How to Patent Software in Europe

Achieving a software patent requires emphasizing technical features of the invention, particularly at the drafting stage. The prosecution of a patent application without concrete details can be difficult, but efficiencies associated with the application and its advantages for all users can be argued for. The following article looks at the Comvik approach. We will also examine a few key features that should be highlighted when filing a patent application. Hopefully, this will help you get started.

Technical character

The EPO prefers a problem-solution approach for determining the technical character of a software patent. Specifically, an objective technical problem is formulated based on the differences between the claimed invention and prior art, including any technical features that contribute to its technical character. The claimed solution must not be obvious to a person of ordinary skill in the art and must have an inventive step. To obtain a favourable conclusion on the issue of inventive step, it is necessary to establish the technical character of a software claim.

While the technical character of software patents in Europe depends on its functionality, there are certain conditions that must be met. For example, computer programs that improve a computer’s performance or carry out previously unknown computing processes are eligible for patent protection. The patent office is required to check the technical character of a program and its claimability on the basis of novelty and inventive step. Non-technical features will usually be disregarded.

While software has long been relevant in the US, it has lagged behind in the EU. It has only been in the past decade that software patenting has become relevant in the European Patent Office. Since then, software patents have grown dramatically in number. Software patents are often not subject to the same rules as hardware patents, so the threat effect from hardware firms is becoming increasingly important. This research is based on the latest case law.

The European Patent Office is also investigating computer-implemented inventions and business methods. The EPO’s publication of the Official Journal EPO in November 2007 addresses the question of strategic patenting in the EU and whether there are different behaviours for different industries. In addition, a dataset is presented for the period 2000-2003, linking the number of software patents filed at the EPO with various R&D expenditures and other relevant variables. Finally, a consistency test of the dataset with other methodologies is undertaken to assess the validity of the results.

Non-obviousness

When it comes to determining whether a new computer program is patentable in Europe, the key issue is not so much the specific application but the methodology used to determine whether the claim is novel. For example, if the new software program utilises a processor and a computer network, the EPO will consider this a “method of doing business” rather than an “invention.”

While many software innovations are still filed in the United States and other countries, the European Patent Office (EPO) is now more focused on the inventive step that is essential to obtaining a patent. This is especially important for software-related inventions, as the EPO asks applicants to show that their software solves a technical problem that is “not obvious.”

The EPO and USPTO follow different rules for assessing obviousness. The USPTO’s first Office Action for a software patent application includes a rejection for obviousness. The applicant can rebut this rejection by amending the claim. After submitting a claim amendment, the examination team makes its final decision on patentability and obviousness. At the EPO, however, the examination procedure differs from the United Kingdom.

The US patent system is an all-or-nothing environment, where the line between the obvious and the inventive is drawn. However, the EPO do not draw a clear line between obvious and non-obvious. Nevertheless, it is not uncommon to hear a patent applicant appeal based on non-obviousness and then later on appeal to get the patent granted.

Practical application

When it comes to patenting software, an abstract idea must be tied to a practical application in order to qualify for a grant of patent protection. For instance, improvements in computer functioning may qualify for a patent in the United States. In Europe, however, further technical effects must be described in order to qualify for a patent. Further, software that is related to business methods, mathematical formulas, and user interfaces may require extra care to qualify for patent protection in Europe. Simulations, for example, may be eligible for patent protection, if they are sufficiently described.

While the European Patent Office is the only European country that allows software to qualify for patent protection, the United States has not yet followed suit. Since the European Patent Office first opened its doors to software patentability in 1997, it has granted over 30,000 software patents with surprisingly little litigation. Even so, policy toward patenting software has varying degrees of consistency across the European Union. National patent regimes are catching on to the EPO’s reinterpretation of the 1973 Convention.

The EPO has issued tens of thousands of software patents, many of them in disregard of the treaty that created it. Moreover, each European state must decide whether the patent is valid. A unitary system of patents would give the EPO unchecked power and would lead to a US-style patent war. For this reason, the European Patent Office and the European Union have made software patenting a priority issue.

Despite a strong lobbying effort from anti-patent groups, the European Parliament repeatedly rejected a software patent directive. Despite this, the Council of Ministers continues to promote a software patent regime. While the history of these battles is complex, concentrated lobbying from both sides has resulted in a deadlock. In the meantime, anti-patent groups have proven themselves to be effective in mobilising public opinion and battling well-funded opposition.

Comvik approach

A famous case law approach in patenting software in Europe is the COMVIK approach. The COMVIK approach involves assessing the technical contribution of the claimed invention as part of its distinctive features. The non-technical aspects are not considered to contribute to the claimed invention and potential inventive step is only recognised where the technical contributions are substantial. This case law applies to a broad spectrum of software elements, from neural networks to simulation tools.

The EBA has found that the COMVIK approach applies to computer-simulations. The method used to assess the inventive step should be the same for software and computer-implemented inventions. The EBA affirmed that computer-simulations may also be patented. The reasoning behind this approach is that the calculation of numerical data must accurately reflect the behavior of a real system. It also clarifies that the COMVIK approach is applicable to all types of computer-implemented inventions.

The EPO assesses the patentability of software implemented inventions according to the Comvik approach. The Comvik approach aims to identify the closest prior art. The differences between claimed and closest prior art are known as novel features. In the inventive step test, only those features that contribute to solving a technical problem are considered novel. Its basic principle is based on the T 630/11 and T 1463/11 decisions.

Computer-implemented simulations may be patented at the EPO. This is confirmed by EPO decision G1/19. Patent applications directed to computer simulations should define the technical features that cause the technical effects and solve a technical problem. For these reasons, the COMVIK approach applies to computer simulations. For more information on how the Comvik approach works, see the article below. The COMVIK approach reflects the recent thinking in the G1/19 case.

Enlarged Board of Appeal

The Enlarged Board of Appeal has ruled that it is not compulsory to obtain a patent for computer-implemented inventions. The new category of computer-implemented inventions encompasses those with a technical effect and a direct or indirect link to physical reality. The previous G3/08 decision also rejected the question of whether a computer-implemented invention is patentable when it is combined with other software.

The Enlarged Board of Appeal for software patent cases is likely to hear arguments at least twice a year, with hearings video-streamed to over 1600 patent stakeholders. Patent attorneys hope that the increased accessibility of these hearings will serve as a precedent for the future. For example, the Enlarged Board will be able to hear arguments in person, whereas the public has not previously been able to attend.

The case G 1/19 is notable for a number of reasons, not least of which is that it deals with the patentability of computer simulations, and that its case law may influence the application of software patents in the future. It was the first such hearing to be live-streamed, and it has significant implications for future computer simulation applications. In addition, the Enlarged Board of Appeal has made a precedent in granting a patent on a computer simulation.

While many people may be familiar with the Infineon case, the reasoning in this case is not consistent with the recent precedents. Instead, the Enlarged Board of Appeal cited three cases with diverging views on software patentability. In fineon, the Enlarged Board acknowledged that the case law did not follow a single other case on the same issue. The Enlarged Board ruled that the deviation was a legitimate development of case law.