European Patent Law for US patent attorneys - Part 2
Preparing computer-implemented invention (‘CII’) applications for European prosecution
In the second part of our blog series, we discuss some of the issues that may arise when prosecuting software-related inventions before the EPO, and provide guidance on how to avoid them.
What to expect – the general approach by the EPO
Computer implemented inventions (‘CII’s) must overcome two hurdles before the EPO:
Eligibility (i.e. technical character), and
The bar for passing the first hurdle is low – a CII claim only needs to include one technical feature to have ‘technical character’, which could be as simple as ‘a computer’ or a reference to a computer (e.g. ‘computer implemented method’). This first hurdle does not involve any assessment of the prior art, and is usually straightforward to overcome.
Difficulties in the EPO’s approach are most often encountered when trying to pass the second (and highest) hurdle – inventive step. When the EPO assess the inventive step of a claim, they base their assessment only on features which contribute to the technical character of the invention - i.e. features which have a technical effect. These ‘features with technical effects’ will usually include any hardware but may also include other features which interact with the hardware to produce a beneficial effect. Features which are not considered to contribute to the technical character of the invention (e.g. features which relate solely to an administrative or business aspect of the invention) are deemed ‘non-technical’ and (in general – there are exceptions!) are not taken into consideration when assessing inventive step.
The EPO will then follow the problem-solution approach to come to a conclusion on inventive step, by:
determining the closest prior art,
establishing an objective technical problem to be solved based on the differences between the technical features of the claim and the closest prior art, and
considering whether or not the claimed invention would have been obvious to the skilled person.
The more technical features compared to non-technical features in the claim, the easier it will be to construct a technical problem whose claimed solution is non-obvious.
Framing the invention
Describing the invention with reference to the technical advantages it produces or the technical problem it addresses will ease the task of constructing a strong inventive step argument, because the objective technical problem will be clearer and easier to formulate. If an invention has clear advantages or effects which relate to both a business/administrative aim (e.g. the generation of data which is used for making decisions as to how much stock to purchase), but also result in technical advantages (e.g. the data is generated more efficiently), it is best to emphasise the technical advantages and downplay any overarching or ultimate non-technical aim or goal, which may otherwise adversely affect the interpretation of the invention by the EPO.
Considering ‘derivability’ and implementation
Including in the specification, where possible, any technical effects of all major features, ideally both in isolation and in combination with other features, will also simplify construction of an inventive step argument for features that are later used for amendment.
For example, if prior art is found which produces the same effect as the invention, but the way in which that effect is achieved by the claimed invention results in an additional (and arguably inventive) advantage, it may be necessary to narrow the claim scope to include the relevant implementation features. If the technical effect of such features is easily derivable from the specification, the ensuing inventive step assessment will be more straightforward to argue.
Including different phrasing
Using different phrasing in the specification for explaining what essentially relates to the same functionality can also be advantageous. Often different terms are ascribed slightly different meanings, and the ability to choose one over the other may be useful. In particular, different terms are useful if a particular interpretation is required to further distinguish a feature from the prior art, or to overcome unexpected clarity objections.
Disclosing specific combinations
Explicitly disclosing different combinations of features (e.g. by use of ‘optionally’, ‘can’ and ‘may’ etc.) can be useful when basis is required for a newly claimed combination of features. However, overly liberal use of such wording can be detrimental, as the EPO may adopt the position that there is no teaching to support the argument that the skilled person is clearly taught one specific combination over the many permutations that are also presented. Each application may warrant a different approach, but ideally particular combinations of features which relate to the core inventive concept and could provide a synergistic benefit should be explicitly and separately disclosed, and any advantages which stem from those features in isolation (and without need for their combination) should also be described.
Taking advantage of all claim categories
In addition to apparatus and method claims, ‘computer readable medium’ claims that are broad enough to cover ‘signals’ are allowable at the EPO. It is therefore worthwhile including such a formulation in any first filing. There is no requirement for the invention claimed in this way to be ‘non-transitory’ or as ‘storage’ and it is recommended that basis is provided in the specification for the broader position as well as a narrower position that may be required for the US and other jurisdictions. Such ‘CRM’ claims could provide an extra useful layer of protection for activities involving internet streaming, for example.
The key is to consider how to present the invention from a technical perspective. Given the EPO’s strict approach to added matter, it is essential that the above advice is taken into consideration when the application is first drafted. Consideration of these points from the start will give the application a much easier ride through the EPO!