My friend is the creator and vendor of a web content filtering software. His clients are ISPs who then offer this service to their customers. Recently his clients received a very threatening "cease and desist" letter from another ISP, operating in the same space, claiming that he is using technology patented by them.

Understandably, this creates an extremely stressful situation for him, endangering his livelihood, etc.

The patent in question is IL225819A. English language patent details, Claims, Sketches.

To quote from the first claim:

1. A method for on- line filtering a presentation comprising:

a) identifying a structure in the presentation;

b) detecting an undesired content in said structure;

c) determining a domination of said structure by said undesired content, and

d) disabling a portion of said structure according to a result of said determining.

According to my understanding of the text, they seem to be patenting a technique that any mediocre software developer would come up with after 2 minutes of thought. Additionally, they seem to be patenting something that is already widely done e.g. by ad-blockers. I am wondering what the validity of such a patent claim is.

Does anyone see the "Inventive step and non-obviousness" of this technique?

Edit: Naturally, I definitely will not act based solely on advice from the internet, I am however interested in opinions as to whether a software patent such as this is to be regarded as the actions of a patent troll and be fought against. Can anyone weigh in with examples of similarly simple software techniques that have nevertheless been upheld by courts (anywhere worldwide)? Is this patent relying upon the fact that nobody in the patent office seems to have much familiarity with web development? Or am I misunderstanding the world of software patents?

  • What country are we dealing with? – Eric S Feb 17 '19 at 0:18
  • It appears that patent has been granted in US and Israel only, from which jurisdiction did your friend recieve the letter. – RishiM Feb 17 '19 at 1:46
  • Israel. However I specifically left the country open since I would like to get a feel for what would count as an "inventive step" in any country. Would there be sufficient grounds to contest this patent as being an insufficient "inventive step" in any country? – yossizahn Feb 17 '19 at 6:59
  • An Israeli patent only applies to Israel any not any other country. – Eric S Feb 17 '19 at 15:47
  • @EricShain, I am seeking more general enlightenment as to why this patent may be considered by anyone a sufficient "inventive step". This question intentionally wasn't asked in respect to any specific country's laws. – yossizahn Feb 17 '19 at 17:03

Like any patent, one has to study the claims to know what is protected by the patent. In the case of the linked Israeli patent, I can't read the patent so there is no way to comment on the claims.

As to patentability in general, a patent needs to be novel, non-obvious and useful. Novel means no one has publicly described the invention in the past. Non-obvious means it isn't something someone skilled in the field would find straightforward to do. That said, one really has to study a patent's claims before deciding it is obvious. Many people read the abstract and decide that a patent is covering the world only to find that the claims are exceedingly narrow.

I did a search for patents by the two listed inventors and did find a US patent with the same title: US9529896B2. The first claim on this patent is:

  1. A method for on-line filtering of undesired content from a presentation built from a source code and for displaying the filtered presentation to a user comprising:

    a) identifying a plurality of structures and a plurality of substructures of at least one structure of said plurality of structures in the source code; said at least one structure having a beginning marked by a first marker and an end marked by a second marker; each substructure of said plurality of substructure having a respective beginning marker and wherein each said respective beginning marker is located between said first marker and said second marker and wherein each of said plurality substructures beginning with said respective beginning marker ends with a respective end marker;

    b) detecting the undesired content in said plurality of substructures;

    c) determining at least one substructure dominated by said undesired content;

    d) disabling said at least one substructure according to said determining; said disabling resulting in a a sanitized structure, without the undesired content;

    e) removing said sanitized structure from said presentation when said sanitized structure does not correspond to said structure such that displaying said sanitized structure in the presentation would make the user aware of said disabling and arouse a curiosity of the user of said presentation towards a said undesired content;

    f) sending said source code including an outcome of said disabling and said removing; to an output device for rebuilding and display to the user;

    g) performing a first action when a combination of a first word and a second word is detected between said respective beginning marker and said respective end marker of a single substructure of said plurality of substructures: and

    h) performing a second action different from said first action and when first word is in said single substructure and said second word is not in said single structure and said second word is in another substructure of said plurality of substructures.

Now this claim as well as the other independent claim (7) is fairly long. Remember, to infringing a claim, you need to implement each and every step within a claim. At this point, you've received the "cease and desist" letter so you really shouldn't just decide to ignore it based on advice from the internet. After all, I don't know what you've implemented in your code, I'm not particularly skilled in this field and even if I were, I am not a lawyer. I sincerely suggest you consult with a patent attorney.

  • @yossizahn the claim granted in US is narrow when compared to the claim of IL, please look into the prosecution history of Israel patent at following link ilpatsearch.justice.gov.il/UI/RequestDetails.aspx?ReqId=225819 most of the data is in Hebrew, so I could not interpret which prior art is considered in evaluating inventive step . – RishiM Feb 18 '19 at 6:49
  • @EricShain, I have updated the question with links to the (English language) Israeli patent. You will notice that it is considerably broader than the US version. – yossizahn Feb 18 '19 at 7:56
  • @RishiM_IPR, Even considering the narrower claims of the US patent, it seems to me - as someone familiar with web development - that it is a very vague and long-winded way of describing exceedingly simple and basic techniques, certainly not worthy of being called an "invention". Do I misunderstand the "inventive step" required for a patent? – yossizahn Feb 18 '19 at 8:21
  • @yossizahn The patent on current date may not look like an invention but, could that be called an invention at priorty date ?? i.e., at june 2011 could that web filter be designed by ordinary programmer. If the same filter could be designed by any programmer with ordinary skill on that date of priority then there is no inventive step. More over it appears there is an application for revocation of patent at IL office. – RishiM Feb 18 '19 at 10:28
  • @RishiM_IPR "at june 2011 could that web filter be designed by ordinary programmer" I think that it most certainly could have been. "More over it appears there is an application for revocation of patent at IL office" I am aware of this, but am not in contact with the lawyers involved. Is there any stipulation that requires the examiner responsible for granting patent to have a previous familiarity with the subject matter of the patent (web development, in this case)? – yossizahn Feb 18 '19 at 11:25

This answer is purely about inventive step in general:

Let's take claim 1 from the question as an example: (please note: I didn't read the specification so this is purely based on the wording of the claim, it might not concur with the correct interpretation of the actual patent claim which needs to be interpreted in light of the specification!)

