COMPUTER

IMPLEMENTED
INVENTIONS

ENGR. JAN RAYYAN D. BARRACA

Patent Examiner and Quality Reviewer
Quality Management Division
Bureau of Patents
DISCUSSION POINTS
• Overview of Computer Technologies
• What is Computer Implemented Invention
• What is computer program
• What is Business Method
• Patentable/Non Patentable Invention
• Requirement to be patentable
• Examples
• Claim Assessment
• Summary
WHICH COUNTRY SPECIALIZES IN
WHICH TECHNOLOGIES?

Taken from WIPO IP Statistics Data Center

PCT Applications (2017)

Taken from WIPO IP Statistics Data Center

TOP 10 LARGEST COMPANIES IN
THE WORLD

Reference: https://www.forbes.com
BLEEDING EDGE PATENT
PRIORITIES
FOURTH INDUSTRIAL REVOLUTION
FOURTH INDUSTRIAL REVOLUTION
Computer Implemented Invention

What is Computer Implemented Invention?

Inventions involving computers, computer networks or

other programmable apparatus working with
computer program(s).
Computer Program

What is Computer Program?

Set of instructions in a logical sequence interpreted and

executed by a computer enabling the computer to
perform a required function.
Business Method

What is Business Method?

Encompasses economic activities such as buying and

selling items, marketing techniques, and financial
schemes and strategies.
Patentable Inventions

Rule 201 of the IRR on Inventions

Patentable Invention:

Any technical solution of a problem in any field of human activity

which is new, involves an inventive step, and is industrially
applicable shall be patentable.
Patentable Inventions

Rule 201 of the IRR on Inventions

A patentable invention may be or may relate to:

a) A product
b) A process
c) Computer-related inventions
d) An improvement of any of the foregoing
Non Patentable Inventions

Rule 202 of the IRR on Inventions

The following shall be excluded from patent protection :

b) Abstract ideas or theories, fundamental concepts apart from

the means or processes for carrying the concept to produce
a technical effect;

d) Method of doing business, such as a method or system for

transacting business without the technical means for
carrying out the method or system;

e) Programs for computers

Non Patentable Inventions

As such:

Business Methods
Claims for a method of doing business in abstract (i.e. not
involving any technical means and considerations in carrying out
the method).

Programs for Computers

Program Listing, Source Codes, Scripts, etc.
Non Patentable Inventions

“As Such” may be construed to mean that subject

matter is considered to be a mere abstract creation
lacking in technical character.

Therefore, no patentable invention.

Requirement to be patentable

IP Code states that:

“technical character” is a requirement for patentability.

What is technical character in computer implemented

inventions?
Requirement to be patentable

Technical Character

A computer program has technical character if:

• It causes a further technical effect when run on a
computer
• Implemented in combination with a computer and
causes the computer to operate in a different way
from a technical stand point, the combination might
be patentable

The program is then more than a program as such.

Requirement to be patentable

Technical Character

Concrete/Tangible
• Apparatus, Computer, Servers, Processors,
Memories, Ports, Terminal devices, Input devices…

Technical Effect/Aspects
• Frequency, Data transfer rates, Signal quality, Noise
ratio, Multiplexing…
• Saving memory, Increasing speed, Security, Battery
life…
Requirement to be patentable

Technical Character: Product Claim

• A man-made tangible embodiment (device,

apparatus, port, memory, processor, circuit boards,
computer etc.) with a real world use can be
evidence of technical character.

• The tangible embodiment is utilized for a technical

purpose and application (technical solution).
Requirement to be patentable

Technical Character: Process Claim

• Recitation of a machine (either express or inherent)

• Machine implements the claimed steps (process

steps tied to a particular device).
• Machine is used for a technical purpose and
application (technical solution) which
meaningfully limits the execution of the steps.
Example of Product Claim

Claim:

An X-ray apparatus having several X-ray tubes,

characterized by:

• a computer which stores tube rating data and uses

the data to set exposure parameters for each tube,
such that the optimum exposure is obtained for
each tube without overloading anyone of them”.

Eligible Product Claim?

Yes
Example of Business Method Claim

Claim:

A method of encouraging customers to be loyal buyers

by giving a discount on future purchases.

Eligible Business Method Claim?

No
Example of Business Method Claim

Claim:

A computer implemented method with a database of

customers who have previously purchased goods for
applying discounts to any subsequent purchases.

Eligible Business Method Claim?

