audio layer item; and a mixing module configured for digitally synchronizing and mixing at least some of said plurality of audio layers to create locally, in the memory of a computing unit, a remix representing a mixed digital audio signal.

19. A method of creating a remix locally at a subscriber application by facilitating access to multiple audio layer items for subscribers via communication network, comprising: providing a media database comprising a plurality of multiple audio layer items each having a plurality of separate and different audio layers such that each said audio layer is independently accessible as a separate audio channel; providing at least one subscriber application capable of communicating with said media database; associating at least one of said multiple audio layer items with at least one of said subscriber applications, according to respective subscriber inputs; receiving a selection indicative of said at least some separate and different audio layers of at least one of said multiple audio layer items from a client terminal; and providing independent access and usage to said at least some separate and different audio layers to create a remix representing a mixed digital media signal by digitally mixing and synchronizing said at least some separate and different audio layers.

23. A system for facilitating access to multiple audio layer items over a communication network comprising: a network accessible media database, connected to a communication network, which stores a plurality of multiple audio layer items such that each layer of each said audio layer item is independently accessible; and at least one subscriber application for receiving a user selection of at least one of said multiple audio layer items, connecting to said media database, and receiving said first multiple audio layer item, said at least one subscriber application having a mixing module configured for digitally synchronizing and mixing at least one selected audio layer of said selected multiple audio layer item to create locally an audio remix representing a mixed digital audio signal.

The Examiner rejected the claimed invention as being content related and therefore a pure thought process or a business method.

In reaching her decision, the Examiner relied on the background of the Application where it is stated:

“In the 1980’s computerization began to appear in professional recording studios. The first efforts were patchwork devices for automating manual console functions, and even today many automated consoles are analog audio consoles with digital equipment adapted to existing devices.

During the 1990’s, the computer industry continuously introduced multi-media computers and mixing software, which started to replace the existing, manual, consoles, many of which have audio signal input/output capability together with animated image display capability. Such a multi-media computer generally employs a multi-window display system to display different information simultaneously and independently on different windows resulting from splitting a display screen, and plural icons are usually displayed so that an operator can activate any one of them using a mouse.”

The Commissioner of Patents quoted extensive European case law to show that this type of invention is patentable in Europe, and held that by analogy it was patentable here.

He allowed the patent to publish for opposition purposes.

COMMENT

The patent has been allowed under section 17c. This does not imply an independent assessment of novelty or inventiveness. Merely, that the subject matter is not to be considered a mere thought process or software per se.

It is still not clear what type of claims will be considered patentable, but it does appear that what is considered patentable in Europe will probably be considered ptentable in Israel.

In conclusion, the Commissioner ruled that the system is tied to physical equipment and requires physical equipment but is not merely automation of something known. It cannot fairly be considered software per se. a thought process or trivial computerization of something known.

The claims as allowed in the US were allowed to publish for opposition purposes in Israel.

Re 190125, Decision of commissioner 17 Feb 2014

 

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