  1. A method for on- line filtering a presentation comprising:

a) identifying a structure in the presentation;

b) detecting an undesired content in said structure;

c) determining a domination of said structure by said undesired content, and

d) disabling a portion of said structure according to a result of said determining.

Now, suppose you have as prior art the html sanitization you mentioned in a comment. According to my understanding, html sanitization does the following:

  • Identify bad html tags (e.g. <embed>) and their endings (e.g. </embed>).

  • remove the tags and their content.

So, what does that mean for claim 1 above?

We seem to fulfill a) by identifying a structure starting and ending with html tags.

We also seem to fulfill d) by removing the structure completly because "completly" is also "a portion". However, completly is only a small subset of "a portion", so there might be an easy way of getting around some prior art like that by amending the claim to say "a portion less than 100%" or something like that. It might even be that it says "a portion is less than 100% of the structure" in the description, invalidating this prior art.

But suppose we actually fulfill steps a) and d) completly. Then the prior art "html sanitization" is not destroying novelty because it does not teach all the elements from the claim (namely: b) and c) are missing).

So, inventive step. We need another document that allows the person skilled in the art to reach the invention.

I'll make one up. Suppose we have a publication about identifying ads in html code. It identifies html structs like <embed> </embed>, searches the content for words like viagra (greetings to the spam detecting bots at SE ;)) and determines if the structure is mainly filled with said undesired content by, say, language analysis. It then determines that the structure is an ad.

This reference teaches a), b) and c). It identifies a structure (html tags), detects an undesired content ("viagra") and determines domination of the structure by said content (checks if the text in the structure relates mainly to viagra).

Combining the references the person skilled in the art could see the advantage of removing html tags with a greater precision by detecting if they contain ads. The person skilled in the art could then reach the invention by combining the two documents, meaning the claim is not inventive over the prior art.

Disclaimer: One could argue against that by saying that html sanitization and ad blocking don't serve the same goal because removing all possibly problematic structures is more secure than removing only some so the person skilled in the art wouldn't combine the references. That argument might or might not be enough to prove inventive step, but it would at least pose some danger to the argumentation. So this isn't a clear cut case.

The above used goes d'accord with pretty much all standard methods for determing (missing) inventive step in the US, Europe and many other places. You need two combinable documents teaching every single step in a method or every single limitation in a system.

You can also use basic knowledge of a person skilled in the art (e.g. web developer), but you need to prove that knowledge. So if you have a textbook saying "Identified ads should be removed from a html site for user convenience." (step d)) you might use that to say my made-up source (steps a) - c)) in combination with the knowledge of the person skilled in the art leads to the claimed method making it obvious / non inventive.

  • 1
    @dovid not at all, you can just remove every single instance of <embed>. In that case the structure would be "undesired", making no assumption about it's content. I assumed step c) would be something like trying to remove only the innermost elements of the html tree, not all elements containing ads (which would be easiest achieved by removing the complete page) for example. – DonQuiKong Feb 19 '19 at 14:18
  • 1
    @dovid if you say the "structure" is the html tree and the "undesired content" is the html tag <embed>, then you would be fulfilling steps a), b), d) of the method by html sanitization because you are detecting unwanted content in a structure and removing a portion of that structure. Which I didn't think of previously. However, that's exactly why one needs to read the specification. It might be a valid interpretation, it might be an invalid interpretation. This answer is supposed to show how inventive step works, not to be an actual evaluation of the patent or the prior art. – DonQuiKong Feb 19 '19 at 14:22
  • 1
    @yossizahn Think about it the other way around - suppose the patent holds as inventive because it was actually the first adblocker working that way. If it was so obvious, why didn't anyone else do it before that? In hindsight, isn't any programming exercise "obvious" after you have the solution? There is no program someone else couldn't come up with after knowing exactly what it does and how it works. You get a patent for beeing the first one to think of (or at least describe) something. If it isn't viable, the market won't care about the patent. And if it is, you did invent something useful – DonQuiKong Feb 21 '19 at 14:04
  • 1
    @yossizahn that's not quite how it works. Let's look at the last program I wrote. 3D knapsack thingy for packages. Whatever, but it works by slicing the volume, doing a whole lot of assumptions, which in that combination nobody else has done, and getting a solution as a result. Patentable? Maybe. But what would that patent be? Knapsack by slicing volume? nah, that's known. Knapsack by slicing volume and x, y, z as assumptions? Maybe. But that would be trivially easy to circumvent too. Just change assumption z to assumption z1. The scope of the patent corresponds to the size of the invention. – DonQuiKong Feb 21 '19 at 14:18
  • 1
    @yossizahn findig a problem nobody has thought of is an invention too. Defining the problem often yields the solution. But ex post, after the fact. However, finding the problem, which in this case was a really lucrative one, wasn't obvious. – DonQuiKong Feb 21 '19 at 20:58

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.