11th Annual Patent Law Institute

Transcription

1 INTELLECTUAL PROPERTY Course Handbook Series Number G th Annual Patent Law Institute Co-Chairs Scott M. Alter Douglas R. Nemec John M. White To order this book, call (800) 260-4PLI or fax us at (800) Ask our Customer Service Department for PLI Order Number , Dept. BAV5. Practising Law Institute 1177 Avenue of the Americas New York, New York 10036

2 24 Patenting Computer-Implemented Inventions in Europe (January 12, 2017) Holm Schwarze Guardian IP Consulting If you find this article helpful, you can learn more about the subject by going to to view the on demand program or segment for which it was written. 733

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4 Europe offers multiple paths towards patent protection: Apart from European Patents issued by the European Patent Office (EPO), applicants may obtain national patents in the individual countries under their respective national laws. Several European countries also offer utility models as an alternative form of protection. The European patent has become the most popular choice of protection in Europe, since a European patent offers protection in 42 countries based on a single patent application. The legal framework for European patents, including the conditions to be met by a European patent and by the invention to be protected, is defined in the European Patent Convention (EPC) 1 which is separate and distinct from the national patent laws of the individual European countries. While there is some variation between the practice applied by the EPO under the EPC and the practice applied by national courts under the national laws of the respective European countries, the national patent laws are to a large extent aligned with the EPC, and both national courts and the EPO are generally minded to strive towards consistent rules across Europe. Therefore, when exploring the limits of patentable subject-matter in Europe, the European Patent Convention and the practice applied by the EPO are by far the most important sets of rules to be concerned with. The judicial bodies in charge of interpreting the EPC are the Boards of Appeal of the European Patent Office and, in particular, the Enlarged Board of Appeal. While the former deal with appeals against 1 st instance decisions in respect of specific cases, the latter is responsible for deciding on points of law referred to it by the Boards of Appeal and for giving opinions on points of law referred to it by the president of the EPO in case of divergences in case law. Therefore, the decisions by the Boards of Appeal regarding the interpretation of the patentability requirements defined by the EPC are the single most relevant source of guidance for practitioners when drafting and prosecuting patent applications within the field of computerimplemented inventions. Over the past 30 years, the Boards of Appeal have developed a body of case law defining the border between patentable subject-matter and subject-matter that is excluded from patentability within a variety of technical areas 2. In particular, the Boards of Appeal have frequently addressed the patentability of software and computer-implemented inventions, a field 1. European Patent Convention, 16th Edition, June 2016, published by the European Patent Office. 2. Case Law of the Boards of Appeal of the European Patent Office, 8th Edition, July 2016, published by the European Patent Office

5 which affects virtually all areas of modern life. The Internet of Things, robotic manufacturing techniques, artificial intelligence are only some examples of technologies that have had, and will continue to have, tremendous impact on modern society. Despite many controversial debates about the benefits of patent protection for software, it appears to be widely recognized that the availability of strong mechanisms for protecting investments in innovation within information technology is crucial for companies across the world. Therefore, it is not surprising that the number of patent applications in areas related to information technology has steadily increased over the years. In fact, digital communications and computer technology are among the top three technical fields where most European patent applications were filed in 2015, only surpassed by medical technology 3. In the present paper, we will discuss the criteria for, and the boundaries of, patent protection for computer-implemented inventions within Europe. We will focus on the practice under the European Patent Convention but will also briefly touch upon the national practices in some of the major European jurisdictions. COMPUTER-IMPLEMENTED INVENTIONS UNDER THE EUROPEAN PATENT CONVENTION Under the European Patent Convention, patents are granted for inventions in all fields of technology, as long as the inventions are new, involve an inventive step and are susceptible of industrial application 4. Hence, the EPC imposes four general conditions that have to be met in order to be eligible for patent protection: The subject-matter has to be an invention, it must be novel, non-obvious and susceptible to industrial application. The EPC does not define the notion of invention but provides a non-exhaustive list of subject-matter that are not to be regarded as inventions within the meaning of the EPC. This list of examples includes 5 : (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information. 3. EPO Annual Report Article 52(1) EPC. 5. Article 52(2) EPC

