Patenting of Computer-

implemented Inventions:
The view of the EPO
V Jornada de Propiedad Industrial en las TIC, Madrid 27 mayo 2014

José Santacroce
Director, Cluster Computers
European Patent Office

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Computer-implemented Inventions (CII)

computer program
get inputs; compute
maximum; return the result;

A
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• FindArrayMax (t[ ], minI, maxI) g
• { for (I = minI; I<=maxI; I++) underlying o
• if (max < t[ I ]) max = t [ I ]; concept r
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• return (max);
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m

software: diskette, CD, DVD,

manuals

2
Computer-implemented Inventions

Algorithm

implementation

Program for
Program for Specific circuits
a standard computer
a standard computer
with specific circuits

3
Computer-implemented Inventions

Computer-implemented invention (CII) is

- an invention whose implementation involves the use

of a computer, computer network or other
programmable apparatus
- with features realised wholly or partly by means of a
computer program

Examples:
a program-controlled ...
fault tolerance scheme;
washing machine cycle;
car braking system;
mobile telephone mode;
etc.

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European Patent Convention

Article 52 (1):

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

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European Patent Convention
Article 52 (2) and (3):

The following, in particular, shall not be regarded as

inventions
- discoveries, scientific theories, mathematical
methods
- aesthetic creations
- schemes, rules and methods for performing mental
acts playing games or doing business
- programs for computers
- presentations of information

Only to the extent to which a European patent

application relates to such subject matter or
activities as such.
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Interpretation

Non-Inventions

- Activities falling within the notion of a non-invention

would typically represent purely abstract concepts
devoid of any technical implication.
- A non-invention has no technical character

T 258/03 - HITACHI

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Interpretation
Technical Character

An invention must have technical character to the extent that it

must:
relate to a technical field,
concern a technical problem,
have technical features in terms of which the matter for which
protection is sought can be defined in the claims, and
result in a technical effect.
What is "technical" cannot be defined by a simple, workable and
commonly accepted definition.
Positive and negative examples of "technical" work better.
Software can be used for both technical and non-technical
applications.
Interpret grey areas, e.g., Boards of Appeal decisions (case law).

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Interpretation

Technical is (non-exhaustive list):

 processing physical data parameters or control values of

an industrial process

 processing which affects the way a computer operates

saving memory, increasing speed
security of a process, rate of data transfer etc.

 the physical features of an entity

memory, port, database, etc.

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Interpretation

- features relating to non inventions within the

meaning of Art. 52 (2) EPC are non technical features
• selling, trading, insurance
• choosing amongst candidates for a job
• order placement and management

- processing non-physical data (e.g. monetary values,

business data, graphical presentation (graphs) and
text are not physical data).

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Interpretation

...for computer programs and

computer program products...

The computer program, when carried out has to

provide a "further technical effect“
The normal technical effects like flow of electrical
current are not sufficient

T1173/97 - IBM
T0935/97 - IBM

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Claims Types for CII
1. A method of operating a data-processing system comprising steps A, B, ...

2. (a) A data processing apparatus/system comprising means for carrying out the
method of claim 1.
(b) A data processing apparatus/system comprising means for carrying out step A,
means for carrying out step B,...

3. (a) A computer program (product) adapted to perform the method of claim 1.

(b) A computer program comprising software code adapted to perform the steps A,
B,...(when executed on a data-processing apparatus/system).

4. (a) A computer readable storage medium/data carrier comprising the program of

claim 3.
(b) A computer readable storage medium/data carrier comprising instructions to
cause a data processing apparatus/system to carry out steps A, B, ... (when
loaded into said data-processing apparatus/system).

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EPO Examination Practice on CII
Start

no No technical character,
Technical exclusion under Art. 52(2)
features, a priori? and (3) EPC

yes

All features yes Lack of novelty,

known from prior Article 54 EPC
art?

no

Determine CPA & Difference;

Establish objective technical
problem

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EPO Examination Practice on CII (ctd.)

no No technical contribution,
Technical effect Lack of inventive step,
arising from Art. 56 EPC
PSA?

yes

Is solution of the yes Lack of inventive step,

technical problem Article 56 EPC
obvious?

no
Verify remaining EPC
requirements

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EPO Practice: Exclusion

 Subject-matter is not excluded from patentability

× Subject-matter is excluded from patentability

Subject-matter

Technical character
No technical character

At least one feature has technical character =>

subject-matter has technical character.

