Software patent eligibility apply at the EPO

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Software patent eligibility apply at the EPO

In frequent with numerous patent places of work all over the earth, some inventions that are implemented in application may possibly be patented before the European Patent Business office (EPO). In this post, we investigate software package patentability, masking why only some computer software innovations are patentable just before the EPO, the demands for an invention to be patentable and how patent exercise before the EPO with regard to software package inventions might evolve in the long run.

The European Patent Convention (EPC) is the statute under which the EPO operates to ascertain the grant of European patents. The EPC defines that European patents shall be granted in all fields of technological know-how but excludes a certain list of the matter matters regarded inventions, which features, inter alia, mathematical strategies, techniques for carrying out company and applications for pcs. These exceptions from patentability have been described as relating to routines that do not purpose for any immediate complex outcome but are somewhat of an summary and mental character. The exceptions from patentability are, however, minimal in scope in that they only relate to “such subject-make a difference or functions as such”.

As can be observed from the higher than references to technologies and technological outcomes, complex character is a necessity of an creation under the EPC, which was beforehand only implicitly needed but which is now explicitly stated in Posting 52 (1) EPC. To determine the patentability of an creation, specially a person that might relate to laptop or computer software program, the EPO applies a two-hurdle technique. The 1st hurdle is to assess regardless of whether a declare relates to a non-invention falling within one particular or additional of the excluded subject matters. The second hurdle entails thing to consider of irrespective of whether the remaining needs for a patentable invention are achieved, specially that the creation is novel and has an creative stage. Consequently, only the claimed topic make any difference with a technological character can be deemed an invention, and to be a patentable invention it need to also be novel and have an creative move.

Here we see a parallel with US patent observe, in which there are also two patent eligibility hurdles to conquer, recognized as the Alice take a look at. In this article, the 1st hurdle is a examination of no matter if the claimed invention consists of a patent-ineligible idea. A patent-ineligible thought is one particular regarded an “abstract idea”, as established by the US Supreme Court docket. If so, to then avoid rejection, there should be some components of the claim relating to an ingenious notion ample to transform the abstract thought into just one relating to a patent-suitable invention. The inventive principle ought to be a lot more than a recitation of a perfectly-recognized, regime, traditional action. On the deal with of it, consequently, just reciting in a assert generic laptop attributes or routines these types of as ‘processing’ and ‘receiving’ will not be adequate to change the declare from one that is deemed abstract to patent-suitable matter matter. In comparison to the EPO’s two exams, the initially distinction concerning the EPO and US methods is that, below EPO observe, it is viewed as whether or not the assert as a total avoids the exclusion of personal computer program as this sort of, while at the United States Patent and Trademark Business office (USPTO), it is assessed whether the claimed invention is patent ineligible. Nevertheless, the second tests less than both programs have additional in prevalent as both are wanting for make a difference that is far more than routine. According to our comprehending, the exam for eligibility below US practice is separate from the things to consider of novelty and inventive phase, despite the fact that some scenarios recognise some overlap amongst these prerequisites while underneath EPO follow, an inventive step in excess of the prior art is only presented by matter with technological character.

At the EPO, just about every patent software is also examined with regard to novelty and creative stage, amid other requirements. The creative step requirement of the EPO corresponds with the prerequisite for non-obviousness of the USPTO. Nevertheless, the inventive action requirement differs in some factors from the non-obviousness prerequisite of the USPTO, which is explained below.

The first hurdle to prevail over just before the EPO is also a form of eligibility test but with a somewhat reduced bar, only excluding issue make a difference that is totally devoid of any complex character. A assert that consists of any complex means is explained to clear the first hurdle to be regarded an invention. This test is normally referred to as the ‘any hardware’ or ‘any specialized means’ strategy. This willpower is made with out reference to the prior art. As a result, a very first action to looking at irrespective of whether a declare is probable to be patentable just before the EPO is to assess whether the declare refers to a specialized entity, particularly hardware. In exercise, it can often be surprising how many, notably process, statements can be found at the original prosecution stage that, on shut inspection, do not refer to any hardware. 1 relatively straightforward way of guaranteeing that the first hurdle is cleared can be to recite a computer system-applied method. In other text, if any components these types of as a personal computer, storage or microprocessor is described in the assert, then it will go the initial hurdle.

