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Computer- Implemented Inventions at the European Patent Office (Whitepaper)

The bar for patenting software is generally higher than for traditional technology. This is mainly due to the fact that “programs for computers” and “mathematical methods” are not considered to be inventions under a legal provision in the European Patent Convention (EPC). This is the intention of the legislator and a political decision. Nevertheless, it is possible to patent software. This whitepaper provides an insight into how software respectively computer-implemented inventions (CII) are dealt with at the European Patent Office (EPO). The information is mainly based on the decision G1/19 of the EPO’s Enlarged Board of Appeal issued 2021. This decision is an all-out attack on CII and provides a good basis for an inside view into the software patenting at the EPO.

You can download a PDF version of this whitepaper.

I. Provisions of the European Patent Office

The basic provisions for computer implemented inventions and all other inventions are set out in Articles 52 and 56 EPC (EPC = European Patent Convention). An issue for computer implemented inventions is that according to Articles 52(2) and Art. 52(3) EPC “programs for computers” as such are not regarded as inventions. In the following chapter, these Articles are examined in more detail, with the information is based on the Enlarged Board of Appeal decision G1/19, points 24 to 27.

The first basic article of the EPC re patentability

Article 52(1) EPC:
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.

“All fields of technology” and “Invention” of Art. 52(1) EPC

  • The reference to “all fields of technology” was introduced in the course of the EPC’s revision (EPC 2000) to bring Article 52 EPC into line with Article 27 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The amendment makes clear that patent protection is reserved for creations in the technical field (see OJ EPO Special edition 4/2007, 48).
  • The claimed subject-matter must have a “technical character”, or, more precisely, involve a “technical teaching”, i.e. an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means (Please see ANNEX I: Basic Proposal for the Revision of the EPC, document MR/2/00, page 43, no. 4). It is on this understanding of the term “invention” that the patent granting practice of the EPO and the jurisprudence of the Boards of Appeal are based. In other words, the “technical character” is an implicit requisite of an “invention” within the meaning of Article 52(1) EPC.
  • The term “all fields of technology” expresses the intent of TRIPS not to exclude from patentability any technical inventions, whatever field of technology they belong to, and therefore, in particular, not to exclude programs for computers as mentioned in and excluded under Article 52(2)(c) EPC (T 1173/97, OJ EPO 1999, 609, Reasons, point 2.3).
  • The Basic Proposal for the Revision of the EPC explicitly states that the above considerations on the technical character of inventions apply to the assessment of computer programs.

Non-exhaustive list of “non-inventions”

Article 52(2) EPC contains a non-exhaustive list of “non-inventions”, i.e. subject-matter which is not to be regarded as an invention within the meaning of Article 52(1) EPC (Please see ANNEX II: T 154/04, DUNS LICENSING ASSOCIATES, OJ EPO 2008, 46, Reasons, points 6, 8).

Article 52 EPC:
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(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;
presentations of information.

The list includes “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers” (Article 52(2)(c) EPC). Even though the “non-inventions” in Article 52(2)(c) EPC cover a broad range of exclusions, they have in common that they refer to activities which do not aim at any direct technical result but are rather of an abstract and intellectual character (T 22/85, OJ EPO 1990, 12, Reasons, point 2).

In other words, based on this list of “non-inventions”, additional conditions have to be fulfilled for patenting software-related inventions compared to inventions in, for example, electrical engineering or mechanical engineering.

Course of EPC 2000 deletion of programs for computers was considered

The negotiations leading up to the EPC 2000 are recorded in travaux préparatoires (= official record of the negotiation). The document „Basic Proposal for the Revision of the EPC (MR/2/00)“ of the travaux préparatoires forms the most important reference document. The document Basic Proposal for the Revision of the EPC (MR/2/00) was drawn up by the Administrative Council and addresses the Revision Conference for consideration. The document was issued on October 13, 2000. MR/2/00 is hence – as part of a subsequent agreement between the contracting states concerning the EPC – a valid instrument for construing the Convention according to the traditional rules of interpretation (see decision G 5/83 (supra), Reasons No. 5, rule (4), and the corresponding Article 31 of the Vienna Convention on the Law of Treaties of 1969; T 154/04, Reasons, point 8).

