Patents for Software? How the EPO Examines Software Inventions and what Lessons can be Learned

(parts of the) cover page of a related EPO brochure

During the past 15 years the Boards of Appeal of the EPO have developed a consistent case law as to the pragmatic problem/solution approach for assessing patentability pursuent Art 52 -57 EPC. In our earlier overview on

EPO case law regarding patentability of software inventions,

to which this posting is meant as a more practical continuation, we briefly characterised the EPO’s main examination approach:

[M]odern case law [of the EPO Boards of Appeal on software inventions], especially the suggestion in T 1173/97 that the “technical contribution” is an inventive step consideration and the observation in some early cases (e.g. T 38/86 and T 65/86) that the “inventive contribution” must lie in a “field of technology”, almost naturally lead to the problem-solution approach as developed in T 641/00 (COMVIK) and T 258/03 (Hitachi) and theoretically justified in T 154/04 (Duns).

This approach nowadays is the crucial test to differentiate between a technical contribution implementing a non-technical concept (e.g. a business method) and an inventive contribution in a technical field (e.g. an embedded control software). Its general idea is that only the technical features of a claim may be taken into account for assessing inventive step, while the non-technical features form a basis for formulating the underlying problem, with the effect that the non-technical features may render the technical solution obvious.

This approach is widely accepted among practitioners as enhancing legal security for applicants since it represents a comprehensible benchmark against which EPO decisions are subject to verifiction.

The Problem/Solution Approach. According to the Examination Guidelines of the EPO, Chapter C, IV, 11.5, the problem/solution approach consists of three main stages:

1. determining the “closest prior art” and identifying the features distinguishing the invention from the determined prior art (cf. here),
2. establishing the objective technical problem to be solved based on the identified distinguishing features (cf. here),
3. Verifying whether or not the invention, starting from the objective technical problem, would have been obvious to the skilled person in light of the closest prior art (cf. here).

However, for claims comprising both technical and non-technical features, as it is often the case for computer-implemented methods (“software inventions”) and especially business methods, this general approach has been appropriately extended to consider non-technical features and aspects as well.

Extended Problem/Solution Approach. The extended approach, as sketched below, has been developed by the Appeal Board 3.5.01 in its decisions T 641/00 (“Comvik”, 26.09.2002) and T 258/03 (“Hitachi”, 21.04.2004) and theoretically justified in T 154/04 (“Duns”, 15.11.2006).

In order to allow for flexibly adapting patent law to technical developments and innovations the term “invention” has not been defined in the European Patent Convention – nor in the Germany Patent Act. Instead, both acts comprise a list of explicit exceptions that do not qualify for patent protection. The exception list in Art. 52 (2), (3) EPC and the almost identical wording of § 1 (3), (4) PatG) explicitly specify “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers [...] as such” as being excluded from patent protection.

The limitation “as such” clarifies that the legislator, rather than excluding all “programs for computers” from patentability, in fact intended to give access to patent protection for exactly those software inventions that qualify for not being computer programs as such. The statutory “as such” limitation has been substantiated in the case law of the Boards of Appeal before the background of the consideration of Art. 52 (1) EPÜ (cf. 1 (1) PatG), according to which “patents shall be granted for any inventions, in all fields of technology” by concluding that “programs for computers” shall be subject to patent protection just exactly when they are “technical” or exhibit a “technical character” or “technicality”.

Based on such observations the common problem/solution approach has been extended to equally consider and evaluate technical character, novelty and inventive step of a claimed invention. This test can thus be structured in three coarse steps for examining

1. the technical character of the invention,
2. the novelty of the invention, and
3. the inventive step of the technical features,

whereas each of steps a. and c. represents a “technicality obstacle” which needs to be overcome by a claim to be granted. Step a. relates to the easy-to-overcome “a-priori technicality” that is examined without considering prior art, while step c. relates to the crucial “a-posteriori technicality” that is examined under consideration of prior art and thus is much more difficult to overcome.

Detailed Examination Scheme. The detailed step-wise scheme of the extended problem/solution approach is as follows:

1. Examine whether the claimed invention as a whole exhibits technical character (a-priori technicality, above step a.), wherein
   • prior art is not considered (therefore “a-priori“),
   • novelty/obviousness are irrelevant,
   • the simplest technical feature is sufficient to obtain a-priory technicality (e.g. referring to a technical apparatus for executing a method).
2. If the invention is defined by both technical and non-technical features (mixed-type invention),
   1. Identify the non-technical features,
   2. Determine the non-technical context (“requirements specification”) from the identified non-technical features and the related passages of the specification,
      • which is deemed to be in the public domain per se and
      • which can be considered by the skilled person upon examining inventive step, even if the related features should be novel,
3. Determine the closest prior art of the invention by
   1. determining the individual technical features of the claim,
   2. establishing written evidence of the closest prior art based on only the technical features, whereas
      • written evidence is not required if the technical features are notoriously known, such as a standard computer or standard database (cf. T 641/00, T1284/04, T1928/06).
4. Identify the features distinguishing the invention from the closest prior art,
   • if no distinguishing features can be identified at all, the invention is considered to be not novel (Art. 54 EPC),
   • if only non-technical distinguishing features can be identified, the invention is deemed to be not inventive or obvious (Art. 56 EPÜ).
5. Formulate the objective technical problem underling the invention based on the identified distinguishing features (above step c.), wherein
   • the non-technical context of the invention is considered upon formulating the objective problem (e.g. a non-technical purpose such as “sales promotion”)
6. Examine whether the invention is inventive before the background of the objective technical problem.

