Daniel Closa et al.: "Patent Law for Computer Scient...

• Mr Daniel Closa studied in France and worked for Thomson until 1987, when he joined the EPO as an examiner in Berlin. He later transferred to Munich, gaining experience in various technical fields in the electronics area.
• Mr Alex Gardiner studied engineering at Aberdeen University in the UK. He joined the EPO in Munich in 1990. In 1997 he moved to the EPO in The Hague and there faced the rapid increase in business method applications. He developed new working practices and procedures at the EPO in related matters and trained examiners at all EPO sites accordingly. He returned to Munich in 2007.
• Mr Falk Giemsa studied computer science at LMU in Munich, Germany. He joined the EPO as an examiner in 2002 and works in the fields of business methods and educational and demonstration appliances.
• Mr Jörg Machek is a physicist, he received a Diploma from Vienna University of Technology, Austria, and a PhD from Brunel University, UK. After six years in manufacturing and semiconductor devices research, he joined the EPO in 1986. He is a director in charge of searching and examining computer-implemented inventions and methods for doing business.

The book starts with an introductory chapter including a short history of patents, a discussion of 'software' patents in general, a description of other Intellectual Property rights, and a discussion of some spectacular patent cases in the software field. This introduction is augmented by a comparison of the rules before the U.S. Patent and Trademark Office, the Japanese Patent Office, and the European Patent Office, respectively.

The main part of the book discusses patenting of computer implemented inventions (CII) based on sets of fictional examples of claims in a number of different fields:

• Business Methods;
• Administrative Methods;
• Digital Rights Management;
• Database and Database Management System,
• Billing and Payment;
• Graphical User Interfaces;
• Simulation;
• Games;
• E-Learning;
• Medical Informatics; and
• Mathematical Methods.

In a third part, relevant case law of the EPO Boards of Appeal is briefly cited.

For a patent professional the facts as presented in the book are not new. However, they have rarely been collected systematically in a structure guided by technical domains. And, the book presents a body of insider knowledge - all of the authors present their views as part of the examining practice of the EPO. And, neither the EPO examining divisions nor the EPO Boards of Appeal do offer any closed doctrine explaining their understanding of the concept of 'technicality' in the context of patents. Hence, I find this book useful for patent professionals who are interested in the field of patenting of computer-implemented inventions because of it gives, technical domain by technical domain, a rough idea as to how real patent Examiners working at EPO do think about certain types of claims in the respective technical fields.

I do have, however, some problems with the title of the book insofar it promises to give explanations specifically to Computer Scientists. Despite a tour-de-force through the history of patent law offered by the book I am somewhat afraid that the average computer scientist, freshly graduated from some University and never before confronted with patent matters, might not be able to get the point when reading the book.

The authors are absolutely right with their approach to discuss problems of patenting computer-implemented inventions by analysing patent claims.

However, one has to learn how to read patent claims before such discussions can really be understood.

If I were going to write such sort of book I strongly would consider to enclose some sort of lengthy chapter on patent claims, how to draft them in general, their interpretation at the patent office and, in particular, by a court in an infringement matter.

The book as it is printed for now should have been titled "Patent law for Computer Scientists with Basic Knowledge of Patent Law".

To summerise up, I really can recommend reading of the book for patent professionals as well as for semi-professionals who are able to read and understand patent claims and who are interested in gaining insights from a compilation of fictional cases written from a perspective of absolute insiders.

It might well be that e.g. senior computer scientists who have prior experiences with the patent system due to their involvement in some earlier patent applications in which they were named as inventors will have a fair chance to gain additional insights from reading the book.

And, finally there might be another targeted group of potential readers: There are critics of the patent system in general and of the current EPO practice of granting patents on computer-implemented inventions out there who perhaps never have understood how exactly the practice of the EPO actually works in detail. Nobody expects them to be turned by 180 degrees after having read the book but their critics might get improved by being earthed in some deeper knowledge of the inner workings of the EPO.

P.S.: See also this review by IPKat.