In the year 2007 an adapted version of the European Patent Convention (EPC) entered into force. This new convention is called EPC 2000. The EPC 2000 comprises inter alia amendments regarding Art. 52 EPC whereby this article, as you know, plays a significant role in computer-implemented inventions.

The „Basic Proposal for the Revision of the EPC (MR/2/00)“ was issued before the final conference of the contracting states to revise the 1973 EPC. In the MR/2/00 the Committee on Patent Law and the Administrative Council has advocated the deletion of programs for computers from Article 52(2)(c) EPC!

Nevertheless, in the final conference of the contracting states to revise the 1973 EPC it was decided that Art. 52(1) EPC has to be amended (introducing the term “all fields of technology”) but Art. 52(2) EPC (list of non-inventions, inter alia “programs for computers”) remains unchanged. The main argument for not deleting the term was that the possible regulation of patent protection for computer programs by EU law (rejected on 6 July 2005 by the European Parliament) should not be anticipated. At the end, the regulation of patent protection for computer programs was rejected on 6 July 2005 by the European Parliament.

Subject-matter or activities “as such”

Article 52(3) EPC limits the exclusion from patentability of the subject-matter and activities referred to in Article 52(2) EPC to “such subject-matter or activities as such”.

Article 52 EPC:
(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

This limitation is understood as a bar to a broad interpretation of the “non-inventions” listed in Article 52(2) EPC (G 2/12, OJ EPO 2016, A27, Reasons, point VII.2(3)(b), penultimate paragraph, referring to T 154/04, Reasons, point 6).

As soon as in a computer implemented inventions a technical feature is claimed, then it is no longer regarded as a non-invention “as such”. This is called the “any hardware approach”.

In other words, Art. 52(3) EPC provides the possibility to apply for a patent for software-related inventions.

Inventive step

Article 56 EPC gives a negative definition of the “inventive step” required under Article 52(1) EPC, by setting out that an invention shall be considered as involving an inventive step “if, having regard to the state of the art, it is not obvious to a person skilled in the art”. In order to assess inventive step in an objective and predictable manner, the so-called “problem-solution approach” was developed, consisting of the following stages:

(i) determining the “closest prior art”;

(ii) assessing the technical results (or effects) achieved by the claimed invention when compared with the “closest prior art” determined;

(iii) defining the technical problem to be solved, the object of the invention being to achieve said results; and

(iv) considering whether or not the claimed solution, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person (see, for example, Case Law of the Boards of Appeal, 9th ed. 2019, I.D.2).

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Basic Decision on Computer Implemented Inventions

The Enlarged Board of Appeal of the European Patent Office discussed older case law in its decision G 1/19 about computer implemented inventions, including decision T 1351/04. This decision is discussed with respect to “data intended for controlling a technical device”. According to G1/19 this data may be considered to have technical character because it has the potential to cause technical effects. In the following, we will take a closer look at this relevant decision T 1351/04.

The appeal in the case T 1351/04 is against the decision of the examining division to refuse the European patent application No. 02 258 100.3.

Subject matter of the application in suit

The claimed subject matter is in regard to create a specific index-file from a csv-file (e.g. an Excel-file). By employing the index-file, it is possible to significantly increase the speed of data extraction from a large-size csv-file. In the figure 1 below, you can see an example of the csv-file (on the right hand) and of the index-file (on the left hand).

