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Automating Invention is Robert Plotkin's blog on the impact of computer-automated inventing on the future of invention and patent law.

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November 30, 2005

Would the real invention please step forward?

Please excuse me while I blog on some long-overdue topics.

Axel Horns points out a decision by the Board s of Appeal of the European Patent Office on the patentability of a claim for an "electronic message" having certain features.

The patent examiner had rejected the claim for being directed solely to a "presentation of information," which is not patentable under Article 52(2)(d) of the European Patent Convention. More specifically, the examiner rejected the claim because the term "message" defined neither a physical entity (such as a product) nor a method. The examiner considered a "message" not to be a physical entity but rather merely a kind of information, "which was non-physical information of an essentially abstract character."

The Board reversed, stating that:

when considering the nature or category of a claimed invention attention must be paid to the substance of what is claimed, rather than only taking into account how the claimed subject-matter is designated, which can be deceptive. In the board's view the content of the information in the message, in the sense used by the examination division, is not claimed. It is commonplace that the same word may be used both for the physical realisation of some information and its content, in the sense of what is understood by its recipient (consider the word "film"). Thus whereas the term "message" may in some contexts refer merely to the information it is intended to convey ("The message of 'Don Quixote' is . . ."), when qualified by the term "electronic" the natural meaning refers to its physical realisation. An electronic message is an electrical, magnetic or electromagnetic signal or collection of signals and moreover clearly the product of an electronic process.

Exactly what I've been saying all along.

In other words, the fact that a software patent claim contains terms such as "message," "data," "record," and other terms that can refer to abstractions, does not mean that the claim necessarily claims an abstraction and therefore is not patentable. A record is a physical thing when it is stored in the memory of a physical computer.

The disconnect between the tangibility of products and the high level of abstraction at which such products are described and claimed in patents will only become larger as the automation of invention continues. One can imagine a patent claim to a (very tangible) toaster that only describes the toaster in terms of an abstract set of requirements that were provided to a genetic algorithm to produce the design for the toaster (or, say, just its heating elements). The fact that the claim is written in "abstract" terms does not mean that the claim doesn't cover something tangible and patentable.

Posted by Robert at November 30, 2005 2:19 PM
category: Software Patents


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