Re: [Patents] RE: [ffii] EuroParl Swpat Hearing Review

[<halber@idea.net.pl>]

Philippe.Aigrain@cec.eu.int wrote:

> In particular, I find the idea
> proposed (I believe by Mr. Rocard) of explicitely stating examples
> of things
> one does not want to see patented quite productive: it puts people
> to the
> stand of demonstrating whether or not this will be achieved by their
> proposal legal text.
>
> Finally on lobbying and related abuse, the facts can be simply
> exposed. All
> facts. But being careful to avoid any vague or undocumented
> statement that
> permit people to pose as victims of witch hunts.

Hello Hartmut,

My involvement is slowly moving to the wider arena.  In his statement
at the International Forum on Software and Business Patents
http://www.european-patent-
office.org/intcop/intl_academy/courses/munich/munich_2002.htm Mr Teufel 
of IBM had singled out Poland and a decision of the Board of Appeal co-
signed by me. I do suspect, after Mr. Teufel will lose to me in the 
High Administrative Court (I am an optimist, it matter of months), he 
is going to accuse Poland at a WTO committee on violation of TRIPS.

I have nothing against such popularity. We have refused to grant patent
to IBM application WO-9718635. I never analyzed how often we were
refusing to grant when the same application was accepted in the EPO.
But it would be helpful if you give the EP-861551 patent a prominent
place in your gallery. As an example of the violation of the EPC by the
EPO and as an attempt of appropriation of the Web by IBM.

We should appeal to Mr. Rocard to call a  similar hearings in framework
of European Socialist as the Greens are planning for 26 November. I
hope that you agree; the balance of opinion inside Socialist group is
crucial for the result of voting in the EuroParl. Think over what we
can do jointly.

Greetings
Jozef Halbersztadt



WO-9718635 (EP-861551, PL-326670)

 

Online European Patent Register - Results
Status of the database as of 22-11-2002 (dd-mm-yyyy)
 
  Most recent event
  Grant 
  Date of publication 14-08-2002 [2002/33]
    
 Publication numbers, publication type and publication dates
    EP0861551 A2 22-05-1997 [1998/36]
    EP0861551 B1 14-08-2002 [2002/33]
  Date of grant  14-08-2002 [2002/33]
    WO9718635 22-05-1997 [1998/36]
 Application numbers and filing date
    EP19960931154 (96931154.7)
  Date of filing  20-09-1996 [1998/36]
    WO1996GB02317
 Date of publication of search report
  Date of international search report  07-08-1997
  International Searching Authority  EP
 Priority number, priority date
    US19950558627 14-11-1995;
    US19950558626 14-11-1995;
    US19950558631 14-11-1995;
    US19950558628 14-11-1995 [1998/36]
 Classification (IPC) and bulletin number
    H04L29/06 [1998/36] 
 Designated states
    BE , CH , DE , ES , FR , GB , IT , LI , NL , SE [1998/36]
 English title
    INFORMATION HANDLING SYSTEM FOR ALLOWING A GENERIC WEB BROWSER TO 
ACCESS SERVERS OF A PLURALITY OF DIFFERENT PROTOCOL TYPES [1998/36]
 French title
    SYSTEME GENERIQUE DE TRAITEMENT DE L'INFORMATION PERMETTANT UNE 
CONSULTATION RAPIDE SUR RESEAU POUR ACCEDER A DES SERVEURS OPERANT 
SUIVANT DIFFERENTS PROTOCOLES [1998/36]
 German title
    MEHRPROTOKOLLKOMMUNIKATION ZWISCHEN EINEM ALLGEMEINEN NETZBROWSER 
UND MEHREREN ZUGANGSNETZANBIETERN [2001/50]
 Designated states, applicant name, address
    FOR ALL DESIGNATED STATES
    INTERNATIONAL BUSINESS MACHINES CORPORATION
    Armonk, NY 10504/US [2002/33]
 Inventor name, address
    01 / PEERCY, Michael / 10330 N. Foothill Boulevard NO. A28 / 
Cupertino, CA 95014 / US
    02 / PRIMM, Michael / 409 Brook Creek Drive / Apex, NC 27502 / US
    03 / REED, Benjamin / 507 Koshland Way / Santa Cruz, CA 95064 / US
    04 / WELCH, Steven / 3330 Canada Road / Gilroy, CA 95020 / US
    05 / MEDFORD, Mitchell / 109 Strathburgh Lane / Cary, NC 27511 / US 
[1998/36]
 Representative name, address
    Moss, Robert Douglas
    IBM United Kingdom Limited Intellectual Property Department Hursley 
Park
    Winchester Hampshire SO21 2JN/GB [1998/36]
 Filing language
    EN
 Procedure language
    EN
 Location of file and fax number for file inspection requests
  Application is treated in (/fax-nr)  MUNICH/(+49-89) 23994465
 PCT: Acts performed for entry into EPO regional phase
  Acts performed for entry into the regional phase  14-04-1998
  - National basic fee paid  14-04-1998
  - Designation fee(s) paid  14-04-1998
  - Examination fee paid  14-04-1998
 Examination procedure
  Date of request for preliminary examination  13-06-1997
  request for examination  14-04-1998 [1998/36]
  request for accelerated examination filed  14-04-2000
  - accepted (yes/no) / date  yes / 25-10-2001
  communication R.51(4) dispatched  25-10-2001
  - approval (yes or no)  yes
  communication R.51(6) dispatched  23-01-2002
  payment of fee for grant/fee for printing  01-02-2002/01-02-2002
 Renewal fees
  Renewal fee A.86 (patent year / paid)  03/19-05-1998
   04/19-05-1999
   05/15-05-2000
   06/15-05-2001
   07/15-05-2002
 Documents cited in the European Search
    [ ] See references of WO 9718635A3
 Documents cited in the International Search 
    EP0524123 A [Y];
    XP002032678 A [Y];
    XP000484284 A [Y];
    XP000331522 A [A];
    XP000529593 A [A]
    [Y] IEEE TRANSACTIONS ON COMMUNICATION TECHNOLOGY, vol. 34, no.
    3, March 1986, NEW YORK US, pages 257-268, XP002032678
    P.E.GREEN: "PROTOCOL CONVERSION";
    [Y] COMMUNICATIONS OF THE ASSOCIATION FOR COMPUTING MACHINERY,
    vol. 37, no. 8, August 1994, NEW YORK US, pages 76-82,
    XP000484284 T.BERNERS-LEE: "THE WORLD-WIDE WEB";
    [A] COMMUNICATIONS OF THE ASSOCIATION FOR COMPUTING MACHINERY,
    vol. 35, no. 7, July 1992, NEW YORK US, pages 77-98,
    XP000331522 A.SINHA: "CLIENT-SERVER COMPUTING";
    [A] IBM SYSTEMS JOURNAL, vol. 34, no. 3, September 1995, ARMONK,
    NEW YORK US, pages 472-499, XP000529593 D.POZEFSKY ET AL:
    "MULTIPROTOCOL TRANSPORT NETWORKING: ELIMINATING APPLICATION
    DEPENDENCIES ON COMMUNICATIONS PROTOCOLS"
[ End of Data ]