6 Accordingly, the above subject-matter and activities are excluded from patentability. However, their exclusion only applies to the extent to which a European patent application or European patent relates to such subjectmatter or activities as such. 6 The scope of the above exclusions as such and, in particular, the exclusion of programs for computers as such, has been the subject of a large number of decisions by the Boards of Appeal. Notably, as we will discuss in more detail below, many inventions are indeed patentable even if they are fully or partly implemented by a computer. Before turning to the specific criteria for patenting computer-implemented inventions, it is worthwhile noting that, apart from the above list of non-inventions, the EPC also provides additional specific exceptions from patentability. For example, the EPC excludes from patentability inventions the commercial exploitation of which would be contrary to ordre public or morality, plant or animal varieties or essentially biological processes for the production of plants or animals as well as methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body 7. While these excluded subject-matter and activities are recognized as inventions, they are not considered patentable inventions. This is in contrast to programs for computers and the other excluded non-inventions whose exclusion as such hinges on the definition of the concept of what constitutes an invention in the first place: The EPC considers programs for computers as a noninvention and, for this reason, subject-matter that relates to software for computers as such is excluded from patentability. Now the question remains what it takes for subject-matter to relate to other and more than a program for computers as such. NON-INVENTIONS AND LACK OF TECHNICAL CHARACTER For several decades, the Boards of Appeal of the EPO have struggled to interpret the boundaries between, on the one hand, programs for computers as such and, on the other hand, inventions that are eligible to patent protection, even though they may be implemented fully or in part by means of a computer under the control of software. Ever since the well-known VICOM case 8 which was decided in 1986, the Boards of Appeal have acknowledged that a claim directed to a technical 6. Article 52(3) EPC. 7. Article 53 EPC and Rules 28 and 29 EPC. 8. Decision T 208/84 by the Boards of Appeal of the EPO

7 process which is carried out under the control of a program (whether by means of hardware or software), cannot be regarded as relating to a computer program as such. Over the subsequent three decades, the case law of the Boards of Appeal has developed further and can be considered to have converged towards a set of useful criteria. Even though these criteria are not always easy to apply, they are relatively well-established and fairly consistent. They provide a reasonable degree of predictability of the outcome of individual cases and they may help skilled practitioners when drafting patent applications and arguing their cases in order to maximize the chances of successfully obtaining a patent. While the EPC does not provide any explicit definition of the concept of invention, there is broad agreement that, according to European practice, the term invention refers to technical inventions. In this regard, the Boards of Appeal have noted that the examples of non-inventions listed in the EPC share an overriding common trait: They all relate to non-technical activities, such as mental activities, creative arts, economic activities, scientific discoveries, and the like 9. Accordingly, within the meaning of the EPC, the term invention inherently implies a requirement of having technical character. In other words, only subject-matter that has technical character can be regarded as an invention and, thus, can be eligible for patent protection 10. According to the EPO s interpretation, this also means that the EPC does not exclude from patentability any subjectmatter or activity having technical character, even if it is related to the items listed in the list of non-inventions, since these items are only excluded as such. In particular, a patent claim may well include a mix of technical and non-technical features. As long as the claimed subject-matter as a whole has technical character, it is not a priori excluded from patentability. While this is a relatively low hurdle that can easily be overcome, it is important to keep in mind that the requirement of being an invention is only one of the requirements to be fulfilled in order to be patentable, i.e. not all inventions are necessarily patentable. They still need to fulfill the remaining patentability criteria of novelty, inventive step and industrial applicability. In particular, as we will see below, the distinction between technical and non-technical features of a claim also plays an important role when examining whether an invention is novel and inventive. Consider for example a claim related to a process of writing a letter using a pen and paper, where the claim includes features defining the 9. Decision T 930/05 by the Boards of Appeal of the EPO. 10. Decision T 154/04 by the Boards of Appeal of the EPO

