[Patents] Re: technology = translation from idea to matter

[phm@a2e.de (PILCH Hartmut)]

> > Technical inventions occur between an abstract idea and its
> > materialisation.  When you write computer programs or design hardware with
> > co-design tools, there is nothing inventive between the abstract idea and
> > its materialisation. However, when you write a chemical formula (which is
> > an abstract idea), you have not solved any problem.  The work is in making
> > a reaction actually work the way you conceived it.
> >
>       The word "between" here is ambiguous.  How much "materialisation"
> must show up in the patent disclosure?  What we in the U.S. call the "best
> mode" for making and/or using the invention?  To what degree must the
> patent applicant specify actual materials, conditions of use, etc.?

The materialisation work is what you get the patent for -- if it is novel,
non-obvious etc.  The claims are interpreted with this in mind, and they
of course reflect it.  You may succeed in fooling a lazy examiner into
granting some claims where the materialisation is merely a "verbal
clothing" and not inventive.  But such claims may later be of little
value, because during infringement litigation the judge will again ask
where the invention lies and whether the alleged infringer really reworked
that invention.  If you have claimed a programming idea by describing it
as a "apparatus and system for accelerating memory access", then someone
whom you want to sue for infringing on your algorithm may later argue that
he did not rework an apparatus invention but only wrote and marketed an
untechnical rule of organisation and calculation (computer program as
such), while this patent was evidently granted for a technical achievement
in the area of transforming this rule into a concrete apparatus.  He could
of course then also attack the patent for inadequate of disclosure of
that technical achievement.

I am here of course not talking about today's EPO practise but about
(1) what I myself consider to be a consistent systematic and
    adequate approach, given that EPO caselaw today is inherently unstable
(2) the practise of most courts in Germany until recently and of the
    EPO until around 1986, best exemplified in the Dispositionsprogramm
    http://swpat.ffii.org/vreji/papri/bgh-dispo76/ decision.
(3) rules that still underly today's argumentation pattern and legal rules
    and may come back to greater prominence any time.

--
Hartmut Pilch                                           http://phm.ffii.org/
Protecting Innovation against Patent Inflation        http://swpat.ffii.org/
80000 signatures against software patents         http://www.noepatents.org/