[The Start of Polish Document]

DECISION

Acting under Articles 245 and 318.3 of Industrial Property Law of 30 
June, 2000, (Dz.U. 49/2001, item 508), the Board of Appeal of the 
Polish Patent Office (PPO)

(...)

having tried, at the 29 October, 2002, session, an appeal filed by an 
attorney of International Business Machines Corporation, Armonk US, 
(...),

from the PPO's 9 January, 2001, decision rejecting a patent on 
application No. P.326670 entitled "Information Handling System and 
Program Element for Information Handling System", hereby decides to 
uphold the appealed decision in force.

REASONS

The PPO received a petition by International Business Machines 
Corporation, US, dated 20 September, 1996, for granting a patent on an 
invention entitled "Information handling system offering, to the 
universal World Wide Web (WWW) browsing program, an access to servers 
using various types of communications protocol".

By the Official Action of 4 May, 2000, the PPO invited Applicant to 
define a scope of the claimed protection and to correctly describe the 
claimed solutions by revealing technical means appropriate to a given 
application category (the functional connections circuit) and by 
eliminating from claims the description of the working principle and 
the computer program mapping operations.

Regarding the new version of the application as filed on 4 August, 
2000, the PPO assumed the position in the 13 September, 2000, Official 
Letter. By that letter, Applicant was informed that the solution as 
filed could not be granted the patent on the grounds that the PPO 
viewed the subject-matter of the application directed to the circuit 
(claims 1 through 6) as not disclosing all the essential data necessary 
to carry out the invention as a circuit (lack of the circuit features, 
i.e. a configuration and particular inter-connections between the 
circuits), while the subject-matter of the application relating to the 
program element (claims 8-9) is concerned only with the program-related 
features, i.e. unpatentable ones.

Applicant responded to the above objections in his/her response to the 
19 December, 2000, Official Action and filed a new version of claims. 
In that letter, Applicant reminded the basic information concerning the 
Internet-network, the handling of the information in this network, the 
communications protocols used, all that being just a background of the 
application's subject-matter without presenting any position towards 
the Official Letter's advanced objections.

Regarding the circuit, Applicant's states that the invention cannot be 
fully described by presenting the circuit features, because circuit 
features have nothing to do with the invention's subject-matter and 
introduction thereof in the claims will too much restrict the scope of 
the protection and allow competitors to circumvent the patent by using 
the different and unprotected arrangements or inter-connections between 
the elements. As to the program element, Applicant deemed it to be the 
solution in a product category and described it by the computer orders 
incorporated in the computer element (the product), the program element 
as implemented by computer results, in accordance with the invention's 
gist, the functioning of the computer, e.g. a simulation of the 
functions of the information handling system elements.

By the decision of 9 January, 2001, the PPO rejected a Grant on the 
application P.326670 entitled "Information handling system and program 
element for information handling system" and upheld the Official 
Action's advanced objections that the solution directed to the system 
did not reveal the system features but was concerned with a technical 
problem to be solved and elements' intended purpose, whereas the 
program element comprises features that are characteristic to the 
computer programs.

