Essential guidance on patenting software-based inventions at the EPO

Essential guidance on patenting software-based inventions at the EPO

Essential guidance on patenting software-based inventions at the EPO (T 697/17- SQL extensions/Microsoft Technology Licensing)

The headlines

A recent Board of Appeal decision at the European Patent Office has reaffirmed a key practice point in the drafting of software-based patent applications for Europe: make the technical considerations which were at play when designing an invention the main focus of your application.
In its decision, the Board provides further guidance on how features of an invention should be assessed to determine whether they contribute to providing a patentable “technical effect”. The key conclusion is that features which are specifically chosen with the intention of overcoming a technical problem in the prior art are more likely to be considered relevant for patentability than features chosen based on business-related motivations.
In practice, it might be difficult to prove whether a feature was motivated by technical or business considerations during prosecution without supporting evidence. Our advice is therefore to draft your applications to include as many technical considerations and motivations which went into devising the invention as possible. It might not always be possible to “fix” applications for Europe at a later stage due to the strict approach taken by the EPO in relation to added subject matter, so getting this detail in at the outset is of the utmost importance. It will be harder to convince an Examiner that a technical consideration was at play if it appears to have been “made up” during prosecution.
Emphasising technical considerations is especially important when patenting technology in areas the EPO tends to consider non-technical, like fintech, e-commerce or even aspects of AI. When drafting, ask yourself and the inventors why each identified feature is needed and how such a feature disrupts existing solutions in a technical way. That is, what does the feature in question do to bring about technical advantages such as security of data exchange, speed of computing, reliability of services and the like.
We know that prosecuting software-based patent applications in Europe can be a frustrating experience for applicants, especially for those in sectors such as finance, advertising and e-commerce. It is galling to be told by a patent examiner that an invention which is clearly useful and provides benefits to the user is “non-technical”, or merely uses a computer as a tool to perform abstract ideas.
This decision by the Board of Appeal therefore comes as welcome guidance on how to avoid such disappointment. The message is clear – tell a technical story, not a commercial one, from the outset if you want to bring EPO examiners on side.

The detail

The EPO has traditionally taken a fairly hard line with regard to inventions relating to software, in particular on the issue of whether a claimed invention is “technical”. For US practitioners in particular this can prove frustrating, as seemingly novel and useful inventions are refused in Europe as being “non-technical”.
Pleasingly, decision T 697/17 issued by the EPO’s Board of Appeal provides some applicant-friendly guidance on how to maximise the chance of an invention being deemed “technical”, and therefore patentable, under European law.

Refusal at first instance

In the decision, the Board was addressing an application relating to an “execution algorithm” which allowed values in a database structure to be updated more efficiently.
At first instance, the application was rejected because the execution algorithm was considered to be a non-technical scheme which served no technical purpose, but instead consisted of a number of steps dictated by abstract logical or administrative considerations. In effect, the first instance examiner appeared to consider the invention to relate to a non-technical scheme (managing a database) implemented on a standard, common-place computer.
As a result, the first instance examiner refused to take any of the features of the execution algorithm into account when assessing inventive step. It was then argued that the only remaining features were those of a standard computer. Hence the application was refused at first instance for a lack of inventive step.
Refusals of this nature will be familiar to applicants who regularly file applications in the software-based invention space, especially when one or more features are considered non-technical in isolation, i.e. providing a contribution solely in a field excluded from patentability under Art. 52(2) EPC.

The Board’s view

On considering the case, the Board of Appeal took a different view. The Board essentially addressed the following question:

Can a method directed to implementing a "non-technical scheme" such as a business method, a presentation of information or a computer algorithm on a computer ever be technical?

Encouragingly for applicants, the Board of Appeal’s decision implies that the answer to this question may not always be “no”. In particular, the Board’s decision emphasises the importance of re-assessing an apparently “non-technical scheme” in light of the prior art that has been found. The re-assessment must include those features which at first glance appear to be non-technical. In our experience, this re-assessment step is frequently performed poorly, if at all, by EPO examiners.
The Board’s decision is therefore good news for applicants. Firstly, it is a reminder to examiners that inventions should not be assessed in a vacuum, but rather should considered in the context of the existing prior art available. Secondly, the decision highlights the fact that features which are initially considered to be non-technical may in fact be deemed technical, if it can be shown that they contribute to providing a technical advantage over said prior art.
In the case at hand, the Board pointed out that the execution algorithm, which at first appeared to be a non-technical scheme for managing a database, in fact enabled a computer to carry out new tasks in a more efficient way. In other words, the algorithm brought about an improvement in the functioning of the computer over and above the capability of a general-purpose computer. It was not therefore appropriate to completely disregard the features of the execution algorithm from the assessment of patentability, as the first instance examiner had done.

When might a “non-technical” feature actually be “technical”?

The Board’s position on this question can be summarised as follows – a feature is likely to make a technical contribution if:

  • the choice to include the feature was motivated by a technical consideration, such as how to improve processing speed, reduce memory usage, reduce network traffic or the like; and

  • the feature combines with the prima facie technical features of the invention (such as the processor) to achieve this technical advantage.

Therefore, if a feature can be shown to meet these two criteria, there is a good chance that it contributes to providing a technical effect and must be taken into account when assessing novelty and inventive step. This is the case even for features which, at first glance, may appear to relate to non-technical schemes, such as the features of the execution algorithm in the case at hand.

Practice point: focus on the technical considerations

This decision is an empowering one for applicants, because it means that there are things you can do when drafting your applications to increase your chances of success at the EPO.
In particular, the main take-home lesson is that applications should be drafted to include as many technical considerations and pointers as possible. If a feature of your method or scheme combines with a computer to provide a technical advantage, then say so! It will be much easier to argue for patentability further down the line if these technical considerations and advantages are all clearly stated in the application as filed.
Right from the start of the application, lead with a technical story, not a business one. What technical problems does your invention address? What technical choices went into designing the invention to overcome these problems? Imagine your target reader as a software or computer engineer – what aspects of your invention might interest or impress that person?
Another way of ensuring you capture these aspects is to let the above approach inform how you run invention-capture sessions with your inventors. During these sessions, make sure to ask the why questions as well as the how questions. In other words, ask your inventors why they implemented something in a particular way. What benefits does it achieve? If those benefits include improved speed, efficiency, scalability or anything similar, then include that information in your applications.
The Board’s decision reaffirms that, by following this approach and filling your applications with plenty of pointers to the technical advantages provided by your inventions, your chance of success at the EPO will significantly increase. Tell a technical story, demonstrate the technical benefits of your inventions, and get your computer-based inventions the recognition they deserve at the EPO.

If you would like to read more on this topic, you can find our guide on running invention capture sessions here. You can also find further guidance on drafting software-based patent applications here.

If you would like to have a word with Benni or Greg about this article, or patenting software-based inventions in general, feel free to email them, or get in touch with your usual Kilburn & Strode advisor.


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