When assessing whether a claim that includes computer-implemented or business method subject matter is patentable, the EPO carries out the following test in order to:
- identify the closest prior art;
- identify distinguishing features of the claim over the closest prior art that provide a technical contribution (ie, technical features that aim to solve a technical problem); and
- assess whether the (technical) distinguishing features would be obvious to a skilled person in light of the technical problem.
There is considerable emphasis placed on the so-called technical features and the technical problem of the invention. The question then arises as to what exactly is required to make a feature and a problem technical. The EPO Technical Board of Appeal provided guidance on what is not technical in Case T1670/07 (Nokia).
A good starting point is to consider the possible extremes. There can be no doubt that a computer itself constitutes a technical feature. Conversely, a method for calculating pension benefits constitutes a non-technical feature. However, what happens when the feature in question is a computer that is used to calculate pension benefits? Is this new feature technical in its entirety; and if not, which parts are technical?
There has been a trend to avoid conceding that any claimed features may encompass aspects that could be deemed to be non-technical. This has manifested itself in three distinct lines of argument that would-be patentees of computer-implemented or business method inventions have submitted to the EPO.
The first argument is that any use of a technical measure must in itself be technical. Hence, calculating pension benefits using a computer is an entirely technical feature. However, in Nokia this line of argument was dismissed as nothing more than an attempt to leak the technical character of a computer through to its use in calculating pension benefits. In other words, the only technical feature present is the computer itself, not the calculation of pension benefits. The take-home message is that if you rely on the use of hardware to achieve patentability, it had best not be in a non-technical field.
The second argument is that, if a feature can prompt a user to carry out an action that is technical, this feature must be technical. For example, the now infamous Microsoft Windows ‘Start’ icon could be said to prompt a user to interact with a computer in a particular way. Therefore, the icon is a technical feature. This line of argument has become common in the smartphone era, because smartphones typically seek to utilise efficiently limited touch screen real estate to prompt users to interact in a certain way. However, in Nokia, the board dismissed this argument as a “broken chain”. In effect, it said that any ultimate interaction prompted by such a feature would be entirely contingent on the user’s thought process and there was no guarantee that this feature would always result in a technical interaction with the computer. Hence, if the features in question are common technical means, such as an LCD display providing information that suggests a user interaction, they are unlikely to be viewed favourably by the EPO.
Finally, it is an accepted principle of patent law that technical prejudices are taken into account when assessing inventive step. For example, if the prior art suggests that something should be done in a particular way only, a patent application directed to a different, but equally viable way is likely to be inventive. Accordingly, the third line of argument attempts to apply this principle to non-technical features. That is to say that if a patent application directed to a new business method is counter-intuitive, or radically different from known business methods, the new business method is inventive. However, in Nokia, the board dismissed this argument by saying that only technical prejudices are taken into account. In the above example, there is no technical reason that the skilled person could not use a computer to implement the non-technical calculation of pension benefits. In other words, programming a computer in a new way presents no technical prejudices. Hence, if a computer is being used in a conventional way, albeit running a new business method, it is unlikely to be considered inventive.
What has the EPO granted patents for?
In the past, European patents have been granted for inventions in a number of fields that might be deemed to fall within the software and business method categories. This includes areas as diverse as image processing, graphical manipulation software, AI, user interfaces, speech recognition, operating systems, genetic algorithms, genetic mining systems, database systems and financial trading systems.
Do the EPO’s guidelines provide specific examples?
As the law develops, the EPO updates its Guidelines for Examination in order to help patent applicants decide whether their inventions are likely to be considered patentable. Recently, the EPO has added a specific section to the guidelines on AI.
In addition, the guidelines now include clarification on how inventions directed towards graphical user interfaces are assessed. In summary, if a graphical user interface credibly assists the user in performing a technical task, then the invention is more likely to be patentable. However, if the invention merely provides an improvement from an aesthetic point of view, the EPO will take a negative stance.