This article is updated regularly. Last update: 8 July 2020
This video is a 30-minutes walkthrough of the European Patent Office’s “two hurdle” approach for assessing software patent applications. The talk covers some facts and statistics about the European patent system (0:00 to 7:24), an overview of the patentability framework for software patents (7:25 to 15:14), and lots of examples (15:15 to 28:00):
The legal basis for software patents in the EPC
The basic patentability requirements for any kind of invention at the European Patent Office, including software-based innovations, are laid down in Art. 52(1) EPC:
European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.Art. 52(1) EPC
The EPC does not include a fixed definition of the term “technology“. For a good reason: Technology constantly evolves and the legal framework should be flexible enough to adapt to new developments.
But there is a list of items in Art. 52(2) EPC that are considered not to be inventions in a field of technology. The common denominator of these items is that they are all rather abstract things, i.e. they are in themselves non-technical:
- discoveries, scientific theories and mathematical methods
- aesthetic creations (those are subject to design protection)
- schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers
- presentations of information
But to make it even more complicated, these items are only excluded from patentability if they are claimed “as such” according to Art. 52(3) EPC.
Over the years, however, the Boards of Appeal of the European Patent Office have created a stable and reliable framework for implementing these complicated legal provisions. The so-called “two hurdle” approach.
The “two hurdle” approach for software patent applications
Practically speaking, any European software patent has to overcome two hurdles:
- Patent-eligibility: a single technical feature in the patent claim is enough
- Inventive step: only the technical features can establish non-obviousness
Besides these patentability criteria, there are also requirements on how to disclose and claim the invention. For example, Art. 83 EPC states that the patent application shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (somewhat similar to the “enablement” requirement in the US patent system).
The question what needs to be disclosed is particularly relevant in inventions that concern artificial intelligence (AI) and machine learning / deep learning. A recent decision of one of the EPO Boards of Appeal has made some interesting statements, the implications of which are discussed in this video:
Patent-eligibility of software patents: a non-issue
Unlike in the US, the European Patent Office has made the patent-eligibility hurdle only a very coarse filter. Its purpose it to filter out those inventions that are purely abstract and conceptual, without any involvement of technology whatsoever.
In fact, the only thing needed to overcome the first hurdle is a single technical feature in the patent claim.
Note that the patent-eligibility hurdle is an absolute hurdle. There is no comparison of the invention with the prior art allowed at this point. As a matter of fact, the (single) technical feature can even be a trivial one.
What does this mean for the different claim categories?
- Apparatus claims: Any apparatus claim which is directed to a physical entity is automatically patent-eligible, since it concerns a technical thing.
- Method claims: Already the wording “computer-implemented method” will do the trick. In this case, the method necessarily makes use of a computer (which is a technical thing) and thus the method is patent-eligible.
As you can see, the patent-eligibility hurdle is not relevant for software patent applications in practice. This is because any software is executable on a computer and thus it does not harm to include the word “computer” in the patent claim.
This so-called “any hardware” approach and the resulting low patent-eligibility hurdle was originally introduced in the landmark decision T 0258/03 (Auction method/HITACHI) and has been well-established ever since.
But doesn’t this open up the floodgates to all sorts of bogus software patents?
Not at all:
Inventive step: the decisive test for software patent applications
When assessing inventive step, the EPO examiner will compare the invention to the prior art and identify those novel features which distinguish from the closest prior art.
Importantly, from these novel features, only those that contribute to the solution of a technical problem are taken into account in the non-obvious assessment.
In other words, inventive step cannot be based on a non-technical delta between the invention and the prior art. Instead, it is only the technical contribution that is looked at.
Hence, in a nutshell please remember:
As you can see, in the end it really comes down to what the software actually does. If it performs a purely non-technical task, it cannot be patented at the European Patent Office. If it achieves a technical effect, i.e. solves a technical problem, in a non-obvious manner, it is patentable.
This pragmatic approach to software patentability was originally introduced in the landmark decision T 0641/00 (Two identities/COMVIK) and has been known since then as the so-called “Comvik approach“.
Control questions for a European software patent application
Here are three practical control questions for a preliminary assessment of the chances of success of a given software invention at the European Patent Office:
- Does the invention use technical means?
- Does the invention solve a technical problem, i.e. does it bring about a technical effect / advantage?
- Is the solution non-obvious in view of the prior art?
Who decides what is “technical”?
Of course, whether some software-based functionality is “technical” or not is easy to answer in extreme cases.
For example, embedded control software, e.g. for controlling the brakes of a car based on wheel sensor readings, clearly has a technical effect and thus provides the necessary technical contribution.
On the other hand, a software for forecasting stock market developments does not provide a technical contribution apart from being implemented on a computer.
But it gets complicated right in the middle of the spectrum. Here, the only thing that helps is a deep understanding of the case law of the Boards of Appeal of the European Patent Office to figure out how similar previous cases have been decided.
That’s what we want to achieve with the EUROPEAN SOFTWARE PATENT knowledge base. Feel invited to browse through the knowledge base for an ever-growing collection of examples of specific software inventions that have been found to be either technical or not.
More information on European software patents
If you have any questions, contact Bastian directly.
Bastian is a European patent attorney at BARDEHLE PAGENBERG. He specializes in software patents in Europe both from a prosecution and litigation point of view.