Earlier this year, IBM was granted a US patent entitled ‘Out-of-Office Electronic Mail Messaging System’. Since then, various sources have published articles appearing to be outraged that the patent was allowed. These articles seem to imply that IBM had obtained a patent for technology that has been well-known for a long time. Forbes claimed that the patented technology ‘has been a staple of office life for decades’, whilst Engadget simply stated ‘they patented OOO (Out-Of-Office)’.
In order for a patent to be granted, the invention defined in its claims is required to be new and non-obvious when compared to everything that was publicly available before the patent’s ‘priority date’. In this case, the patent’s priority date is 13 January 2010, and the background section of the patent explicitly refers to out-of-office being ‘an optional feature provided by many of the popular electronic mail systems’. Therefore, it is extremely unlikely that a patent examiner would overlook this acknowledgement of the existence of conventional out-of-office systems and proceed to grant a patent to cover such a conventional system regardless.
It is true that IBM’s invention does bear some similarities to conventional out-of-office systems. For instance, the claims define ‘a method for transmitting availability information in an electronic mail system’ in which a user provides a notification that they will be unavailable from a start date to an end date. However, it is quite normal for patent claims to refer to known technology upon which the invention seeks to add improvements.
The claims go on to specify the step of sending an email including availability information of a first user, if an email is received from another user before the start date specified by the first user. This feature provides at least one crucial difference over conventional out-of-office systems, which typically react only to emails sent after the start date. Therefore, the patented invention is more specific than the standard out-of-office feature built into applications such as Microsoft Outlook.
The next thing to consider is whether IBM’s invention is different enough in comparison to known out-of-office systems, so that the invention can be thought of as ‘non-obvious’. When the Electronic Frontier Foundation (EFF) picked up on the patent, they described the differences as ‘trivial’ and similar to ‘asking for a patent on the idea of sending a postcard, not from a vacation, but to let someone know you will go on a vacation’. On one hand, the EFF might consider it undesirable for patents to be valid based on ‘trivial’ differences. On the other hand, third parties may be able to avoid infringement by omitting these ‘trivial’ features if they sought to produce a similar system.
Subjectively, IBM’s invention may seem obvious to software developers in 2017 – over seven years since the invention was created. However, the legal question of whether something is ‘obvious’ is supposed to be viewed objectively at the priority date of the patent in question. This question is asked from the perspective of a person incapable of inventive activity (referred to in patent law as the ‘skilled person’).
The EFF’s reaction to this patent demonstrates that people’s perception of what is obvious can be quite different to the legal threshold used to assess patent applications. Sometimes this perception can be lead to inventors dismissing their developments as being unpatentable, when patent protection may well be possible.
IBM’s patent highlights the distinction between the US and the European approaches towards software inventions. In order for a software invention to be patentable in the US, the invention is required to be ‘significantly more than an abstract idea’. On the other hand, in Europe software inventions are required to provide a ‘technical solution to a technical problem’.
On the face of it, IBM’s idea of providing a user’s availability information before that user becomes unavailable may seem abstract. However, the description and claims of IBM’s patent contain a lot of specific technical language and detail relating to how the messaging system would be implemented. This appears to have kept the patent application safe from objections under the new US rules regarding the patentability of software.
If an application for this patent were filed at the European Patent Office, it is likely that a European examiner would take a particularly negative view of the application . The patent’s description fails to provide any explicit indication that the invention provides a ‘technical’ advantage. Instead, the Examiner would assume that the invention provides a solution to the administrative issue of managing employee availability. Therefore, it would be hard for IBM to argue that this invention is patentable in Europe.
In contrast, if the patent had been filed with a detailed explanation of any technical problems that the invention solves, the patent may have a higher likelihood of success. For instance, the patent could have mentioned how the invention can reduce message traffic by preemptively making others aware of a recipients’ availability.
In light of this, it is always important to highlight the technical advantages of software inventions when seeking protection for them in Europe.