Yes
Example of Business Method Claim

Claim:

A method for evaluating leadership effectiveness, comprising the steps of:

• gathering target information quantifying at least one domain selected
from the group consisting of having personal convictions, being visionary,
building emotional bonds, being inspirational, being team oriented, being
a risk taker and having a drive to excel;
• comparing the target information with a standard, the standard including
standard values of the domain; and
• identifying non-standard responses of the target.

Eligible Business Method Claim?

No
Example of Business Method Claim

Claim:

A service method for offering service points depending on an amount of

commodity purchased at a shop on the Internet, comprising the steps of:

• receiving by a server, an amount of service points offered and a name of

the person to whom the said service points are offered via the Internet;
• acquiring by the said server, the e-mail address of the said person from a
customer list storage means based on the name of the said person;
• adding by the said server, the said service points to the accumulated
points of the said person stored in the said customer list storage means;
and
• notifying by the said server, to the said person that the said service points
have been given by e-mail using the said e-mail address of the said
person.

Eligible Business Method Claim?

Yes
Example of Business Method Claim
Claim:

A method of controlling payment and delivery of content, the method comprising the
steps of:
• a provider receiving a request for content from a user;
• the provider accessing content information describing the requested content;
• the provider accessing regulation information describing at least one regulation
that is related to the payment and the content information of the requested
content and to geographical information of the user;
• determining the geographic location of the user;
• the provider determining whether the requested content satisfies the at least one
regulation;
• if so, delivering the requested content to the user for free;
• if not, transmitting a payment request to the user.

Eligible Business Method Claim?

No
Example of Business Method Claim
Claim:

A computer-implemented method for controlling payment and delivery of content within a

computer system comprising a user terminal, a provider server and a database which are
connected via a communication network, where computer instructions causing the
computer system to perform the operations comprising:
• the provider server receiving a request for content from the user terminal;
• the provider server accessing in the database content information describing the
requested content;
• the provider server accessing regulation information in the database describing at least
one regulation that is related to the payment and the content information of the
requested content and to geographical information of the user;
• determining the geographic location of the user;
• the provider server determining whether the requested content satisfies the at least
one regulation;
• if so, delivering the requested content to the user terminal,
• if not, transmitting a payment request to the user terminal.

Eligible Business Method Claim?

Yes
Example of Business Method Claim
Claim:

A service method for offering service points depending on an amount of

commodity purchased in telephone shopping, comprising the steps of:

• notifying via telephone an amount of service points offered and a name of

a person to whom the said service points are offered;
• acquiring the telephone number of the said person from a customer list
storage means based on the name of the said person;
• adding the said service points to the accumulated points of the said
person stored in the said customer list storage means to obtain an
updated amount of service points; and
• notifying the said person on the updated amount of service points via
telephone using the said telephone number of the said person.

Eligible Business Method Claim?

No
Example of Business Method Claim

Client-
Server
Model
Example of Computer Program
Product Claim

Claim:

A computer readable medium containing a program that makes

a computer operate as:
• a means for detecting differences of humidity readings made
by sensors installed at plural locations; and
• a means for determining the breaking out of fire based on
increasing rate of said difference of humidity reading.

Eligible Computer Program Product Claim?

Yes
Example of Computer Program
Product Claim

Claim:

A computer program for executing a source code analysis and

the analysis results output function in the source code analyzer.

Eligible Computer Program Product Claim?

No
Example of Computer Program
Product Claim
Claim:

A machine readable storage medium containing computer instructions for controlling payment
and delivery of content within a computer system comprising a user terminal, a provider server
and a database which are connected via a communication network, the computer instructions
causing the computer system to perform the operations comprising;
• the provider server receiving a request for content from the user terminal;
• the provider server accessing in the database content information describing the requested
content;
• the provider server accessing regulation information in the database describing at least one
regulation that is related to the payment and the content information of the requested
content and to geographical information of the user;
• determining the geographic location of the user;
• the provider server determining whether the requested content satisfies the at least one
regulation;
• if so, delivering the requested content to the user terminal,
• if not, transmitting a payment request to the user terminal.

Eligible Computer Product Claim?

Yes
Example of Computer Program
Product Claim
Claim:

An apparatus for controlling rate of fuel injection for an

automobile engine by a programmed computer, comprising:
• first detector means for detecting the rate of engine
revolutions;
• second detector means for detecting transition of the rate of
engine revolution; and
• fuel injection rate decision means for determining the rate of
fuel injection by said control program in accordance with the
values detected in the first and second detector means.

Eligible Computer Product Claim?

Yes
Requirement to be patentable
 Subject-matter is not excluded from patentability

× Subject-matter is excluded from patentability

Subject-matter

Technical character
Non technical character

At least one feature has technical character => subject-matter

has technical character.