8 content of the letter as well as features defining the type of pen or paper used in the process. This process includes a mix of technical features (namely the features defining the pen and paper) and non-technical features (the content of the letter). According to EPO practice, this process relates to an invention, since the pen and paper are technical items that render technical character to the claimed subject-matter as a whole. However, whether or not the invention is a patentable one depends on whether the claimed process is novel, inventive and susceptible to industrial application. Importantly, the requirement of inventive step implies that the invention provides a non-obvious solution to a technical problem. According to established EPO practice, this means that only those features that contribute to the technical character of the claimed subject-matter can contribute to the patentability criteria of novelty and inventive step. Hence, in the above example, only the technical features relating to the pen and paper may contribute to novelty and inventive step, while the features related to the content of the letter will generally not contribute to novelty or inventive step. Hence, according to the practice applied by the EPO, when examining a patent claim related to a computer-implemented invention, the following two inquiries need to be made: A) Does the claimed subject-matter have technical character or does it relate to nothing more than a non-invention as such? If this inquiry reveals that the claim has technical character, the following question needs to be answered: B) Is the invention novel and involves an inventive step, i.e. is the combination of features that contribute to its technical character novel and does it involve an inventive step? Both inquiries critically depend on which features contribute to the technical character of the claim. This inevitably leads to the question of what is technical. Again, the EPC does not provide any explicit definition of the concept technical, but a large body of case law exists which provides relevant criteria for determining whether a feature can be regarded as contributing to the technical character of a claim. In the following we will discuss a few relatively recent examples of cases. THE PROBLEM-AND-SOLUTION APPROACH Before discussing specific examples of how the criteria of technicality are applied in practice, it may initially be worthwhile recalling the general 7 739

9 framework that is consistently and virtually exclusively applied by the EPO when establishing whether an invention involves an inventive step: The so-called problem-and-solution approach. The problem-and-solution approach is based on the general understanding that inventions relate to solutions to technical problems. It may be divided in three main stages 11 : 1) Determining the closest prior art : 2) Establishing the objective technical problem to be solved when starting from the closest prior art established during stage 1, and 3) Considering whether or not the claimed invention, starting from the closest prior art would have been an obvious solution to the skilled person when faced with the objective technical problem established during stage 2. The closest prior art is an item of prior art that would have been a suitable starting point and, in particular, the most promising starting point for a skilled person in order to arrive at the claimed invention. In order to establish the objective technical problem, one initially has to determine how the claimed invention differs from the closest prior art, i.e. which of the claimed features are not already disclosed by the closest prior art. Next, the technical effect of these distinguishing features needs to be established. Generally, the objective technical problem to be solved by the skilled person is then defined as how to provide this technical effect when starting from the closest prior art. Only if the claimed technical solution to the objective technical problem would not have been obvious to the skilled person when starting from the closest prior art and in view of the relevant state of the art as a whole, would the claimed invention be considered as involving an inventive step. THE COMVIK APPROACH TO COMPUTER- IMPLEMENTED INVENTIONS In the so-called COMVIK decision 12, the Boards of Appeal have adapted the problem-and-solution approach to computer-implemented inventions and to other inventions that relate to excluded subject-matter: As is clear from the above discussion, the presence of an inventive step requires a technical solution to a technical problem. Therefore, when performing the above 11. Guidelines for Examination in the EPO, November 2016, G-VII, T 641/

