Software Patent Eligibility Practice At The EPO – Intellectual Property

In common with many patent offices around the world, some
inventions that are implemented in software may be patented before
the EPO.

In this chapter, we explore software patentability covering why
only some software inventions are patentable before the EPO, the
requirements for an invention to be patentable and how patent
practice before the EPO with respect to software inventions may
evolve in the future.

EPC

The European Patent Convention (EPC) is the statute under which
the EPO operates to determine the grant of European patents. The
EPC defines that European patents will be granted in all fields of
technology, but excludes a specific list of subject matter from
being considered as inventions, which includes, inter
alia, mathematical methods, methods for doing business and
computer programs. These exceptions from patentability have been
described as relating to activities that do not aim at any direct
technical result but rather are of an abstract and intellectual
character. The exceptions from patentability are, however, limited
in scope in that they relate only to “such subject-matter or
activities as such”.

Technical character is a requirement of an invention under the
EPC, which was previously only implicitly required but is now
explicitly mentioned in Article 52(1). To determine the
patentability of an invention, particularly one that may relate to
computer software, the EPO applies a two-hurdle approach. The first
hurdle is to assess whether a claim relates to a non-invention
falling within one or more of the list of excluded subject matters.
The second hurdle involves consideration of whether the remaining
requirements for a patentable invention are met, particularly that
the invention is novel and has an inventive step. Therefore, only
claimed subject matter having a technical character can be
considered an invention, and to be a patentable invention it must
also be novel and have an inventive step.

Alice test

Here we see a parallel with US patent practice where there are
also two patent eligibility hurdles to overcome, known as the
‘Alice test’. Here, the first hurdle is a test of
whether the claimed invention is directed to a patent ineligible
concept. A patent ineligible concept is one that is considered an
abstract idea, as determined by the US Supreme Court. If so, to
then avoid rejection, there must be some elements of the claim
relating to an inventive concept sufficient to ‘transform’
the abstract idea into one relating to a patent-eligible invention.
The inventive concept must be more than a recitation of a
well-understood, routine, conventional activity. On the face of it,
therefore, merely reciting in a claim generic computer features or
activities (eg, processing or receiving) will be insufficient to
transform the claim from one that is considered abstract to
patent-eligible subject-matter. In comparison with the EPO’s
two tests, the first differs between EPO and US practice in that
under EPO practice it is considered whether the claim as a whole
avoids the exclusion to computer software as such, whereas at the
USPTO it is assessed whether the claimed invention is patent
ineligible. However, the second tests under both systems have more
in common, since both look for matter that is more than routine.
The test for eligibility under US practice is separate from
consideration of novelty and inventive step, although some cases do
recognise some overlap between these requirements, whereas under
EPO practice an inventive step over the prior art is provided only
by the matter having technical character.

EPO tests

At the EPO, every patent application is also examined with
respect to novelty and inventive step, among other requirements.
The EPO’s inventive step requirement corresponds to the
USPTO’s requirement for non-obviousness. However, the inventive
step requirement differs in some aspects from the non-obviousness
requirement.

The first hurdle to overcome before the EPO is also a form of
eligibility test, but one with a relatively low bar, only excluding
subject matter that is entirely devoid of any technical character.
A claim that includes any technical means is said to clear the
first hurdle to be considered as an invention. This test is often
referred to as the ‘any hardware’ or ‘any technical
means’ approach. This determination is made without reference
to the prior art. Therefore, a first step to considering whether a
claim is likely to be patentable before the EPO is to assess
whether the claim recites a technical entity, particularly
hardware. In practice it can be surprising how many claims,
particularly method claims, can be found at the initial prosecution
stage, which on close inspection do not actually refer to any
hardware whatsoever. One relatively easy way of ensuring that the
first hurdle is cleared can be to recite “a computer
implemented method”. In other words, if any hardware (eg, a
computer, storage or microprocessor, among other things) is
mentioned in the claim, it will pass the first hurdle.

At the second hurdle, the requirement for an inventive step over
the prior art is examined. The examination for inventive step is
simultaneously subject to a limitation that only aspects of the
claimed invention that are technical can be considered. In other
words, any matter in the claim that is not considered technical
cannot give rise to an inventive step over the prior art.
Therefore, at the EPO, the test whether the claimed subject matter
fulfils the requirement of ‘technicality’ is assessed
simultaneously with the evaluation of whether the subject matter of
the patent application has an inventive step.

Problem-solution approach

The EPO has developed a special process for assessing inventive
step, known as the ‘problem-solution approach. The
problem-solution approach was modified by the EPO for assessing
‘computer implemented inventions’ (CIIs), which is the term
used by the EPO for inventions that are usually realised by means
of software and are colloquially called ‘software
patents’.

Under the modified problem-solution approach, features of the
claim under examination are assessed as to whether they contribute
to the solution of a technical problem. Only features of the
claimed invention are considered that provide such a technical
contribution. In some ‘mixed type’ inventions, being a mix
of technical and non-technical claim elements, features can be
considered that are non-technical, such as pure software steps, but
only if they are said provide a contribution to the formulation of
the technical problem solved by the invention.

CII case law

During its existence, the EPO has twice reviewed its case law
relating to CIIs in the form of decisions of its Enlarged Board of
Appeal. The first decision (G 03/08) from 2010 contains an overview
of previous case law on CIIs, which confirmed the two-hurdle test
and made no changes to the EPO’s approach going forward.

