Overcoming the technicality requirement for software inventions at the EPO (T 2653/16)

Overcoming the technicality requirement for software inventions at the EPO (T 2653/16)

A recent Board of Appeal decision at the European Patent Office has demonstrated the difficulties applicants face in overcoming the EPO’s strict requirement that claim features be “technical”.
Many applicants working in software-related fields will be all too familiar with this requirement and this article considers best practices for avoiding the related problems when prosecuting patent applications for software inventions in Europe.
The necessity for computer inventions to be “technical” often presents itself as an early stumbling block for software patents, especially in fields such as finance, advertising, e-commerce and artificial intelligence. It can be difficult to change a European examiner’s opinion on whether an invention is driven by technical considerations and provides an inherently technical effect without explicit supporting evidence from the description. As such, applicants working in these fields often find themselves in the frustrating position of being unable to convince the examiner that their patent application, which clearly relates to a new and useful invention, meets the EPO’s definition of “technical”.  
Board of Appeal decision T 2653/16 reaffirms a key practice point in overcoming objections of this kind – an applicant should ensure that the technical considerations behind the invention, and any relevant technical hurdles in the state of the art, are the main focus of the application, rather than any non-technical, business-related considerations. Otherwise, a European examiner may see this as an easy opportunity to raise an, often troublesome, excluded subject matter objection.
Therefore, a key practice point for applicants operating in these fields is to avoid giving European examiners this easy opportunity. In our experience, best practice is to ensure that your application is drafted to outline as many technical considerations and motivations as possible such that each feature of your invention is framed in the most technical light possible.

In this instance, the applicant – Giesecke+Devrient Currency Technology GmbH – was fortunate that the Board of Appeal ruled in their favour. This decision is a welcome example of how features, initially rejected as being motivated by non-technical considerations, may, in fact, be reconsidered. However, the fact that this case required an appeal highlights the necessity of telling a technical story in your patent application and the potential consequences of not doing so.

Insights - the banknote processing machine application

The application in question concerns a method of calibrating a banknote processing machine in which threshold sensor values of banknotes that are unfit for circulation may be determined automatically. The threshold sensor values are determined automatically from an input indicating a specified rate at which banknotes are to be rejected and a set of sensor values for a training set of banknotes.
Refusal at first instance
At first instance, the examining division considered whether the input indicating the specified rate at which banknotes are to be rejected was motivated by technical considerations. Despite the applicant’s arguments, the first instance examiner considered this input to be driven purely by non-technical, business-related motivations. As a result, the examiner refused to consider this input when assessing inventive step and the application was refused.

The Board of Appeal’s view
The Board of Appeal took a different view. The Board found that the features relating to the input indicating the specified rate at which banknotes are to be rejected did, in fact, contribute to a technical effect over the art due to the manner in which this input was utilised within the invention.
The technical effect here was that the banknote processing machine need not know whether each individual banknote in the training set was fit for circulation. This was achieved by using the input indicating the specified rate when determining threshold sensor values from a training set of banknotes. Accordingly, these features avoided the need for pre-sorting the training set of banknotes or inputting additional data relating to the training set of banknotes. This effect was held to be inherently technical and the features relating to the input were found to contribute to the presence of an inventive step.

Practice points: focus on the technical effect

This decision is good news for applicants, demonstrating that it is possible to change an examiner’s mind on the technicality of software inventions. In particular, if a strong and plausible argument in favour of technical consideration is available, then this decision suggests that such an argument could sway a European examiner.

However, in practice, finding a strong and plausible argument may be difficult. It is not always easy to extrapolate a direct technical effect from a patent application which has not been drafted to highlight the technical considerations. As a result, framing an application to describe the non-technical motivations behind the invention often increases the difficulty, complexity and expense required to bring the application to grant.

Therefore, our advice when drafting a patent application to software inventions is:

  1. Draft your application in a manner that highlights the technical motivations behind each feature of the invention (rather than purely commercial or business motivations). Doing so ensures that a European patent examiner is not given an easy opportunity to raise a non-technical subject-matter objection and, in the instances where these objections are raised, gives you greater certainty and robustness in your arguments against any such objection.

  2. Even after filing your application, maintain communication with your European patent attorney about any technical consequences, motivations or hurdles realised by or faced when developing the invention. These technical consequences, motivations or hurdles could potentially form the basis of successful arguments against a non-technical subject matter objection from the EPO.

  3. If you are unsure whether your patent application is lacking technical considerations, seek professional advice from a qualified European patent attorney at the earliest possible opportunity. The earlier, the better – European patent attorneys can add the most value if involved before the application is filed by, for instance, carrying out a pre-filing review ahead of filing in Europe, assisting foreign agents in drafting the application with European-specific technical motivations in mind, or drafting the application itself. 

Here to help

If you would like more information about the importance of focussing on technical considerations when drafting patent applications, please see our previous articles outlining best practices for patenting software-based inventions in Europe here and here.
If you have any questions about this case or any other related case law, please contact Alexander Crew, or your usual Kilburn & Strode advisor.

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