10 analysis, only those features that actually contribute to the technical character of the invention are considered when determining the technical effect of the differences between the claimed invention and the closest prior art. Novelty and inventive step can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject-matter of the claim for solving a technical problem, do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step. This is because non-technical features, e.g. features related to a business scheme, that do not contribute to the technical character cannot be considered as part of a technical solution to a technical problem, even if these features are not known from the closest prior art. In fact, the non-technical features may be considered as part of the formulation of the technical problem to be solved, as would be the case in a realistic situation in the form of a requirement specification. For example, the objective technical problem may be to provide a technical implementation of a business scheme defined by the non-technical features 13. When prosecuting European patent applications related to computerimplemented inventions by applying the above framework, the battle ground often involves the question as to which features actually contribute either alone or at least in combination with other features of the claim - to the technical character of the claimed subject-matter. Therefore, when drafting European patent applications, focusing on the technical features and their technical effects is often a crucial prerequisite for a successful prosecution. TECHNICAL EFFECT vs. FURTHER TECHNICAL EFFECT When considering computer-implemented inventions, e.g. inventions related to a method performed by a computer, the mere fact that a computer is involved may render the subject-matter as a whole technical. However, this does not mean that all the steps of the method are inherently technical and contribute to the technical character of the claim. It is true that the execution of any process step by a computer involves technical operations within the circuitry of the computer. However, if these inherent technical operations were sufficient for the computer-implemented process step to contribute to the technical character of the claim, all features could be said to be technical and the exclusion of software for computers would be rendered meaningless. Therefore, the EPO practice does not regard the inherent technical interactions alone as sufficient for a process step to contribute 13. T 641/00 (COMVIK)

11 to the technical character of the claimed invention. For a computerimplemented feature to contribute to the technical character of a claim, a so-called further technical effect is required, i.e. a technical effect going beyond those effects which inevitably occur when any program is run 14. For example, in the context of an online poker game, consider a claimed method that differs from prior art online poker games solely by the implementation of a new set of game rules. The game rules as such, i.e. the abstract formal structure of the game that describes the interplay between player actions and the choices offered within the game, are non-technical subject-matter that is excluded from patentability as such. However, the technical implementation of the game rules on the computer is indeed technical. Based on the above considerations, when establishing whether the claimed online poker game involves an inventive step under EPO practice, a careful distinction is made between the effects resulting from the new game rules and the effects resulting from their technical implementation: A finding of non-obviousness cannot rely on excluded (non-technical) subject-matter alone, however original it may be. Moreover, the mere technical implementation of something excluded cannot therefore form the basis for inventive step. However, a particular manner of technical implementation of a set of game rules may indeed provide the basis for an inventive step. In this context, a consideration of the particular manner of implementation must focus on any further technical advantages or effects associated with the specific features of implementation over and above the effects and advantages inherent in the excluded subject-matter, e.g. inherent in the game rules 15. RECENT CASE LAW Based on the distinction between a further technical effect and the inevitable effects of excluded subject-matter, the Boards of Appeal have considered the inevitable effects that occur when a computer program is run on a computer and, in particular, the computing time. In respect of a general method of computation, the Boards have reasoned that the computing time required for executing a method of calculation does not per se contribute to the technical character of a computer program, because a certain computing time is among the resources that are inevitably required by any computer program. Therefore, for a computer-implemented method or a 14. T 1173/ T 1884/

12 computer program to be patentable it must be established that it has a further technical effect and solves a technical problem independently of its absolute or relative computing time, e.g. independently of an alleged speed-up of the computation. Only then, and only if the alleged speed-up affects an established technical effect, can it be argued that the speed-up contributes to a technical effect and thus to an inventive step 16. This may, for example, be the case when the increase in speed is the result of a particular interaction of the computer program with a specific hardware configuration, e.g. by exploiting specific abilities of the computer or by avoiding some deficiency in the computer 17. It is also worth noting that the above conclusions have been reached in respect of a generic software application written in terms of objects and their properties, i.e. without reference to any specific technical purpose of the software application. In contrast to this, an increase in speed of a computer-implemented process has indeed been recognized as a technical effect in a different context, where it involved a computer-implemented mathematical process for numerical simulation of an electronic circuit subject to 1/f noise. Here, the limitation to the numerical simulation of an electronic circuit subject to 1/f noise was considered sufficient to limit the process to a sufficiently specific technical purpose for the simulation process to contribute to producing a technical effect. If the claim were not so limited, the mathematical algorithm per se would fail to serve any technical purpose and would thus not be considered to contribute to the technical character of the claim, since requiring less computer resources than another mathematical algorithm would not on its own be sufficient in this respect 18. Another distinction that has repeatedly been applied is whether an effect results directly from the technical features of the claim or whether it depends on other factors, e.g. on a mental activity, a business scheme or on psychological factors. For example, the Boards of Appeal had to consider a method for displaying thumbnail file images 19. The claimed method differs from prior art methods in that the thumbnail file images are displayed partially overlapping and in a three-dimensional arrangement that is dependent on the number of displayed thumbnail file images. The alleged technical effect was an improved evaluation of thumbnail file images by the user. The 16. T 1370/11, reasons See e.g. T42/10, reasons See T 1227/05 and the Guidelines for Examination in the European Patent Office, November 2016, G-VII, and G-II, T 1214/

