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The mathematics of patent claim analysis

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Abstract

In patent law most of the crucial legal questions such as patentability and infringement are linked to the patent claims. The European Patent Office regards patent claims as a set of independent features which are examined separately in a more or less formal way. The author has found that this approach allows for developing a simple mathematical model which treats patent claim features as logical statements and patent claims as compound statements wherein the individual statements are connected by logical connectives. The proposed mathematical model provides a uniform system for examining various legal questions that are dealt with separately under current case law, moreover, it allows for developing an expert system for resolving complex legal situations and for automating the evaluation of a large number of patent claim variants that is currently not possible.

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Notes

  1. Convention on the Grant of European Patents (European Patent Convention) of 5 October 1973 as revised by the Act revising Article 63 EPC of 17 December 1991 and the Act revising the EPC of 29 November 2000.

  2. Decisions of the technical Boards of Appeal are denoted by the letter T followed by the case number and the date of the appeal (e.g. T411/98).

  3. Decisions of the Enlarged Board of Appeal ensures uniform application of the law. The decisions are denoted by the letter G followed by the case number and the date of the appeal (e.g. G2/98).

  4. Guidelines for Examination in the European Patent Office, Published by the European Patent Office, Directorate Patent Law 5.2.1, D-80298 Munich (hereinafter: GL).

  5. Ferrimagnet being another type of permanent magnet.

  6. See e.g. decision G2/98.

  7. A \( \wedge \) B stands for \( \neg \) [(\( \neg \)A) \( \vee \) (\( \neg \)B)]; A xor B stands for (A \( \wedge \) \( \neg \)B) \( \vee \) (\( \neg \)A \( \wedge\) B). See Kristóf (1998).

  8. It is important to point out that the extension of the truth assignment, i.e. the evaluation function b′ is well-defined, which means that that any truth assignment which assigns true or false to every possible atomic proposition has only one extension.

  9. See definition of derived logical operators, supra note 7.

  10. This is called the "problem-and-solution approach". See GL C-IV, 11.7.

  11. For a decision model of inventive step see: Kacsuk (2010a).

  12. C is a basic statement as long as it is not compared to a "more" basic statement such as C1.

  13. Note that for any objections of non-obviousness PRA has to belong to the public state of the art as explained in Sect. 1, which may require the assessment of right to priority, if the examined European patent has an earlier priority date than the publication date of PRA.

  14. Note that the latter need not be formulated as a patent claim.

  15. Note that potentially inclusive OR could be used just as well since the authority will never find that a feature satisfies both conditions at the same time—exclusive OR and inclusive OR differ only if both sub-statements are true at the same time. See Tables 1 and 2.

  16. The scope of protection must not embrace any existing solutions of the state of the art as that would be detrimental to third parties.

  17. See GL C-IV, 9.5.

  18. According to the first-to-file principle whoever is the first to file a patent application in respect of an invention gains the right to obtain patent protection irrespective of whether anyone else has already invented the same invention (provided the earlier invention has not yet been made public).

  19. The European patent system applies two kinds of priorities: one is defined by the EPC, while the other system is regulated by the Patent Corporation Treaty (for a comparison of the two systems see Kacsuk 2010c). However, case law has established uniform interpretation for both regimes, see decision T 301/87, affirmed by decisions G3/93 and G2/98.

  20. Art. 88(2) EPC states: "Where appropriate multiple priorities may be claimed for any one claim."

  21. "(…) where a first priority document discloses a feature A, and a second priority document discloses a feature B for use as an alternative to feature A, then a claim directed to A or B can enjoy the first priority for part A of the claim and the second priority for part B of the claim. It is further suggested that these two priorities may also be claimed for a claim directed to C, if the feature C, either in the form of a generic term or formula, or otherwise, encompasses feature A as well as feature B". (G2/98, Reasons of the decision, point 6.7).

  22. See Guidelines for Examination in the European Patent Office: Part A, Guidelines for Formalities Examination (see supra note 4).

  23. See Guidelines for Examination in the European Patent Office: Part B, Guidelines for Search (see supra note 4).

  24. See Guidelines for Examination in the European Patent Office: Part B, Guidelines for Substantive Examination (see supra note 4).

  25. See website of the EPO: http://www.epo.org/applying/online-services/online-filing/download.html.

  26. See website of the PATExpert project: http://recerca.upf.edu/patexpert/.

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  1. KacsukPatent European Patent and Trademark Attorneys, PO Box 64, 1555, Budapest, Hungary

    Zsófia Kacsuk

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  1. Zsófia Kacsuk
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Kacsuk, Z. The mathematics of patent claim analysis. Artif Intell Law 19, 263–289 (2011). https://doi.org/10.1007/s10506-011-9107-2

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