At the next hurdle, the need for an inventive move more than the prior art is examined. The evaluation for creative phase is at the same time topic to the limitation that only complex factors of the claimed creation can be taken into account. In other words, any make any difference in the claim that is not considered complex are not able to give rise to an inventive action about the prior art. Therefore, at the European Patent Office environment, the take a look at of no matter whether the claimed matter matter fulfils the need of ‘technicality’ is assessed concurrently with the analysis of whether the subject subject of the patent application has an ingenious action.

The EPO has designed a exclusive system for examining ingenious stage, which is referred to as the trouble-solution method. The difficulty-alternative method was modified by the EPO for examining ‘computer-carried out inventions’ (CIIs), which is the phrase made use of by the EPO for innovations that are commonly realised by means of computer software and that are colloquially termed ‘software patents’.

Underneath the modified issue-option tactic, functions of the assert beneath assessment are assessed as to no matter if they lead to the resolution of a specialized issue. Only features of the claimed invention that give these a specialized contribution are regarded as. In some ‘mixed-type’ innovations, currently being a blend of specialized and non-technical assert factors, non-specialized attributes can be deemed, these as pure computer software techniques, but only if they add to the formulation of the complex trouble solved by the creation.

During its existence, the EPO has two times reviewed its scenario legislation relating to CIIs in the kind of selections of its Enlarged Board of Attraction. The to start with determination (G 03/08) from 2010 consists of an overview of preceding case legislation on CIIs, which verified the two-hurdle test and did not make any changes to the EPO’s method heading ahead.

The next selection of the Enlarged Board (G 01/19) was issued in 2021 and problems the patenting of computer system-aided simulations. On the 1 hand, the rules of the 1st final decision had been verified and, on the other hand, precise responses were being built on the lawful troubles that crop up when patenting laptop-aided simulations.

Laptop or computer-implemented simulations use a numerical product that is fed with input info and in transform makes facts as an output indicative of the consequence of the simulation. Consequently, knowledge is processed without right influencing the bodily earth. In this sense a computer-carried out simulation could be considered a purely mathematical approach. As mentioned above, mathematical strategies as such are excluded from patentability. One particular could, consequently, arrive to the summary that computer-executed simulations are in theory not patentable.

In this decision, on the other hand, the Enlarged Board of Appeal arrived to a distinct summary and stated that computer-implemented simulations are not fundamentally excluded from patentability. Rather, personal computer-executed simulations can be patented if they relate to a complex invention according to the principles established out earlier mentioned.

The phrase ‘technology’ is not obviously described in possibly the EPC or scenario law. Somewhat, the definition of ‘technology’ is still left open so as not to exclude long run complex developments from becoming patented. However, a single can guided by what is not complex, which is excluded from patenting below the EPC (eg, mathematical techniques, procedures for doing organization and computer programs).

For illustration, a mathematical remedy of a differential equation is a mathematical system and, as these types of, simply cannot be patented. Even so, if the form of a new antenna is described by this answer of the differential equation, and the homes of the antenna are thereby improved, then the resulting antenna is patentable, as it is definitely a technical object. The important move that led to the creation was the alternative of the differential equation. Nonetheless, this mathematical remedy has a technological outcome when used to antennae. There are lots of options of differential equations that are unsuitable for antennae, but a specialized contribution is provided by the option of this differential equation as utilized to an antenna. In European patent legislation, this is also a technological contribution that can be rewarded with patent defense if it is new and ingenious.

This is a reasonably very simple case in point that clearly exhibits the big difference amongst a pure mathematical method and specialized topic make a difference relating to a mathematical approach. Nonetheless, there are also instances the place it is significantly additional complicated to decide whether this subject is technical in regard to European patent exercise.