The second decision of the Enlarged Board (G 01/19) was issued
in 2021 and concerns the patenting of computer-aided simulations.
On the one hand, the principles of the first decision were
confirmed and, on the other hand, specific comments were made on
the legal problems that arise when patenting computer-aided
simulations.

Computer-implemented simulations use a numerical model that is
fed with input data and in turn produces data as an output
indicative of the result of the simulation. Therefore, only data is
processed without directly influencing the physical world. In this
sense, a computer-implemented simulation could be considered a
purely mathematical process. Mathematical methods as such are
excluded from patentability and it could be concluded that
computer-implemented simulations are, in principle, not
patentable.

In this decision, however, the Enlarged Board of Appeal came to
a different conclusion and stated that computer-implemented
simulations are not fundamentally excluded from patentability.
Instead computer-implemented simulations can be patented if they
relate to a technical invention according to the above
principles.

‘Technology’

The term ‘technology’ is not clearly defined either in
the EPC or case law. Rather, its definition is left open so as not
to exclude future technical developments from being patented.
However, one is to be guided by what is not technical, which is
excluded from patenting under the EPC (eg, mathematical methods,
methods for doing business and computer programs), which can be
illustrated with an example.

A mathematical solution of a differential equation is a
mathematical method and, as such, cannot be patented. However, if
the shape of a new antenna is described by this solution of the
differential equation and the properties of the antenna are thereby
improved, then the resulting antenna is patentable, since it is
undoubtedly a technical object. The essential step that led to the
invention was the solution of the differential equation. However,
it should also be recognised that this mathematical solution has a
technical effect when applied to antennas. There are many solutions
of differential equations that are unsuitable for antennas, but a
technical contribution is provided by the solution of this
differential equation as applied to an antenna. In the sense of
European patent law, this is also a technical contribution that can
be rewarded with patent protection if it is new and inventive.

This is a relatively simple example, which clearly shows the
difference between a pure mathematical method and technical subject
matter relating to a mathematical method. However, there are also
cases where it is much more difficult to draw the line as to
whether the matter is technical in the sense of European patent
practice.

In the board’s decision on computer-based simulations, an
earlier board decision relating to ‘1/f noise’ was
discussed in detail. The granted European patent arising from this
decision relating to 1/f noise defines the simulation of
1/f noise for optimising electrical circuits. Here too, a
mathematical procedure simulating 1/f noise is used to
optimise a technical object in the form of the electrical circuit.
Even if not every simulation automatically leads to a new design of
an electrical circuit, the technical contribution was judged to be
sufficient for the patent to be granted.

In its more recent decision, the Enlarged Board of Appeal
clarified the protection of computer-assisted simulations to the
effect that, on the one hand, the technical effect must be present
over the entire scope of protection for the claimed invention and,
on the other hand, the technical use of the simulation must be
defined in the patent claim, although it may also be only
implicitly present in the claim.

What does this mean for the 1/f noise example? Looking
at the parallel US patent (US 6,795,840 B1), the patent was granted
with a claim that was highly similar to the claim of the
corresponding European patent. However, the limitation to
electrical circuits is missing from the US claim. Here, a
“computer programmed to process a method of determining
sequences of random numbers of a 1/f noise” was
patented. The description of the US patent also states that the
simulation of the 1/f noise can also be used to predict
“events on the financial markets”.

According to the EPO case law, the US claim would likely be
considered a purely mathematical method and a business method as
such, both of which are excluded from being patented in Europe.

The claim of the US patent therefore contains no indication of a
technical use as required by the EPO’s Enlarged Board of
Appeal. Moreover, the scope of protection of the US patent claim
can be said to extend to applications in the financial sector,
which are not technical in nature under European practice. The US
patent claim is therefore not technical over its entire scope of
protection. The US patent would, therefore, be unlikely to be
granted by the EPO. The definition of the technical use, namely the
use for electronic circuits, is missing from the US claim.

Although this example contrasts one claim that is likely to be
unallowable before the EPO as not being technical over its entire
scope of protection, following the Enlarged Board of Appeal’s
decision it is expected that more objections will be raised by the
EPO against claims that are not technical over part of their scope.
As a result, applicants will need to reduce the scope of their
claimed protection during prosecution such that only technical
embodiments are covered by the claim.

United States and the EPO – granting CII patents

Further, from the above comparative example, the difference
between the granting of patents in the United States and at the EPO
relating to CIIs in particular is clear. The EPO has clear rules as
to how the technical content of an invention is to be examined.
This excludes the granting of patents for subject matter that
relates to, for example, purely mathematical methods or business
processes as such. In the United States, patents can, in some
cases, protect subject matter that is not technical in the sense of
European patent practice. Therefore, patents can sometimes be
obtained in the United States that are not grantable before the
EPO.

Recent US case law, however, increasingly calls on the software
in question to improve “computer functionality” (ie, it
improves computing speeds or reduces the amount of computing
resources required) or perform the computing tasks in an
unconventional way. This points in a similar direction to the
requirement that an invention must be technical.

Comment

Historically, at least, the patenting practice of software
patents in the United States is perhaps more generous than at the
EPO, but it is not so clear when the software is patent eligible.
The distinction between technical and non-technical inventions at
the EPO seems to be better defined and therefore clearer, which
provides applicants with more certainty prior to application.

Originally published by IAM’s Global Patent Prosecution
2022.

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