It is generally known that patenting digital and software inventions can be difficult in a number of territories, including Europe. In this article, we review the hurdles to patentability for those inventions and provide some tips on how to clear them.

Inventions that are excluded from patentability at the EPO

The applicable law for the grant of a European patent via the EPO is the European Patent Convention (EPC). This includes Articles of the Convention itself, as well as the “Implementing Regulations” or Rules, which provide an indication of how the Articles are to be put into effect.

According to the EPC, in general, “European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application” (Art. 52(1) EPC). There are some exclusions and exceptions, either for not being considered inventions (which will be discussed in this article) or for being subject matter that is considered to be unpatentable (such as if it is contrary to morality).

Looking to the exclusions, the EPC states that the following subject matter or activities shall not be regarded as inventions,

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations; 

(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; 

(d) presentations of information,

but only to the extent that the European patent application or European patent relates to such subject matter or activities as such.

A number of these exclusions can apply to software and digital inventions. Software based inventions may be excluded as computer programs as such, but also often include aspects seen as abstract ideas, or as methods of doing business, and are captured by those exclusions as well.

Computer program exclusion

The EPO uses the term “computer-implemented invention” to describe inventions involving computer programs.

“A computer-implemented invention (CII) is one which involves the use of a computer, computer network or other programmable apparatus, where one or more features are realised wholly or partly by means of a computer program” (EPO’s Guidelines for Examination).

CIIs are only excluded from patentability if they are software or programs for computers per se, i.e. if considered and claimed in abstract isolation. Such CIIs are considered to lack technical character. The exclusion from patentability may be circumvented by including something tangible in the claims. The tangible feature could be a computer readable medium, a computer or other physical hardware.

Claim formats relating to digital and software inventions may include:

• A computer-implemented method
• A computer program executed by a processing system
• A non-transitory storage medium
• A component or device / apparatus
• A system

How the EPO assesses “technical character” of software inventions

Once the computer program exclusion has been overcome, there is still the requirement to show that the claimed subject matter involves an inventive step. Software inventions need careful claim wording to present these inventions to the EPO in a way that at a minimum allows the inventor the opportunity to begin arguing that their invention involves an inventive step and meets the other requirements of the EPC. It is important to get this right from the outset, to avoid the EPO adopting an immovable stance with regard to technical character and inventive step.

The EPO considers that a claim towards a software method or method of processing data will not necessarily be excluded from patentability if it is computer-implemented and if it has technical character. In other words, there must be something beyond mere automation or implementation of a program on a computer. The claimed features must be technical, that is they must contribute to the solution of a technical problem. Only the technical features that differ over the prior art cited can contribute to the technical character.

The EPO assesses whether a feature is technical, using the teachings in the specification of the patent application in question to determine whether or not the feature produces the relevant technical effect. Any non-technical features are dismissed prior to assessing inventive step.

For instance, problems and solutions that have been considered technical include:

• diagnostic processing of physiological measurements, resulting in improved monitoring. In one example, the use of a computer-implemented AI apparatus to remove spurious signals, from a heartbeat data set, to improve diagnosis accuracy was seen to be patentable;
• software that analyses or enhances physical reality data;
• software that enables or improves speech recognition;
• software that classifies images or videos based on processing of image attributes;
• a data allocation process that improves latency by reducing memory usage; and
• a computer-implemented method involving the monitoring of the power consumption of nodes within a network that improves network efficiency.

There are some areas of technology in which the EPO case law indicates it is particularly difficult to obtain patent protection at the EPO. These are generally areas in which it is harder to show that the result is technical, or that themselves are excluded from patentability.

Takeaway points

Software may be a series of black boxes but it runs on equipment in the real world. When including equipment in claims, it is important to consider whether the terminology used will overly limit the scope of the invention and whether it is future proofed – will the claim stand up if there are significant developments in hardware? Further, patents are territorial so it is important to make sure protection is obtained in the right country. For example, multiple components may be relaying signals between entities at different locations. It may be crucial to cover each component device separately and in combination with the whole system.

The specification for an application to protect new software methods should include a description of the inputs/outputs to each entity and their specific roles. The description should explain what each of the entities in the claim does, how they do it, how they process information and use the data, where the data is stored, and what interactions they have with the other entities within the system. This helps the EPO Examiner to identify the features in the claims that contribute towards the technical character and reduces risks of clarity issues which are common with computer-implemented invention claims. Explaining any links that the technical features have to hardware and the real world will help to avoid falling into exclusion based on only being an abstract idea.

Things will be off to a good start if the computer-implemented method demonstrates technical character, particularly if a technical effect occurs outside the entity performing that method.

This article is for guidance only. Should you require advice on the patentability of any software related invention, please contact our physics and digital team.