Getting your Software Patent in Europe

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The Enlarged Board of Appeal in the European Patent Convention is the highest judicial authority having the main task of uniform application of EPC. In one of the recent cases concerning the computer-implemented invention, the examining division refused the application on the reason of lack of inventive steps (European patent application 03793825.5). The applicant appealed to the Technical Board of Appeal which referred to the Enlarged Board of Appeal with three questions on the patentability of computer-implemented invention (G1/19). Article 52(2) EPC contains a non-exhaustive list of "non-inventions", i.e. subject matter which is not patentable because it is not technical. This list includes "programs for computers" (Article 52(2) (c) EPC). However, the exclusion from patentability is limited to "the subject matter or activities as such" (Article 52(3) EPC).

For the computer-implemented invention, the claim consists of both technical and non-technical features. Such mixed features involve an inventive step is something which the European Patent Office will assess using the COMVIK approach. This requires that only claim features contributing to the technical character of the invention are considered for the assessment of the inventive step. Features which, taken in isolation, are non-technical may, in the context of the claimed invention, nevertheless contribute to the technical solution of a technical problem, and thereby to the technical character of the invention (e.g. a computer program controlling the machine to prolong the life of that machine).

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What ahead with Software Patents?

The decision reiterated the importance of the COMVIK approach for computer-implemented inventions. The stricter approach that the EPO follows for the computer-implemented invention is primarily seen as something which should soften. The decision going the way towards the COMVIK approach was not able to make the process simpler. Previously, the Enlarged Board did not discuss whether the computer invention needs to directly link with physical reality or to have the potential effect. The present claim of G1/19 mentions that the technical use of such data "has to be at least implicitly specified in the claim".

Quoting section 98 of G1/19, it says, “data about a calculated technical effect is just data, which may be used, for example, to gain scientific knowledge about a technical or natural system, to make informed decisions on protective measures or even to achieve a technical effect. The broad scope of a claim concerning the calculation of technical information with no limitation to specific technical uses would therefore routinely raise concerns concerning the principle that the claimed subject-matter has to be a technical invention over substantially the whole scope of the claims”.

Concerning the technical use with regards to the computer-implemented inventions, some passages clarify its meaning. Section 128 of G1/19 speaks that "In the Enlarged Board's view, calculated numerical data reflecting the physical behavior of a system modeled in the computer usually cannot establish the technical character of an invention following the COMVIK approach, even if the calculated behavior adequately reflects the behavior of a real system underlying the simulation. Only in exceptional cases may such calculated effects be considered implied technical effects (for example, if the potential use of such data is limited to technical purposes)". While section 131of G1/19 speaks that "while improved weather forecasting can certainly not contribute to the technical character of an invention if the claim is directed to the forecasting of a value of a financial product, it probably can do so if the weather forecasting data is used, for example, to automatically open or close window shutters on a building". 

For a technical consideration of the computer's internal functioning, section 112 of G1/19 states that "an algorithm may be particularly suitable to be run on a computer in that its design was motivated by technical considerations relating to the internal functioning of the computer". Nevertheless, any such adaptation needs to be implicitly specified in the claims as specified in section 137 of G1/19.

An important section to quote here is section 99 of G1/19 concerning the output of the computer-implemented method, being not patentable, to which an exception is the measurement method which can be patentable. The section states that "The calculation of the physical state of an object (e.g. its temperature) is typically part of a measurement method. It is generally acknowledged that measurements have technical character since they are based on an interaction with physical reality at the outset of the measurement method. Measurements are often carried out using indirect measurements, for example, the measurement of a specific physical entity at a specific location by means of measurements of another physical entity and/or measurements at another location. Even though such indirect measurements may involve significant computing efforts, they are still related to physical reality and thus of a technical nature, regardless of what use is made of the results".

Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur).  In case of any queries please contact/write back Global Patent Filing us at support@globalpatentfiling.com.

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