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Dear Santa, can I have the EPO approach on software patentability become the gold standard worldwide?

15.12.17

Dear Santa,

Please, can I have the EPO approach on software patentability become the gold standard worldwide?

On each of the conferences and panels I’ve attended this fall in the San Francisco Bay Area, I heard complaints that the patent system is Increasingly considered not fit for purpose. The reasons include the post-Alice approach on software patentability from the USPTO, as well as the rejection rate at the PTAB.

The view of the patent system is cyclical. We may be going through a bit of a rough patch but I see this more as a matter of readjustment – not a wholesale revamp. When looking at the cases that are rejected under USC 101, chances are the EP member of the patent family, if any, struggled/is struggling before the EPO. Present the case, if US only, to a European Patent Attorney, they will confirm the case would have faced some difficulties before the EPO.

The non-obvious technical solution to a technical problem approach at the EPO, given structure in the early 2000’s with the Comvik and subsequent decisions, will have the examiner disregard any feature of the claim deemed non-technical. Only the ones making a technical contribution in a field outside the list of non-inventions of Art. 52(2) EPC will be retained for as assessment of patentabilty. Quite often, a claim can be stripped of most of its features. A claim may even be characterised as a mere implementation of an abstract idea in an ordinary computer.

You may of course try to overcome the rejections by arguing the technicality of some of these features by looking into the description for amendments as well as problems solved. Yet the limited description available all too often in these cases will be a serious handicap on the European Patent Attorney’s efforts to save the case. I’m not going to cry over these cases as our added matter constrains cannot fix at the examination level the limited analysis done in the drafting phase.

Yet we see more and more in-house attorneys, like the ones I’ve been sitting with the past week, that believe the EPO test is the standard they are going for to address borderline software cases. They believe in arguing the EPO way, i.e. at the spec. level, the technical contributions of the claim features and how they cooperate to bring the technical solution sought to the technical problem.

So Santa, my wish is that more Patent Attorneys realise the EPO standard is at least a clear approach to a software invention, and we all need to sweat over each case and dig deeper into each invention. After all, inventors won’t stop pushing our limits with brilliant ideas in borderline areas. We just need to be even half as inventive as our clients.

This note was authored by Freddy Thiel.