13 Board concluded that this improvement was due solely to the claimed arrangement of the thumbnail file images and not based on considerations other than those proper to the field of designing presentations of information for human viewing. According to the Board, any improvement in the efficiency of image retrieval could only be the result of the nontechnical improvement in the user s evaluation of the displayed thumbnail file images. Hence, the improvement was not a direct consequence of the arrangement but of the mental factors related to the user s evaluation of the displayed arrangement. In a similar case, a claim related to a specific arrangement of displayed elements in a gaming application. The applicant in this case used a different and more successful line of arguments: The applicant related the improvements resulting from the claimed arrangement to physiological rather than to mental aspects. In particular, the arrangement of the elements on the display was argued to improve the optical visibility of the displayed elements and to allow a fatigue-free playing as well as continuous monitoring of the course of the game. This improvement was achieved because the need for frequent and rapid eye movements was avoided when the user followed the course of the game. Hence, as this effect was related to objective physiological factors rather than to subjective psychological/mental factors, its technical character was acknowledged and the claim was found to involve an inventive step 20. EUROPE BEYOND THE EPO As an alternative, or even in addition to obtaining patent protection by means of a European patent, applicants may pursue patent protection for their inventions by applying for national patents with the national patent offices of the respective European countries. While the patent laws of the member states of the European Patent Organization are harmonized, their interpretation by the national patent offices and by the national courts may vary. In the future, this situation may of course change when the long awaited Unified Patent Court system finally starts operating and hopefully establishes a more uniform jurisprudence applicable throughout at least most of the European Union. However, for now the legal situation in Europe continues to be influenced by the national courts of the individual member states. This also holds true as regards the patentability of computerimplemented inventions: While the overall legal framework in many 20. T 1375/

14 countries is very similar, if not almost identical, to the European Patent Convention, there are more or less subtle differences in the respective legal practices. There is general agreement throughout Europe that the concept of invention inherently implies a technical solution of a technical problem, but the way this requirement of technicality is dealt with in practice within the framework of examining patent claims differs somewhat from country to country. In individual cases, these differences may of course result in diverging results. However, it is difficult to assert that these differences in examination practice consistently lead to different outcomes. Germany: For example, in Germany, rather than applying the two inquiries of the EPO approach discussed above, a three-step test is often applied for assessing the patentability of computer-implemented inventions: 1. Firstly, it has to be assessed whether the claimed subject-matter resides within a technical field. 2. Secondly, in order to avoid the exclusion from patentability, one needs to determine whether the claimed subject-matter includes a teaching for solving a specific technical problem with technical means. 3. Finally, novelty and inventive step are to be examined, where only technical aspects that distinguish the invention from the prior art are to be considered as a basis for novelty and inventive step. Hence, while the EPO regards the exclusions from patentability to be automatically overcome when the invention has technical character, the German approach involves a second, specific inquiry as to whether the claimed subject-matter includes a teaching for solving a specific technical problem with technical means. Both approaches agree in that they only take technical aspects into account when assessing an invention for novelty and inventive step. United Kingdom: As we have seen above, the most important hurdle for softwareimplemented inventions at the EPO is the assessment of novelty and inventive step where non-technical features of the claims will be ignored in this assessment. In contrast, in the UK, more weight is put on the initial assessment of whether the claimed subject-matter is excluded from patentability. To this end, the so-called contribution-approach is used: Firstly, the