In the over-outlined conclusion of the Enlarged Board of Charm on computer system-primarily based simulations, an previously Board of Appeal decision relating to 1/f sounds was mentioned in detail. The granted European patent arising from this conclusion relating to 1/f sound defines the simulation of 1/f noise for optimising electrical circuits. Here as well, a mathematical process simulating 1/f sound is employed to optimise a technological item in the variety of the electrical circuit. Even if not each individual simulation automatically potential customers to a new style and design of an electrical circuit, the technological contribution was judged to be enough for the patent to be granted.

In its far more new determination, the Enlarged Board of Enchantment clarified the safety of laptop or computer-assisted simulations to the effect that:

  • the specialized outcome will have to be current above the whole scope of security for the claimed creation and
  • the complex use of the simulation have to be described in the patent assert, whilst it could also be only implicitly existing in the claim.

What does this necessarily mean for the 1/f sounds instance? The parallel US patent (US 6,795,840 B1) was granted with a claim extremely similar to the assert of the corresponding European patent. Nonetheless, the limitation to electrical circuits is missing from the US declare. Here, a “computer programmed to method a process of analyzing sequences of random figures of a 1/f noise . . .” was patented. The description of the US patent also states that the simulation of the 1/f sound can also be utilized to predict “activities on the economic markets”.

According to the scenario law of the EPO, the US assert would likely be regarded as a purely mathematical strategy and a enterprise system as this sort of, each of which are excluded from patentability in Europe.

Thus, the assert of the US patent does not include any indication of specialized use as essential by the EPO’s Enlarged Board of Attractiveness. What’s more, the scope of protection of the US patent assert can be claimed to increase to purposes in the fiscal sector, which are not specialized in character beneath European exercise. For that reason, the US patent declare is not complex more than its complete scope of safety, and the US patent would most likely not be granted by the EPO. The definition of the specialized use, particularly the use for digital circuits, is missing from the US declare.

Whilst this illustration concerns a single assert that is very likely to be unallowable just before the EPO as not becoming technological more than the claim’s whole scope, pursuing the Enlarged Board of Appeal’s decision, we count on that additional objections will be raised by the EPO from non-technological claims around aspect of their scope. As a final result, applicants will need to have to lessen the scope of their claimed security through prosecution this kind of that only complex embodiments are lined by the claim.

Recent scenario legislation in the United States, even so, ever more states that the application in question need to boost “computer functionality” (ie, enhance computing speeds or minimize the amount of money of computing assets expected) or execute computing duties in an unconventional way. This is comparable to the requirement that an invention have to be specialized. We have the impact that, at minimum historically, the patenting follow of computer software patents in the United States is relatively extra generous than at the EPO, but it is not as clear when program is patent-qualified. The distinction concerning technological and non-technical inventions at the EPO appears to be to be superior defined and, therefore, clearer, which supplies applicants with a lot more certainty prior to software.

The patentability of AI ahead of the EPO continues to evolve, and the EPO has presented valuable guidance on this matter in the 2022 update to the Tips for Evaluation. To guide applicants in this area, an instance has been launched to the Rules relating to the patentability of a spray coating technique that is novel by virtue of like a neuro-fuzzy controller making use of a neural network and fuzzy logic principles. It is reviewed that computational types and algorithms are in them selves mathematical solutions and are so not regarded as complex for the assessment of ingenious action. Even so, as the controller is utilized to modify the parameters of a complex approach in the variety of a coating system, the neuro-fuzzy controller contributes to the technological character of the invention and, as a result, can be considered in the assessment of creative phase.

Lately the EPO, together with other patent places of work, regarded as the concern of irrespective of whether an AI procedure can be an inventor in respect of a patent application. The applicant, Steven Thaler, submitted a patent software for a food stuff container that experienced seemingly been devised by an AI program named DABUS, which was as a result named as the inventor. The European software was subsequently refused on the grounds that the EPC required an inventor to be a natural person. This need was verified by a Board of Attractiveness. On the other hand, the EPO indicated its possible openness to patenting inventions derived by AI technological innovation by indicating that the proprietor of a system may possibly be selected as the inventor underneath the EPC, which exhibits some regularity with the equivalent determination just before the British isles Court.

Chris Benson and Bernhard Ganahl
HGF Restricted

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