Transcript
Maria Fernández-Ferreira
In the case of the European Patent Office, it is required that an invention has something that we call ‘technical character’. And in the case of computers we have to have some ... either ‘further technical effect’ or we have to be able to derive from the application some technical problem which requires technical means to solve. And the solution has to be inventive.
So normally, when we speak about computer-implemented inventions, very often we encounter aspects which are technical and aspects which are not technical. We try to separate them both. We have to check whether there is some interaction between the two parts. And then from the technical part we derive a technical problem, from the non-technical part we derive specifications requirements.
And then we try to look for prior art. We decide what is the technical problem being solved, and we assess the technical part based on the prior art and using the requirements specification as something that a person skilled in the art is aware of. Then we decide whether there is inventive step or not, and eventually grant or refuse the patent.
Interviewer
Could you give me an example of something that wasn’t granted a patent?
Maria Fernández-Ferreira
I cannot give you, out of my head, a concrete patent that was rejected. I can give you maybe, somehow ... artificial example.
Interviewer
Sure.
Maria Fernández-Ferreira
If you have – for example – a method for conducting an auction online, OK? So you have the technical infrastructure behind. So you need to have a network of computers. You might even need to solve technical problems concerning, for example, submitting a bid.
However, if your invention lays on defining a new set of rules for conducting the auction – so you defined rules on how a person can, for example, bid, what are the criteria they have to satisfy – then the invention is not on the technical part, but it is on the business part. Basically, this means that if you already would have a technical infrastructure for conducting auctions, the only thing you would need to modify are the particular rules for conducting the auction itself, not the technical infrastructure. You still would need the same type of network, same type of communications. So in this case a system – even containing computers, containing software – would not be considered inventive because the invention would not lay on the technical aspects, but on the business part.