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Example I: Exclusion
A method of controlling payment and delivery of content,

Non-tecchnical process/ aspects

the method comprising:
– a provider receiving a request for content from a user;
– the provider accessing content information describing the
requested content;
– the provider accessing regulation information describing at
least one regulation that is related to the payment and the
content information of the requested content and to
geographical information of the user;
– determining the geographic location of the user;
– the provider determining whether the requested content
satisfies the at least one regulation;
• if so, delivering the requested content to the user for free;
• if not, transmitting a payment request to the user.

Clearly Technical Aspects

none

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Example II: Computer-implemented business method

A computer-implemented method of controlling payment and delivery of

content within a computer system comprising a user terminal, a provider
server and a database which are connected via a communication network,
the method comprising:
– the provider server receiving a request for content from the user
terminal;
– the provider server accessing in the database content information
describing the requested content;
– the provider server accessing regulation information in the database
describing at least one regulation that is related to the payment and
the content information of the requested content and to geographical
information of the user;
– determining the geographic location of the user;
– the provider server determining whether the requested content
satisfies the at least one regulation;
• if so, delivering the requested content to the user terminal
• if not, transmitting a payment request to the user terminal.

= business process
+ Does this merit
a patent?

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Example II: Computer-implemented business method

Clearly Technical Aspects Non-Technical Aspects/ Process

A computer implemented method comprising:

- a server receiving data from a terminal over a Same business process

communication network; as in Example I
- the server accessing data in a database;
- the server processing the accessed and received
data;
- the server transmitting the processing result to
the terminal;

no technical interaction
does not contribute to technical character

The subject matter of the claim defines technical and non-technical aspects and
thus has technical character.
assessment of novelty and inventive step

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EPO Practice: Inventive step

Problem solution approach

Establish closest prior art (always chosen from a field of

technology).

Determine differentiating features and their technical effects.

Formulate the objective technical problem (derived by the

technical differences between the closest prior art and the claimed
subject-matter, it must be a technical problem, however a non-
technical aim may appear as a constraint that has to be met).

Decide whether the proposed solution is obvious for the skilled

person (skilled in a field of technology, in this case information
technology, no knowledge of non-technical fields, e.g. finance).

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Example II: Inventive Step

Technical character: yes

Non-technical aspects: yes
Requirements = business method:
specification: "ordering content and calculating its price"

Closest prior art: computer system comprising a server,

database, and a terminal which are
connected via a communication network
Differences: said business method
Skilled person: data processing expert

Objective technical automate said business method on said

problem: computer system
Solution: implementation/ automation is considered
obvious

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Example III: Computer-implemented business method

• A computer-implemented method of controlling payment and delivery of

content within a computer system comprising a user terminal, a provider
server and a database which are connected via a communication
network, the method comprising:
– the provider server receiving a request for content from the user
terminal;
– the provider server accessing in the database content information
describing the requested content;
– the provider server accessing regulation information in the database
describing at least one regulation that is related to the payment and the
content information of the requested content and to geographical
information of the user;
– determining the geographic location of the user;
– the provider server determining whether the requested content
satisfies the at least one regulation;
• if so, delivering the requested content to the user terminal
• if not, transmitting a payment request to the user terminal.

 wherein the geographic location of the user is determined by the IP

address of the user terminal using method steps x, y, z.

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Example III: Inventive Step
Technical character: yes
Non-technical aspects: yes
Requirements = business method:
specification: ordering content and calculating its price

Closest prior art: computer system comprising a server,

database, and a terminal which are connected
via a communications network capable of
determining the location of user.
Non-technical differences: said business method
Technical differences: method steps x, y, z
Skilled person: data processing expert
Objective technical 1. automate said business method
problem: 2. find alternative method for determining
geographic location of use

Solution: 1. automation is obvious

2. obvious?

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Example IV: Computer-implemented method of controlling a
physical process
• A computer-implemented method of controlling a physical process by
analysing a functional relationship between two parameters, the method
comprising

• [... a series of mathematical steps follow]

• wherein
• the range of one of said parameters is extended in accordance with data
generated for use in the control of said physical process.

Clearly Technical Aspect Non-Technical Aspects

A computer implemented method of A method of analysing a functional

relationship between two parameters
controlling a physical process comprising:

a series of mathematical steps...

wherein the range of one of said parameters is

extended in accordance with data generated
for use in

Contributes to technical character

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EPO Practice: Inventive step

Inventive?

