Patent Power Half Hour is Kilburn & Strode’s information-packed, supercharged webinar series. We dive into typical stumbling blocks at the EPO and share practical tips to avoid them. All delivered in 30 minutes or less!
Here is a summary of the key take-aways from the webinar that ran on 5 May 2021, covering patenting software in Europe.
To patent your software invention in Europe, you should have a narrative around the technical character of your invention.
The EPO applies a hurdle-step-hurdle approach when assessing a claim. The first hurdle is a low one. It asks if there is any hardware in the claim - reciting a computer or a processor will do. The intermediate step and second hurdle refer to the EPO's "COMVIK" approach. The step filters the novel features of the claim which contribute to the invention’s technical character from those which don't. Only the former are used when assessing the inventive step of the invention. Importantly, novel claim features that, on their own, could be said to be non-technical can still contribute to an invention’s technical character. Conversely, an inherently technical feature might not contribute to the technical character of the invention at hand.
In G1/19, the EPO's Enlarged Board of Appeal emphasised the importance of the intermediate filtering step. The Board also said that computer simulations, like other computer-implemented inventions, might be patentable, but only if they have technical character. In other words, the approach outlined above applies to simulations.
Technical character can occur from the input or output of a computational process. It can also result from internal processes within the computer itself.
Arguing for technical character
To successfully argue that a feature has technical character it should be linked to one or more technical effects.
When looking to build an argument for the technical character of a feature, have in mind that features that purposively use technical means to achieve an improvement are considered technical. So, a good starting point is to review a specification to look for evidence on how and why the feature is chosen based on technical considerations, and the technical effect that the feature produces. Technical effects can include relative effects such as improved processing speed, reduced memory, improved scalability, reduced traffic, and improved efficiency.
Arguments for technical effect can go beyond the literal description to include what a skilled person in the field, using their common knowledge, would understand to be a technical effect of the feature. Asking whether the feature would have been selected by a technical or a non-technical expert can also be helpful in formulating arguments to link a feature with a technical effect.
Strategic arguments setting out which features have technical character, and why, lay a firm foundation for successful inventive step arguments for computer-implemented inventions.
Technical character from computational inputs and outputs
A technical effect associated with the input or output of a computational process is often achieved through a link with physical reality.
For inputs, this link to physical reality may be achieved through the nature of the data itself. For instance, measurements are considered to have technical character as they are based on an interaction with physical reality when they’re being taken. Alternatively, the input might be received from a technical system allowing user interaction. For example, a link to physical reality might be provided by a system allowing a user to click on a graph to produce a user interface (T2019/12) or to set processing conditions by reciprocating a document icon over a printer icon (T1188/04), or a system comprising a touch keyboard using defined letter areas to predict intended letter strikes (T0673/8).
For outputs, a link to physical reality may be achieved through the control of a technical system, for example, the imaging tubes of an x-ray apparatus (T26/86). The output might indicate the internal state of a technical system, for example the current and most favourable gear for a vehicle (T362/90). Alternatively, the manner in which the output data is presented may have a technical effect, for example the continued display of pass guide marks at the end of a display area to solve conflicting technical requirements of the display screen in a virtual game (T928/03).
The narrative you can construct on technical character will always depend on the facts of the case. While much can be done with argumentation during prosecution, including appropriate language in the application on filing is ideal, both to support technical character arguments and to provide basis for claim amendments. Best practice is to associate specific features with specific technical effects. To that end, there are a number of actions that might be helpful:
Review and update your guidance to US outside counsel regarding information to include during drafting;
Review and update invention capture forms to capture the information on technical effects;
Consider co-drafting with a European attorney to ensure appropriate language is included in the draft;
Consider pre-filing reviews and amendments before filing in Europe; and
Consider a go/no-go assessment to allow you to concentrate your resources on those cases that are more likely to succeed in Europe.
If you would like to discuss this article or suggest any topics for future Patent Power Half Hour webinars, contact us via Insights@kilburnstrode.com.
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