Israel's Guidelines for Examining Software Patents
Israel’s Patent Office recently released Appendix B of the Patent Examining Procedures. Though a few of the concepts may seem foreign to any practitioner well versed in 35 U.S.C., Appendix B-1 mercifully enumerates eleven examples outlining the contours of software patents.
Generally, a patent may be granted by Israel’s Patent Office for “[a]n invention, whether a product or a process in any field of technology, which is new, useful, and susceptible to industrial application, and which involves inventive step – is eligible for patentability.” As a threshold matter, a patent is first examined for novelty and inventive step; if found lacking in either, the invention will not be categorized into a particular field of technology. The field of technology is analogous to 35 U.S.C. § 101 statutory subject matter, excluding discoveries, scientific theories, mathematical formulae, game rules, and mental acts, “irrespective of whether they are performed in a ‘manual’ manner or by a computer.” Interestingly, the technological field excludes “business methods per se that belong to the economic world,” but as the examples demonstrate, not all business methods are excluded.
Though the guidelines are to be applied on a case-by-case basis, two guidelines help identify patentable software-implemented inventions:
1. Whether carrying out the claimed invention has expression or modification in the physical features beyond the regular operation of an integrated computer system.
2. Whether carrying out the claimed invention causes the computer to operate in a new manner, including, but not only, improving the computer’s performance (such as speed, reliable performance, improved utilization of data storage capacity), or whether inter-operability is created between components of the computer system in a manner that did not exist beforehand.
Two additional guidelines suggest that simply encoding a manual process in software is unpatentable, but that additional advantages by that encoding may be patentable:
That is to say, where the implementation of the invention using a computer is substantially different from the manual performance thereof, such that it is not practical to perform the process efficiently, using “manual” means, or that such an implementation has no significance apart from the context of the computerized process, indicates of the existence of concrete technological character.
To clarify the metes and bounds of these parameters, Appendix B-1 provides eleven examples. However, for the sake of brevity, below are two pairs of examples that contrast patentable and non-patentable subject matter:
Examples 4 and 5 are directed to “Displaying of Information.” Example 4 is unpatentable:
The invention defines a computerized process of editing a document that is visually displayed, in a manner that renders the division of blank areas more efficient during the editing process. … Namely, the stages defined for the computerized program are not substantially different from the instructions which would have been given to a graphical designer. … Hence, it can be stated that in this case the claimed process is not a concrete technological process.
Contrast this with Example 5, which is patentable:
The invention defines a visual display of information. This time the user controls the manner of displaying (of data – e.h.) in an interface of the program guide. … The invention concerns displaying information on a screen according to the characteristics selected by a user. On the face of it and similar to example 4 above, it appears that this invention per se does not fall within a technological field. However, reviewing the details of the invention reveals that the invention provides additional aspects which involve concrete technological character: the implementation supports the same display of information performed by a combination of various storage devices and associating unique displays to each one of them; and recording from one device to another.
Examples 7 and 8 are directed to “Mathematical Calculation/ Image Processing.” Example 7 is unpatentable:
This example concerns an invention which, in essence, provides matching score between features appearing in different images, using a mathematical calculation performed on the different groups of points. … The definition of this invention is focused on a calculation process performed on numbers, the outcome of which is likewise a number, without elaborating in the claim an implementation which goes beyond an abstract calculation. The claimed invention lacks concrete expression in a technological implementation, and hence the claim is directed to a mathematical process, which does not fall within a technological field.
Contrast this with Example 8, which is patentable:
The invention defines filtering of noises in an image composed of pixels. … In this example, similarly to example 9, a mathematical process is executed, as a part of the image processing. … Even if, seemingly, one can think of a numeric representation for each one of the signals (and the specified pixels), ultimately it is a process which is limited to the manner of operation of a system for digital processing, as opposed to a pure mathematical process, and hence, it can be regarded as a process having concrete technological character.
Examples 10 and 11 are directed to Analysis of Data. Example 10 is unpatentable:
The invention is directed at building a hierarchical graph for patent publications while referring to various bibliographic information details and the references’ relations between different publications. … Considering the nature of the field, one can view this claim as a definition of the manner in which it would have been possible for a person operating in the patent domain to implement the invention by means of a mental act. Hence, this invention cannot be considered as falling within a technological field.
Contrast this with Example 11, which is patentable:
The invention is directed at building a hierarchical graph as a part of the computerized process of text recognition. … In this case, as opposed to the previous example, the data analysis technique is specific to the computerized analysis manner that is performed as a part of the process of voice recognition or text to voice conversion using electronic means. … Even if the electronic means are not specifically recited in the claim, it is a process which is implemented in a specific customized hardware system. Hence, the contribution of the invention is considered as having concrete technological character.
The remaining examples are all directed toward patentable subject matter; the official publication (with highlights) may prove a valuable resource, and can be found here.
In a curt but accurate sentence, the guidelines also outline the legally binding effect of these examples: “Obviously, the following does not constitute any stance with respect to the patentability in Israel of applications or patents from other countries, apart from the question of whether they fall within a technological field under Section 3 of the Law.”
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