Obvious?

Closest Prior Art

Claim

Technical character

No technical character

Those parts of the features making no technical contribution

cannot indicate the presence of an inventive step

A non-obvious technical contribution over the prior art

in the technical field is necessary

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 Case law: Comvik: T0641/00 (26/09/2002)
Headnote 1:
An invention consisting of a mixture of technical and non-technical
features and having technical character as a whole is to be assessed
with respect to the requirement of inventive step by taking account of
all those features which contribute to said technical character
whereas features making no such contribution cannot support the
presence of inventive step.

Headnote 2:
Although the technical problem to be solved should not be formulated
to contain pointers to the solution or partially anticipate it, merely
because some feature appears in the claim does not automatically
exclude it from appearing in the formulation of the problem. In
particular where the claim refers to an aim to be achieved in a
non-technical field, this aim may legitimately appear in the
formulation of the problem as part of the framework of the technical
problem that is to be solved, in particular as a constraint that has to
be met.

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Case law: RICOH: T172/03 (27/11/2003)

• Any prior art which is not related to any technological field or field from
which a skilled person would expect to derive any technically relevant
information does not belong to the state of the art to be considered in
the context of Articles 54 and 56 EPC.

• Skilled person within the meaning of Article 56 EPC is a technical

expert, professional or practicioner.

• "State of the art" should be understood as "state of technology" which

does not include the state of the art in commerce and business
methods

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Case law: RICOH: T172/03 (27/11/2003)

• Providing an implementation of a business-related method on

a computer system is a technical problem.

• Legitimate to include the non-technical aspects and features

into the formulation of the technical problem.

• Technical features of the implementation (functions of the

distributed system) follow directly from the requirements
specification.

• Mere automation of constraints imposed by the business-

related aspects using conventional hardware and programming
methods must be considered as obvious.

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Case law: HITACHI T0258/03 (21/04/2004)

Confirmation that prior art should not be considered

when deciding on Article 52 (2)(3) questions.
"Practical" reasons for generally accepting mixes of
technical and non-technical features as inventions in the
meaning of Article 52(1) EPC, since separation may be
difficult.
Examples for non-inventions: purely abstract concepts
devoid of any technical implications.

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Case law: MICROSOFT: T 0424/03 (23/02/06)

A method implemented in a computer system

represents a sequence of steps actually performed
and achieving an effect, and not a sequence of
computer-executable instructions (i.e. computer
program) which just have the potential of achieving such
an effect when loaded into, and run on, a computer.

Therefore: the claim category of a computer-

implemented method is distinguished from that of a
computer program.

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Case law: MICROSOFT: T 0424/03 (23/02/06)

Computer-readable medium: Claim 5

The subject-matter of claim 5 has technical character
since it relates to a computer-readable medium, i.e. a
technical product involving a carrier (T258/03 HITACHI).
The computer-executable instructions have the potential
of achieving a further technical effect, i.e. enhancing the
internal operation of the computer by facilitating the
exchange of data among various application programs.
This further technical effect goes beyond the elementary
interaction of any software and hardware data
processing (T1173/97 IBM) and thus the computer
program recorded on the medium is not considered to
be a computer program as such (5.3).

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Case law: MICROSOFT: T 0424/03 (23/02/06)

Conclusions:

1. The claim category of a computer-implemented

method is distinguished from that of a computer
program. Even though a method, in particular a
method of operating a computer, may be put into
practice with the help of a computer program, a
claim relating to such a method does not claim a
computer program in the category of a computer
program.

2. A computer-readable medium is a technical product

and, thus, has a technical character.

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 Case Law: Pension Benefit: T0391/95 (8/9/2000)

• An apparatus constituting a physical entity or concrete product,

suitable for performing or supporting an economic activity, is an
invention within the meaning of Article 52(1) EPC.

• There is no basis in the EPC for distinguishing between "new

features" of an invention and features of that invention which
are known from the prior art when examining whether the
invention concerned may be considered to be an invention
within the meaning of Article 52(1) EPC. Thus there is no basis
in the EPC for applying the so-called contribution approach.

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Conclusions

 Computer-implemented inventions are not excluded from

patentability.

 Patentability exclusions to be interpreted in a narrow way - only

one technical feature needs to be present for the whole subject-
matter to be technical.

 Inventive step assessment has become most important when

dealing with computer-implemented inventions (however only
technical features can be the basis for inventive step).

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Any Questions?

Thank you
for your attention!

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