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Requirement to be patentable
 Subject-matter is not excluded from patentability

Technical character Subject-matter

Non technical character

EXCLUDED FROM PATENTABILITY

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Requirement to be patentable

Having technical character is first hurdle prior to 3

patentability requirements.

• a general and absolute requirement

• a requirement strictly separated from the other

patentability criteria (novelty, inventive step,
industrial applicability)

• ... but a trivial requirement!

Claim Assessment
Claim:

A computer-implemented method for controlling payment and delivery of content within a

computer system comprising a user terminal, a provider server and a database which are
connected via a communication network, where computer instructions causing the
computer system to perform the operations comprising:
• the provider server receiving a request for content from the user terminal;
• the provider server accessing in the database content information describing the
requested content;
• the provider server accessing regulation information in the database describing at least
one regulation that is related to the payment and the content information of the
requested content and to geographical information of the user;
• determining the geographic location of the user;
• the provider server determining whether the requested content satisfies the at least
one regulation;
• if so, delivering the requested content to the user terminal,
• if not, transmitting a payment request to the user terminal.
Claim Assessment
Clearly Technical Aspects Non-Technical Aspects/ Process

Business process
A computer implemented method comprising:

- a server receiving data from a terminal over a

communication network;
- the server accessing data in a database;
- the server processing the accessed and received data;
- the server transmitting the processing result to the
terminal;

The subject matter of the claim defines technical and non-technical aspects
and thus has technical character.

assessment of novelty and inventive step

Claim Assessment: Novelty

Technical character: yes

Non-technical aspects: yes
Requirements Business Method:
specification: "ordering content and calculating its price"

Closest prior art: computer system comprising a server,

database, and a terminal which are connected
via a communication network
Differences: said business method "ordering content and
calculating its price”
Claim Assessment: Inventive Step
PROBLEM SOLUTION APPROACH

Determination of the
closest prior art

Establishing the objective technical

problem to be solved

Determination of the common general

knowledge of the person skilled in the art

Consideration whether the

invention is
obvious or non-obvious
Claim Assessment: Inventive Step
Clearly Technical Aspects Non-Technical Aspects / Process

state of the art: 'requirements specification'

- computer system comprising a server,
database, and a terminal which are
connected via a communication
network
closest prior art:
- always chosen from a field of
technology
= instructions given to a data processing
expert summarising the requirements of
the customer
i.e. business or administrative
process to be automated

- skilled person:
- skilled in the field of information
technology
- aware of common general knowledge
in information technology
- no knowledge of non-technical fields T172/03 RICOH

T614/00 COMVIK
Claim Assessment: Inventive Step

Technical character: yes

Non-technical aspects: yes
Requirements = business method:
specification: "ordering content and calculating its price"

Closest prior art: computer system comprising a server,

database, and a terminal which are connected
via a communication network
Differences: said business method
Skilled person: data processing expert, IT people, etc.

Objective technical automate said business method on said

problem: computer system
Solution: implementation/ automation is considered
obvious
Claim Assessment: Inventive Step
Claim Assessment: Inventive Step
Claim:

A computer-implemented method for controlling payment and delivery of content within a

computer system comprising a user terminal, a provider server and a database which are
connected via a communication network, where computer instructions causing the
computer system to perform the operations comprising:
• the provider server receiving a request for content from the user terminal;
• the provider server accessing in the database content information describing the
requested content;
• the provider server accessing regulation information in the database describing at least
one regulation that is related to the payment and the content information of the
requested content and to geographical information of the user;
• determining the geographic location of the user;
• the provider server determining whether the requested content satisfies the at least
one regulation;
• if so, delivering the requested content to the user terminal,
• if not, transmitting a payment request to the user terminal

wherein the geographic location of the user is determined by the IP address of the user
terminal using method steps x, y, z.
Claim Assessment: Inventive Step
Technical character:
Non-technical aspects:
Requirements
specification:
Closest prior art:
Non-technical differences:
Technical differences:
Skilled person:
Objective technical problem:
Solution:
yes
yes
business method:
ordering content and calculating its price
computer system comprising a server, database, and a
terminal which are connected via a communications
network capable of determining the location of the
terminal.
said business method
method steps x, y, z
data processing expert
• automate said business method
• find alternative method for determining
geographic location of user
• automation is obvious
• obvious? (e.g. Prior Art) GPS, Google’s Visual
Positioning System (VPS),
INVENTIVE
Summary

Inventive Step

Technical Character

Industrial
Novelty Applicability
& other
requirements
Question?
Thank You!
Website: www.ipophil.gov.ph