On 9 March, 2001, Applicant appealed from the PPO's decision. In the 
appeal's reasons, Applicant repeated the already presented information 
constituting the backgrounds of the application's subject-matter and 
stated that the claim expressly claims the device features (the server 
computer device, the client computer device, the client computer device 
comprising a unit for communicating with the server computer device and 
the information presentation unit as well as an information handling 
network and a protocol handling unit), whereas, in the matter of fact, 
the invention resides in that such system allows the contacting of the 
web browser but not the web server, the web browser and not the web 
server and the network using the different transmission protocols and 
data formats.

Applicant deemed the interposition of the information handling network 
and the information transmission protocol conversion unit between the 
client computer device and the server computer device to be a critical 
characterizing feature of the solution defined by claim 1, which 
feature constituted, in the Applicant's opinion, a sufficient 
disclosure of all the essential data necessary to carry out the 
invention, and s/he indicated the technical features related to the 
application's subject-matter (Article 26 of the 19 October, 1972, 
Patent Law and § 35.1.2 of the PPO President's Ordinance of 23 March, 
1993, concerning inventions and utility models protection). As far as 
the protection of claim 1 is concerned, Applicant stated that it did 
not concern a computer program as such.

The PPO Board of Appeal, having examined the materials contained in the 
P.326670 files and taking into account the application's presented 
arguments, has not found any reasons to repeal the decision of 9 
January, 2001.

Having analyzed the subject-matter of the application as defined by 
claims of 19 December, 2000, and taking into account the information 
given in the description, the PPO states that Applicant presented a 
general concept of creating the system that allows communications 
between the client computer device and the WEB server using HTTP 
communications protocol and Hyper Text Mark Language HTLM, and the 
information handling network using a transmission protocol other than 
HTTP and the network data format other than HTLM language. This concept 
is to be carried out by interpositioning (as adduced in the appeal from 
the rejection decision) of the said network between the client computer 
device and the server and by using the unit for converting the 
transmission protocol and the HTLM/HTTP language into the network 
transmission protocol and the network data format. The said network (as 
given in the appeal) embraces a number of the information handling 
computer devices, and Applicant does not reveal any particular 
arrangement and inter-connection of these devices in order to not limit 
the protection scope (page 2 of Applicant's response). Thus, Applicant 
claims only an idea (a concept of the solution) but not a particular 
realization thereof in the form of a sufficiently revealed device. 
Similarly, the transmission protocol conversion unit is only a 
functional definition of the task performed by the system and not the 
specific technical element, because either its structure allowing the 
task performance, or its particular location in the system has not been 
sufficiently revealed. One cannot deem the statement that it has been 
adapted to run object-oriented software to be a disclosure of the 
unit's construction, without defining where that adaptation resides in 
and how it is carried out. The solution defined by independent claim 7, 
as already explained in the rejection decision (page 3), is not a 
solution in a product category. Further, it does not reveal the 
technical means that are appropriate for this invention category 
(device or method). The program element has been claimed as a mapping 
block which, at the moment of starting the system, is able to map the 
data and commands in the language other than HTML and HTTP protocol, 
the mapping block having objects that are able to carry out the program 
tasks as noted (accepting, forming, converting, analyzing, opening and 
maintaining the communications etc). Therefore, justified is the 
opinion that it is only a formulation of the problem and not the 
disclosure of the specific realization of the invention by revealing 
the technical features appropriate for a given invention category. As 
per the description, however, the claims' formulated problem is carried 
out by the computer program. The invention is the solution of the 
problem through an employment of the controllable forces of the nature, 
intended to achieve the causally foreseeable result residing beyond an 
intellectual activity of a human. Technology is an area of human 
activity whose theoretical basis are natural applied sciences requiring 
an experimental verification. Beyond the area of technology there are 
fields of human activity whose theoretical basis are such sciences as 
mathematics, linguistics, programming, which sciences require solely a 
logical verification. To assess claims, one is to decompose them into 
the components embracing both technical and non-technical elements. The 
solution is a patentable invention, if at least one non-obvious element 
appears in the technical area. If an inventive contribution resides 
solely in the non-technical area, the solution should be deemed 
unpatentable. In the PPO's opinion, in the part of the application 
which defines the protection scope for the program element, i.e. in 
claims, there are given only the non-technical features that relate to 
the software.

The PPO notes the decision of the Board of Appeal: "Lack of disclosure 
of all the technical means that are necessary to achieve an intended 
purpose, or the definition of the purpose in the manner being 
inadequate to technical means constituting the essence of the solution, 
determine lack of the solution in light of the patent law provisions." 
(decision of the PPO Board of Appeal dated 19 July, 1993, No. Odw. 
1161/93 - WUP 2/1994, page 175).

Taking the aforesaid into consideration, the PPO has decided as above.

This decision is complainable before the Supreme Administrative Court 
within 30 days from receipt of this notice, i.e. till 3 December, 2002.

[The End of Polish Document]