Excluded Subject Matter (2) - Software

Whilst European patent law defines 'programs for computers' as not being inventions, in practice, the European Patent Office applies this definition narrowly, following well-established case law. Knowing how to navigate the pitfalls of the procedure applied by the EPO can provide predictability and certainty to protecting software inventions in Europe - we explore the issues in this article. 

Software patent claims are usually formulated as a method, and specifying that the method is 'computer-implemented' enables the claim to involve technical features. This overcomes the exclusion in the law and allows the invention to move on to the next requirements of patentability: novelty and inventive step.

The EPO's approach to inventive step is where things can get tricky for software inventions. An EPO examiner starts by looking at whether the software claim has technical character. In order for a claim to have technical character, the claimed process must cause a further technical effect when run on the computer. A further technical effect is a technical effect that goes beyond the normal physical interactions between a program and the computer it is run on. Examples of further technical effects include improving the efficiency of a manufacturing process, enhancing the security of a communication channel, and protecting boot integrity of a computer.

Only the features that contribute to the technical character are taken into account for the next step of identifying prior art. This means that any features that are considered non-technical, i.e. those which do not contribute to the technical character, are disregarded for this part of the assessment. For example, in a process of registering a new user for database access which has a further technical effect of reduced storage requirements, the types of data about the user that are captured do not help towards this technical effect and are ignored for the purposes of identifying the prior art. On the other hand, compressing the data about the user is considered technical and so would be factored in when the examiner searches for prior art.

Following the problem-solution approach favoured by the EPO, the objective technical problem is formulated based on the differences between the identified prior art and the features that contribute to the technical character. As with all inventions, if the claimed solution to the objective technical problem is not obvious to the skilled person, then there is an inventive step.

What becomes clear from this procedure of the EPO is that establishing that a software claim has technical character is fundamental to a favourable conclusion that the claim has the requisite inventive step. 

Fortunately, there are ways to lay the groundwork towards a finding of technical character. The patent application can set out a narrative that guides the reader towards aspects of the computer or an external system that are improved by the computer-implemented method. Additionally or alternatively, when faced with an inventive step objection where the examiner has ignored allegedly non-technical features, this can be rebutted by explaining how those features do contribute to a further technical effect that the examiner may have overlooked. Sometimes this argumentation may need to be supplemented with claim amendments that emphasise the further technical effect.

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.