The Patentability of Computer Implemented Inventions (CII) at the European Patent Office

A large number of patent applications are filed at the European Patent Office (EPO) for computer implemented inventions – a term defined by the EPO to be “an invention that works by using a computer, a computer network or other programmable apparatus and that to qualify [as a computer implemented invention], the invention also needs to have one or more features which are realised wholly or partly by means of a computer program”.

More generally, the term is an umbrella term used to describe methods of processing which are implemented using a computer (such as steps in an E-commerce application, a method of managing resources), a computer program (a piece of software which when run on a processor causes the processor to perform in some way) or a device (a physical tangible product, such as a medical X-ray machine, a computer, a mobile telephone or a signal transmitter).

The European Patent Convention (EPC) states that “European patents shall be granted for any inventions, in all fields of technology” and the EPO interprets this to mean that an invention should be of a technical nature. Unhelpfully, the term ‘technical’ is not defined in the EPC, but case law has developed the notion of ‘technical character’ which, when present, confers a technical nature on subject matter, and in doing so avoids exclusions under the EPC.

The approach to examining computer implemented inventions at the EPO involves determining those features of the patent claims that have technical character and then, whether the claimed invention is new and inventive. This involves identifying the closest prior art (what is already known) and the technical features of the claimed invention that are new and which contribute a solution to a technical problem. Finally, a decision is made as to whether the identified technical features would be obvious to a skilled person in light of the technical problem.

The following are examples of European patent applications filed at the EPO in respect of computer related subject matter which illustrate the application of the above examining procedure.

Example 1

European patent application No. 88 302 239.4 related to a conventional computer system used for controlling an improved pension benefit plan. The invention will have technical character by virtue of its implementation on a conventional computer system – so the claimed invention is not excluded under the EPC.

The key distinguishing feature of the invention is the actual pension benefit plan itself, and this gives the invention novelty over other known pension benefit plans. However, the pension benefit plan is a non-technical feature since it relates to an abstract economic entity, and so can not be considered in the assessment for an inventive step. The only technical contribution is the computer which has been programmed with the non-technical pension benefit plan. When the pension benefit plan is run on the computer it will not effect the operation of the computer in a way bringing about a technical effect which provides a solution to a technical problem.

The invention is considered to lack an inventive step because use of a conventional computer system is well known, and the features of the pension benefit plan are defined in terms of data processing steps, the implementation of which would be obvious to a skilled computer programmer. In this case the European patent application was refused [T931/95] (Adapted example from Visser, D The Annotated European Patent Convention, page 118, Eighteenth Revised Edition, H. Tel Publisher, 2010).

Example 2

European patent application no. 03090251.4 related to an E-payment loyalty program in which various interconnected accounts held customers and traders financial resources and bonus points. Also disclosed is a method of transferring money and points between the accounts. The invention was defined in terms of common place features relating to the technical implementation of a “business method” using a computer. Unsurprisingly, the EPO was unable to formulate a technical problem which might have required an inventive technical solution, so the application did not progress far at the EPO.

Example 3

European patent application no. 02100140.9 disclosed a system having sensors for measuring a weight parameter of a vehicle and a data processing unit coupled to the sensor(s). The data processing unit was specifically designed using computer programs to compute the maximum permissible weight value for a planned journey in accordance with a programmed default value and to monitor the maintenance of the maximum permissible weight value. A unique combination for a weight monitoring system having clearly technical features working together to solve problems concerning vehicle routing with software adapted to compute a parameter for a clearly physical entity (i.e. maximum weight of a vehicle) resulted in the grant of European Patent No. 1336824.

Example 4

European patent application no. 04255941.9 related to the contention problem for RAM (which results when multiple accesses are attempted by computer resources for the same computer memory bank). The invention provided a new approach to the contention problem by incorporating an access flow regulator which would signal when a RAM bank was busy and so divert the competing computer resources to other available RAM banks. This inventive solution to a clearly technical problem resulted in the grant of a European patent no 1528477.

Conclusion and and Practice Points

The patent attorneys at MacLachlan & Donaldson will be able to give you guidance as to whether your computer implemented invention may be protected with a European patent.

To give you the best chance of successfully obtaining a European patent we recommend beginning with a thorough review of the prior art so that it’s technical shortcomings or problems can be understood and described. This sets the scene to then describe your own invention in terms of how it provides a solution to a technical problem. A patent application should then go on to describe the processing steps that are needed to achieve the technical solution to the problem. Flow charts and schematics are extremely useful to achieving this. It is also essential to describe as many practical applications and/or implementations for an invention as is possible, but at the very least describe one specific and concrete technical implementation and all of the technical features needed for the implementation.

For further information, or to discuss your own software or computer implemented idea, please contact Jonathan White by email at mail@maclachlan.ie

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