The Crucial Point. The specific characteristics of the extended problem/solution approach for examining mixed-type inventions is that the non-technical features of a claim are not simply ignored but are considered in form of the non-technical context upon formulating the objective problem – to the detriment of applicants (!). The second headnote of the Comvik decision T 641/00 puts this important finding like that:

II.  Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.

What can patent drafters and applicants learn from it. Patent drafters and applicants should conclude from the above that upon drafting a patent application and claims for a mixed-type invention the non-technical aspects of that invention should not at all or only to the required extent be incorporated in the claims or the specification – since, as stated above, EPO examiners will readily use such disclosure as part of the non-technical context to the detriment of the patent applicant.

This is particularly the case for possible non-technical advantages of technical features, since disclosing such advantages in the patent specification may render features useless as regards patentability of the claim, even though such technical features are novel and may also be inventive. The reason for such “devaluation” of technical features is that possible non-technical advantages are incorporated in the non-technical context and by this in the objective problem, which then might directly point the skilled person to a technical feature which otherwise might be decisive for the patentability of the claim.

The Comvik case. The potential detrimental effect of disclosing non-technical aspects in a patent application can be observed on the basis of T 641/00 (Comvik/Two Identities), in which the underlying patent application relates to a selective distribution of costs incurred in a mobile telephone network between official and private calls or among different users. The Board took the position that the following features were novel over the closest prior art reference D8 (“GSM standard with SIM subscriber identity module”):

1. the subscriber identity module (SIM) is allocated at least two identities,
2. said at least two identities being selectively usable, wherein
3. the selective activation is used for distributing the costs for service and private calls or among different users.

The board considered features ii. and iii. non-technical since according to the patent specification “eliminating inconveniences caused by distributing costs for service and private calls or among different users” is the – non-technical – object of the invention (reasons no 14, page 12) so that “the claimed concept of selectively distributing the costs for service and private calls or among different users does as such not make a contribution to the technical character of the invention” (reasons no 13, page 12). To arrive at a technical problem, the Board reformulated the non-technical object as being to implement the GSM system in such a way as to allow user-selectable discrimination between calls for different purposes or by different users.

The Board argued further that the skilled person would, by considering this technical problem, conclude from the concept of cost distribution and the fact that in the GSM system a mobile device is linked to a billing account via the IMSI identity number (taught in D8), that discriminating between calls requires allocating different identities (IMSI nos.), as required by feature i., and that an active multi-application card provides commands for selecting the desired a desired identit (taught in D8), as required by feature ii. As to feature iii. the Board took the position that such considerations do not involve any technical ingenuity so that the claim was considered not involving inventive step.

The non-technical feature iii., therefore, does not contribute to inventive step of the claim but only reduces the technical “distance” between the claimed invention and prior art below the “inventiveness threshold”.

Cash Register Example. The possible adverse effects of non-technical claim features and non-technical observations in the specification become even more explicit when considering the hypothetical and simple example of a cash register having a technically implemented add-on module for computing price reductions depending on certain pre-determined rules before the final prices is displayed. Let this cash register being novel and inventive over a conventional cash register not having this add-on module as closest prior art.

Assume that the specification discloses an embodiment in which the add-on module is used for sales promotion, for example in that the bill of every 100th customer is discounted by 10% in order to attract customers to make a purchase.

Since attracting customers to make a purchase clearly is a non-technical advantage of the technical add-on module, the concept of promoting sales by granting arbitrary discounts is part of the non-technical context that provides a skilled person with additional information beyond the available prior art teachings. The cash register with the add-on discount module is thus obvious because a skilled person facing the problem of providing a cash register attracting customers by arbitrarily granting discounts would readily equip a conventional cash register with just that add-on module. Without the hint to sales promotion by granting discounts in the specification, the cash register having an add-on discount module would have been patentable.

Conclusion. In case of mixed-type invention (such as organisational, commercial or intellectual applications of software), EPO examiners are urged by the problem/solution approach to consider any disclosure of non-technical aspects to the detriment of applicants. Therefore, patent drafters should not at all or only to the absolutely required extent incorporate non-trechnical aspects in the claims or specification.Otherwise non-technical aspects could “devaluate” even important technical claim features.