By: Dr. Justin Hill, Co-chair Patent Prosecution Group, Olswang LLP
In addition to the usual criteria of novelty, inventive step and industrial applicability, patentability at the European Patent Office (EPO) also requires technicality. The European Examiner’s hankering for a technical problem has led to interesting and reasonably predictable examination outcomes in circumstances where European patent claims contain purely technical features. However, claims with a mixture of technical and non-technical features, as often seen in the field of software, present interesting challenges.
The requirement for technicality is enshrined in the Articles of the European Patent Convention (EPC) (patents shall be granted for any inventions, in all fields of technology). Additionally, the Rules state that inventions should relate to a technical field and be disclosed in a manner which makes clear the technical problem they are addressing. Elsewhere the EPC provides a non-exhaustive list of things that are not regarded as inventions and these include, for example, mathematical methods, methods for performing mental acts, presentation of information, and programs for computers. Clearly, the functions performed by many software applications might be considered as overlapping to a greater or lesser degree with some of these excluded categories.
Examples made out in the EPO Guidelines and appeal board case law make pretty clear that computerising novel methods for performing various business and non-technical functions are unlikely to lead to grant of a European patent. These difficult areas include sales methods, trading, insurance schemes, order or stock management, job candidate selection, the “information content” of presentations, non-technical modelling systems, and mathematical methods, to name a few. Processing on a general purpose computer of non-physical data is also likely to present challenges, for example, monetary value is business data or pure text.
In practice, examination by the EPO usually proceeds with the so-called “two-hurdle approach”. The first hurdle is to determine whether the claim has any technical character. To pass this first hurdle is relatively easy outside the field of computer programs because it requires only the identification of a technical feature in the claim. For example, a method claim including the step of controlling a sensor to acquire data represents a type of interaction with the environment regarded as technical.
A computer program is required to bring about a “further technical effect”, something which goes beyond the normal physical interactions between code and the computer executing it. There has to be something more: e.g. a program achieving improved braking in a car; faster communication over the air interface; more secure data transmission; or improved resource allocation in an operating system. Reference to components for data processing, or data transmission is also usually sufficient to pass this first hurdle. However, the method claims, directed to the classification of data or speed enhancements typically associated with computerisation are not necessarily going to confer the necessary technicality.
The second hurdle is about using the problem and solution approach to determine whether or not the claim makes a non-obvious technical contribution over the prior art. This is in fact an implementation of the EPO’s inventive step test. The majority of failed computer implemented inventions and software related claims are in practice dispatched at this stage, rather than for lacking technicality per se. At the second hurdle finding technical subject matter distinguishing from the prior art is key, and so the nature and extent to which the prior art is related to what is claimed has a huge bearing on success at this hurdle.
Under the second hurdle’s problem-solution test, it is necessary to:
*Graphic provided from EPO Presentation, Examination Matters 2015, Nominoe Piriou and Tiago Pinheiro.
Clearly, whether or not a particular claim contains the required non-obvious contribution over the art is dependent entirely upon the case in question. Hence the EPO prefers not to try to provide a universally applicable definition of “technical” and instead prefers to assess inventive step on a case by case basis. Note non-technical subject matter in a claim is not a fatal flaw but that subject matter will not tend to be seen as contributing anything capable of patentably distinguishing the claim. Notorious prior art, such as the existence of a general purpose computer, will not need to be established by the Examiner.
When drafting patent specifications related to computer implemented inventions and software, it is therefore useful to carefully frame the technical effect in the specific description and include adequate “process” and “structural” implementation details that are relied upon to achieve the technical effect.