Tendințe noi de apreciere a pasului inventiv. Cauza Ficep Corporation vs. Peddinghaus Corporation
New trends in appreciation of the inventive step. Case Ficep Corporation vs. Peddinghaus Corporation

Summary/Abstract: The world is changing, the vision of what is new and inventive takes on extremely demanding values. Throughout history, from the industrial revolution to the present, from the Americas to Europe and Asia, the patentability of computer-aided inventions remains controversial. The major challenge remains to determine exactly the new and inventive part and to individualize it and separate it from simple automation. Furthermore, it is the criteria for judging newness and inventiveness that can make the difference. A historic decision, coming from the land of all patents/possibilities, changes the rule in computer software patenting. After a period of several decades in which notable steps have been taken to patent software under certain conditions, often with the conclusion that the very result of associating a computer program with mechanical equipment produces a new and inventive result, here is a new definition of the notion of inventiveness, surprising especially since it comes from a patent system recognized as very permissive, that of the USA. A historical analysis of patentability itself, in a current reinterpretation, concludes that simply automating a process, and thereby obtaining significant benefits that come from automation, does not provide an inventive concept. Prior practice, principally the Alice case, has become an objective benchmark for assessing inventive step. If a claim is directed to an abstract idea, then step two of the Alice framework requires a court to evaluate „what else is in the claims” by considering „the elements of each claim both individually” and „as an ordered combination” to determine whether the additional elements „transform the nature of the claim” into a patent-eligible application. The assessment is carried out in two essential stages: in the first stage, an examination of the abstract nature of the invention is required. The category of „abstract ideas” embodies „the longstanding rule that an idea by itself is not patentable”. In the next, more complex step, the „limitations of the claims are examined to determine whether they contain an `inventive concept` to `transform` the claimed abstract idea into patent-eligible subject matter”. A claim declaring an abstract idea must include „additional features” to ensure „that [the claim] is more than a drafting effort intended to monopolize the abstract idea”. These „additional features” must be more than a „conventional, routine, well-understood activity”. Neither „a mere instruction to apply an abstract idea to a computer” nor „a claim of improved speed or efficiency inherent in the application of the abstract idea to a computer” satisfies the requirement of an „inventive concept”. On the one hand, if a statement simply takes an abstract idea (say, something people have done for a long time) and does nothing more than use a generic computer to realize the abstract idea faster or more accurately than it would could a human (the kind of „conventional” function any computer can perform), then the claim is ineligible. Some inventions that „automate tasks that humans are capable of” are patent-eligible if properly claimed. The specification indicates that prior to the patented invention, to complete the manufacturing process of a structure or device based on a CAD model, a human operator typically had to manually program the production machines associated with an assembly line.

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