IPAB’s Yahoo Order: Analysis- I

This post continues from the last post on the IPAB order on Yahoo's patent application.
Brief Facts

Title of the Invention: System and Method for influencing a position on a search result listing generated by a computer network search engine

Date of Filing: May 12, 2004 (with a priority date of May 28, 1999 from a US application)

Date of Issuance of FER: December 30, 2004

I haven’t been able to lay my hands on the complete specification, but from what I could glean from the order, the invention apparently relates to “competitive bidding”. The Patent Office raised 17 objections in the FER, of which the primary objections were:

A. Ineligibility of subject-matter under Section 3(k) of the Patents Act

B. Insufficient distinctiveness of Claims 62 and 63

To meet the objections, the applicant submitted new set of claims, which among other things, included “technical subject-matter” to overcome the 3(k) objection. However, objections were raised again citing raising Section 3(k) and lack of novelty. To this the applicant responded by deleting 25 “apparatus claims”.

It appears that on June 9, 2006, the Patent Office found the application in order for grant. Unfortunately for the applicant, a pre-grant opposition was filed on October 22, 2007 which was decided against the applicant on March 30, 2009. The pre-grant rejection was based on ineligibility of subject-matter and lack of novelty (anticipation).

The applicant appealed to the IPAB against the pre-grant rejection.

Novelty

Two prior art documents were cited against the applicant on the issue of novelty. The first was an article titled “Search Engine Report” by Danny Sullivan (referred to as D9 in the order) and the second was a copy of Frequently Asked Questions (FAQs) from the applicant’s own website (referred to as D10).

The Sullivan article basically describes a method of getting better placements in the results lists of search engines, which involves payment by the entity seeking better placements. The higher the payment/bid, the better is the placement in the search results. The placement of searches is done by entities/sites which function as referral sites for an entity which seeks more eyeballs.

For instance, GoTo.com could act as a referral site for Reliance and ensure that search results relating to Reliance are placed better, subject to the payment of a certain fee by Reliance for every successful click.

In the pre-grant proceedings, the above-described Sullivan article was deemed as anticipating the application of the applicant. However, this finding was arrived at by the Controller after having discarded certain features claimed in the patent application. The features were discarded on grounds that they did not constitute “technical subject matter” and were hence ineligible.

The IPAB took the view that when dealing with the issue of novelty, the Controller ought to have simply compared the features described in the Sullivan article with the features claimed in the patent application without looking into the issue of eligibility of claimed subject-matter. The IPAB therefore took the view that the Controller’s analysis with respect to the Sullivan article was flawed.

My Thoughts

The approach to novelty that the IPAB seems to advocate raises an important question, which was dealt with in the much-discussed Symbian v. Controller of Patents decision, which I had discussed elsewhere quite some time ago. The question that must be asked is as follows:

In ascertaining novelty, must the claimed invention be compared as it is with prior art? Or must only eligible/patentable subject matter be compared with prior art?

The Controller excluded non-technical subject matter before evaluating the invention for novelty against the prior art. On the other hand, the IPAB took the view that the entire invention must be compared with prior art without filtering the claim for ineligible subject-matter.

The Aerotel test (in the UK) requires identification of actual contribution made, and examination of its eligibility as patentable subject-matter as the primary step in scrutinizing a patent. To me, this makes sense because criteria such as novelty, non-obviousness and industrial applicability are to be touched upon only after eligibility is satisfied in the first place.

Eligibility is the primary threshold which must be surmounted before requisite standards of novelty and non-obviousness are met with. The analysis of the contribution of an invention to the state of art is strictly restricted only to those aspects of the invention which fall within the scope of permissible/patentable/eligible subject-matter.

Therefore, was it incorrect on the Controller’s part to exclude non-technical/ineligible subject-matter from the claimed invention, before evaluating it for novelty? I don’t think so...

Consequently, I do not agree with the IPAB’s approach to novelty, assuming that the result was ultimately the right one.

More to come in the next post.