European Union

11 Aug 2020
What is the current state of the law on the patentability of CIIs?

European Patent Office

According to the European Patent Office (EPO) Guidelines for Examination, a CII is an invention 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.1

The European Patent Convention (EPC) does not contain a definition of the term “invention.” However, Article 52(2) of the EPC contains a non-exhaustive list of things, including computer programs, which are not considered as inventions and are therefore excluded from the field of patentability.2

The EPO, which defines computer programs as the sequences of instructions executable by a computer, considers them to be purely abstract creations, devoid of any technical character. However, pursuant to Article 52(2) of the EPC, the computer programs are excluded from patentability only “as such,” that is, this exclusion concerns only the sequence of executable instructions. On the contrary, inventions (implemented by a computer program) having a technical character are not excluded from patentability pursuant to Article 52(2) and (3) of the EPC.

The criterion of technical character to assess the patentability of CIIs was deducted from a reading a contrario of the non-exhaustive list of exclusions from patentability.

Although the decisions of the Boards of Appeal of the EPO on the issue of patentability of CIIs are numerous, they are not always easy to understand; moreover, they sometimes contradict the decisions of national courts, leading to legal uncertainty.

The Administrative practice on CIIs at the EPO is framed by the Guidelines for Examination: 

  • Part G-II, 3.6 of the Guidelines specifies how the technical character can be appreciated for a CII;3
  • Part F-IV, 3.9 of the Guidelines sets out how to write the CII claims.4

According to the EPO Examination Guidelines, a computer program and a corresponding computer-implemented method are distinct from each other. The former refers to a sequence of computer-executable instructions specifying a method while the latter refers to a method being actually performed on a computer.

Furthermore, claims directed to a computer-implemented method, a computer-readable storage medium or a device cannot be objected to under Art. 52(2) and (3) as any method involving the use of technical means (e.g. a computer) and any technical means itself (e.g. a computer or a computer-readable storage medium) have technical character and thus represent inventions within the meaning of Article 52(1).

It is often difficult to distinguish between patent applications relating to computer programs “as such” excluded from patentability and those related to the patentable technical solutions in the form of inventions implemented by a computer.

The EPO considers that when the program is implemented by a computer, it must produce a “further technical effect” going beyond the "normal" interactions between the program (software) and the computer (hardware) on which it is run.

According to the EPO Guidelines, examples of further technical effects which confer technical character to a computer program are the control of a technical process or of the internal functioning of the computer itself or its interfaces.

In addition, difficulties can also come from the fact that computer programs often implement the presentation of information and/or mathematical formulas, which are also part of the elements or activities excluded from patentability by the EPC because they are not considered as inventions.

With regard to the process of examining the patentability of a patent application related to a CII, the EPO uses a two-step reasoning. Firstly, the EPO verifies that the claimed invention is technical (whether it belongs to the field of patentability). If so, and as a second step, the EPO studies the patentability requirements (novelty, inventive activity and industrial application).

Concerning the first step of the reasoning, we note that the EPO has applied different approaches to assessing the technicality over the years.

In its most recent approach, named the “any hardware approach,” the EPO interprets Article 52(2) of the EPC literally: a non-technical element integrated into a technical assembly is sufficient to found its technicality. But only an inventive contribution of a technical nature is capable of satisfying the inventive step requirement. The founding decision was rendered in the Hitachi case in 2004.5 In this case, the invention claimed related to an automatic auction method executed in a server computer. This method had the advantage that it did not require auctioneers to be present at the terminals. The Examination Division refused the application as it deemed that it related to a method for doing business. The Board of Appeal of the EPO reversed this refusal. It was considered that the introduction of known technical means into the claim was sufficient to ensure the technical character of the invention.

Since the Hitachi case, it seems that the EPO examines on a case-by-case basis what it considers to be of technical character. As an illustration, a very recent EPO decision considered that it could be a technical effect for a search engine to provide faster search results. However, the Board rejected the patent application on the grounds that it was not established that the claimed technical effect could be reliably obtained and that it was reproducible.

An analysis of the European case law reveals it is difficult to establish precise criteria for the patentability of CIIs. The patent offices and the courts do not apply the requirement of a technical character in a harmonised way, leading to certain legal insecurity in this area.

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Clément Monnet
+33 1 56 59 53 91