European software patentability: The big split

European software patentability: The big split

The long and winding code – a short history of European software patentability through the lens of pop culture

We’re taking you on a journey through the history of software patents in Europe, through the lens of pop culture. By zooming out and looking at the big picture of what the EPO has taught us over the years, we’ll be building up a clear vision on what you need to do to improve the success of your software patents at the EPO. At each step along the way through history, we’re stopping to see a case where the EPO redefined the law in a way that is still applied today.
In the 70s we saw the beginning of the end of software patents (see Part I), then the 80s suddenly made software inventions patentable in Europe – if “technical” (see Part II), whilst the 90s brought us clarity on what “technical” really means (see Part III).

Instalment IV: the big split

We now move into a new millennia for the next instalment of our story, to 2002, the year of the big split. No, not the departure of recently disgraced boyband heartthrob Justin Timberlake from NSYNC to go and Justify his position as a pop legend by crying us rivers and rocking our bodies. I’m also not talking about arguably the biggest celeb split of the noughties when in the same year Britney Spears’s relationship with fellow Mickey Mouse Club cast member Justin Timberlake (yes him again) went toxic. No, we’re talking about something far more exciting, something that we are seeing impact our daily lives even today. Its name was Comvik and it split European patent claims in two… forever.
In the Comvik decision of 2002, the EPO stated:
An invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step.”
Suddenly software patent practitioners across Europe were seeing their claims split in two: (1) those features that were considered to contribute to the technical character of the invention; and (2) those that did not. Then when assessing inventive step, only the technical features were able to be used to assess inventive step.
This case has had a monumental impact on the way that the EPO treats software inventions. Sadly, from practitioners’ perspectives, it is probably the source of many of our troubles at the EPO. Too often software claims can be ripped in two by the EPO to leave just the bare bones of a standard computer as the technical features that can be used to assess the technical effect. However, this strict implementation of the Comvik decision is often incorrect. The correct approach in the present day, is summed up very nicely by the EPO’s Guidelines for Examination (G-VII, 5.4):
"When assessing the inventive step of such a mixed-type invention, all those features which contribute to the technical character of the invention are taken into account. These also include the features which, when taken in isolation, are non-technical, but do, in the context of the invention, contribute to producing a technical effect serving a technical purpose, thereby contributing to the technical character of the invention. However, features which do not contribute to the technical character of the invention cannot support the presence of an inventive step”.
In practice, it is therefore critical to ensure that the technical effect of an invention is properly understood in order to determine which features of the claim are technical and which are non-technical. It is only with this proper approach to splitting the claim that a correct assessment can be carried out. Through the correct application of Comvik, a skilled European patent attorney can turn a patent claim that the EPO initially finds unallowable, into something patentable.
Whilst the big split caused by Comvik has changed the way we look at software claims in Europe, and it has caused us problems along the way, it also offers a way to enable us to look at and understand the claim as a whole to get tricky software patents through to grant.
If you’re interested, you can read the decision here: Two identities / Comvik T 0641/00.

If you have questions about patenting software or related inventions in Europe, please contact Nick Shipp or your usual Kilburn & Strode advisor.

Preview of Instalment V: Cheating your way to the finish line

2004 was a pivotal year for seemingly phenomenal, but ultimately shamed, cyclist Lance Armstrong. It was the year he “won” his 6th consecutive Tour de France, an achievement like no-other seen before. However, the publication of the book “L.A. Confidentiel: Les secrets de Lance Armstrong” by Pierre Ballester and David Walsh, which first exposed evidence of cheating by Armstrong, was also published the same year. This book marked the beginning of the end for Armstrong, but it was not until 2012, 8 years later, that pressure mounted and Armstrong was finally stripped of his medals. Rules are rules and Armstrong was a cheat.
In a very similar manner, in the very same year, the EPO set-out the Hitachi online auctioning case which taught us that changing the rules also doesn’t work for software patents. Continue reading ►

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