European software patentability: The Business Person is Boss

European software patentability: The Business Person is Boss

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.
From Parts I to X, we have started to get a clear picture of the cases that define the EPO’s approach to software patentability. We now reach our final stop on our journey, which takes us to 2016.

Part XI: The Business Person is Boss

Undoubtedly the biggest news of 2016 was that the ultimate businessman, the master of the Apprentice, the man that was always on an upward trajectory both in his building projects and his career was now also the ultimate boss. Yes, Donald Trump was inaugurated as the 45th President of the United States.
Over at the EPO, everyone was also talking about the rise of the business person too, but in this case it wasn’t the President they were discussing but a somewhat more obscure notional business person.
The case known as Cardinalcommerce had been issued by the EPO and it changed the way that the EPO assesses which features are technical and not technical in accordance with the principles set out in Comvik back in 2002.
At the EPO we had been very used to the concept of the skilled person for decades. She or he was the notional person skilled in the art who is presumed to be a skilled practitioner in the relevant field of technology who has average knowledge and ability and is aware of what was common general knowledge in the art at the relevant date. The skilled person is presumed to have had access to everything in the "state of the art", in particular the documents cited in the search report, and to have had at her or his disposal the means and capacity for routine work and experimentation which are normal for the field of technology in question. However, the question in the Cardinalcommerce case was whether or not the skilled person alone is the right person to determine whether or not features of a claim are technical which can be used for the assessment of inventive step, or non-technical features, which cannot.
The case firmly installed the concept of the notional business person who could be used to assess which features are technical and which are non-technical. This was a fictious business person equivalent to the skilled person having specialist business knowledge but no technical knowledge. What this case strengthened was the idea that by formulating the problem from the perspective of the notional business person, a person with no technical knowledge, it would be possible to truly understand what technical problems existed, or what technical solutions were presented.
The key impact of the Cardinalcommerce case was that it provided a clearer mechanism to enable European patent attorneys to set out what the skilled person would be presented with by the notional business person. In short, clarity is provided on how to distinguish between technical features, which can be used to assess inventive step, and non-technical features, which cannot.
Whilst Trump’s term in office certainly managed to divide opinion, I think that European patent attorneys are united behind the benefit of the notional business person to consideration of inventive step at the EPO.
If you’re interested, you can read the decision here: Universal merchant platform II / Cardinalcommerce T1658/15

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 XII: Zooming back in 

We’ve taken you on a journey through the history of software patents in Europe, through the lens of pop culture. In Part I taking place in 1977, we saw a scene of gloom set in which the likelihood of software patents being granted at the EPO looked close to impossible. However, over a period of more than 40 years since then, the EPO’s Board of Appeal has a shown that a different reality exists today.... Coming soon►

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