The claimed subject matter is in regard to create a specific index-file from a csv-file (e.g. an Excel-file).
Fig. 1: example of the csv-file (on the right hand) and of the index-file (on the left hand)

For the claimed subject matter, the csv-file requires records containing fields forming different hierarchical levels, see figure 1 above on right hand side (top hierarchical levellower hierarchical level). The index-file is in principle built as a tree structure. This means, in the index-file information of the csv-file are connected/arranged in a tree structure. This looks schematically as follows in figure 2:

Schematic view of tree structure

Because the records in the index-file (based on the csv-file) are arranged in the tree structure, the respective record is called a “node”. When you look in figure 1 right hand, you can see that in the csv-file there are records like “COOLING AND HEATING” and “HOUSEWORK” as the top hierarchical level. Depending on these there are further records respectively. The hierarchical records in a row of the csv-file are key character strings. The hierarchical record of the csv-file is mapped in the tree structure of the index-file. At each node there is also so-called management information, which includes information about the starting position and the number of corresponding records in the csv-file to be searched. This information permits the desired records of the csv-file to be retrieved directly when the node having the desired key character string has been found (cf para. [0042] of the description). When only keys of high-level nodes are used it is thus not necessary to follow the tree structure all the way down to the leaf nodes in order to retrieve the desired record information.

In other words, the hierarchical structure of the csv-file is transformed in the tree structure of the index-file, wherein addition information like starting position and number of corresponding records are stored. With this arrangement information of the csv-file can be retrieved by the index-file faster.

Is the subject matter of the application technical?

Yes, since the claimed method requires the use of a computer.

Features of the subject matter contributing to the technical solution of a technical problem

To assess the inventive step it must first be considered in how far the features of the claim contribute to the solution of a technical problem. The board took a look at the following feature since it is a distinguishing feature over the prior art:

“each node in the index includes the starting position information and number information used for retrieving records”.

As mentioned above, these features are part of the index-file and are called management information.

According to the description of the present application, the invention relates to a method for “promptly searching for and extracting data from a file” (cf paragraph [0001]). The data searched for can be of any kind, eg of a commercial nature as in the described embodiment, and thus have no technical relevance in themselves.

The data are stored as records having certain “start positions“, ie memory addresses in the file to be searched. The computer reads these addresses in the form of the “management information” in the index-file and retrieves the associated data from the csv-file to be searched. The management information thus controls the computer by directing it to a certain memory location.

Functional data, intended for controlling a technical device, are normally regarded as having technical character. The management information contained in the present claims should be regarded as contributing to the technical character of the search method according to the Board of Appeal.

It follows that the mentioned feature that has a direct bearing on how the search is conducted should be considered for inventive step.

Is the data decisive?

Further, in the decision the BoA refers to the decision T 52/85. This seems to suggest that as long as a claimed method for searching a data file is concerned with the way a computer performs the search, it may be technical. If however the kind of data is decisive, the method’s contribution is nontechnical (cf T 52/85, point 5.2). As noted above, in the present case the kind of data searched for is of no importance.

Practical advice

In order to support possible argumentation of the technical character of claimed subject matter comprising “functional data” it would be beneficial, when the functional data is not only disclosed in a abstract manner but also in regard to the machine-level of the computer. E.g. as mentioned above it could be disclosed that the management information controls the computer by directing it to a certain memory location.

Further information

Claim 2 of the main request in the appeal:

computer-executable file search method for searching a file to be searched (3),

said file to be searched (3) including records having fields allocated to each of a plurality of hierarchical levels and being constructed so that records having the same key character string in a field at the same hierarchical level are arranged in series and wherein for each record, the first field is the top hierarchical level, and subsequent fields form lower hierarchical levels,

the method comprising computer-executed steps of:

  • creating (S3) an index file (5) using the method of claim 1;
  • accepting (S5, S6; S10, S11)) an instruction to search for data relating to a specified key character string over said file to be searched (3), the instruction including selection of either a data extraction output or a drill-down business form output;
  • retrieving (S7; S12, S13) from said index file (5) management information about one or more records related to the specified key character string on said file to be searched;
  • extracting (S8; S14) data of the one or more records from said file to be searched (3); and
  • outputting (S9) the extracted data;

wherein the retrieving and extracting steps comprise

when the data extraction output is selected, retrieving (S7) start position information and number information as management information about records related to the specified key character string and extracting (S8) data of a number of records specified by the number information from a position specified by the start position information;

and when the drill-down business form output is selected, retrieving (S12, S13), based on the pointer, a start position of a record of the node management information of the lower hierarchical level, and extracting (S14) data of the record based on the retrieved start position of the record.

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