15 novel features of the claimed subject-matter are identified. Secondly, it is determined whether or not these novel features entirely fall within the excluded subject-matter; then it is checked whether the actual or alleged contribution is actually technical in nature. The England and Wales High Court 21 has set out the following five signposts which the court regarded useful in order to establish whether a computer program involves a relevant technical effect: i) whether the claimed technical effect has a technical effect on a process which is carried out outside the computer; ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run; iii) whether the claimed technical effect results in the computer being made to operate in a new way; iv) whether there is an increase in the speed or reliability of the computer; v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented. Irrespective of whether applicants opt for the European route for obtaining a patent or decide to file national patent applications in some of the European countries, it should be borne in mind that the national courts of the individual countries are still the final authority when deciding the validity of both national and European patents within their respective jurisdictions. Therefore, in order to obtain strong patent protection, it may be advisable to draft a patent application not only with the EPO practice in mind, but also considering the criteria applied by some of the major national jurisdictions, e.g. by providing basis for arguments that the claimed subject-matter achieves at least one of the above signposts and can be argued to solve a technical problem by technical means. CONCLUSIONS Europe offers patent protection for computer-implemented inventions so long as the inventions offer a non-obvious technical solution to a technical problem compared to the prior art. 21. AT&T Knowledge Ventures LP, Re [2009] EWHC 343 (Pat) (03 March 2009)

16 In order to facilitate arguments that a claimed invention indeed solves a technical problem, applicants are well advised to draft claims - or at least provide sufficient basis in the application for drafting such claims that highlight the technical features and their effects. When determining whether inventions that include technical as well as non-technical features are patentably distinguishable from the prior art, it is not sufficient to rely on excluded (non-technical) subject-matter alone, however original it may be. A non-obvious distinction needs to result from technical aspects, e.g. from a particular manner of technical implementation of the excluded subject-matter. The claimed features and the associated arguments in support of inventive step should focus on further technical advantages or effects associated with the specific features of implementation over and above the effects and advantages inherent in the excluded subject-matter. For example, in cases where the inventive step of a claimed computerized method is linked to an improved utilization of computer resources, e.g. computing time, it may be beneficial to make sure that the claimed method is limited to a specific technical purpose or that the improvement is not merely a result of the employed algorithm independent of the computer hardware on which it is run but somehow a result of an interaction with specific abilities or limitations of the computer hardware. Similarly, when wishing to protect an invention that is related to userinterfaces, it can be helpful to include features into the claim whose effect can be linked to technical limitations of the computer system or where the improvement is a result of physiological/anatomical limitations of the user rather than being the result of the user s cognitive evaluation of the interaction with the computer. Analogous considerations apply to computerimplemented business schemes: The claims should focus on features bringing about technical effects rather than on the merits of the underlying business scheme. Regardless of the specific type of invention, when considering patent protection in Europe, one prominent feature of the European patent system should always be kept in mind: The EPO s very restrictive approach in respect of amendments to patent applications after filing. Generally, applicants are bound by the limits of the disclosure of the application as filed with very little room for subsequent generalizations, deletions or additions, e.g. in order to successfully cross the boundary between what is regarded a non-patentable program for computers as such and a patentable computer-implemented invention or in order to overcome other objections. In the context of computer-implemented inventions, the EPO s restrictive rules may limit an applicant s options when trying to add a technical

17 feature to a claim during prosecution that can serve as a basis for a technical effect and render the claim patentable. If the original application does not include a disclosure of the feature in question in sufficiently general terms and independently from other features, the applicant may be forced to limit the claims to a specific embodiment of the feature in question or to a combination of the feature with additional features. Consequently, the applicant may end up with a patent claim that is considerably narrower than what could have been obtained if the application had been drafted with the European practice in mind. In the worst case, the applicant may not be able to obtain any useful scope of protection. Therefore, it is of utmost importance that patent applications are carefully drafted from the outset, i.e. before they are filed as European patent applications or as PCT applications

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