OJ EPO SE 5/2015, p73 - William CHANDLER

Member, Technical Board of Appeal, European Patent Office

Patentability of computer-implemented inventions (CIIs): state of play and developments

Over the last thirty years the boards of appeal of the European Patent Office have dealt with over one thousand cases that could be termed computer-implemented inventions or CIIs for short. In doing so, they have established a body of rather consistent jurisprudence. The Enlarged Board of Appeal essentially confirmed this consistency in its opinion G 3/08, at least in connection with the eligibility of computer programs. It would be a shame if the new Unified Patent Court, when it comes, could not profit from some of the hard work and often complex deliberations that have gone into providing a certain measure of certainty in this field for the public and parties alike.

In this talk, I shall try to explain some of the particularities of judging patentability of inventions in this field. I shall start with a general overview and then concentrate on the approach used by the boards of appeal and highlight any key differences over the approaches used in the US, UK, and Germany.

This field of patent law uses a number of terms that are not entirely straight-forward and that overlap in meaning. I shall therefore try to introduce a minimum number of terms and try to define them to some extent. These include the terms "computer-implemented invention", which leads to an interesting discussion about the meaning of "invention" itself, "mixed invention" and the notorious term "technical". The latter appears in connection with "technical character", "technical solution", "technical problem", "technical contribution" and "technical considerations".

A computer-implemented invention (CII) is logically an "invention" implemented on a computer. Whether this means that the whole invention is implemented on the computer or only parts of it depends on the definition of invention (see below). The former case is essentially just a computer program implemented on a computer or a medium. The broader definition includes so-called "mixed inventions" where the claim contains any mixture of eligible subject-matter, e.g. a computer, television, mobile phone etc., and non-eligible subject-matter, e.g. a computer program, business method, presentation of information, etc.

In most patent systems, a claim, in order to be allowable, must pass two hurdles, an eligibility hurdle and a patentability hurdle. The eligibility hurdle is a knockout hurdle, albeit with a relatively low threshold. It knocks out any claim that does not contain something that counts towards an "invention". The effect of this hurdle therefore also depends on the meaning of "invention" (see below).

In the US, the threshold used to be very low – essentially anything "useful" got through. The case law has added other limitations such as not being abstract or a law of nature.

In Europe, Article 52(2) EPC gives a more extensive definition of things that do not count as inventions in the form of a non-exhaustive list of exclusions that includes discoveries, mental acts, business methods, etc. Article 52(3) states that these things are only excluded "as such". One result of this is that a claim is not eliminated just because one feature is non-eligible – hence the possibility of mixed inventions.

After the eligibility hurdle, the claimed invention comes up against the second hurdle – the patentability hurdle. In most systems, if the claim gets over the first hurdle, all of its subject-matter is judged for patentability, primarily novelty and obviousness (inventive step). The non-eligible subject-matter counts for patentability, so that a claim that survives the knockout because of a single trivial eligible feature might be allowable. This has led to a perceived problem of patent quality, especially in the US.

The way this is overcome characterises the approaches in the different patent systems. In the US, additional limitations on an invention have been placed on the eligibility hurdle by not counting trivial or conventional matter (token post-solution activity) or meaningless limitations (hollow field-of-use limitations). It is proving difficult to define these rather arbitrary after-the- event limitations which are leading to problems in the predictability of the judgments.

In Europe, as mentioned, the statute already defines exclusions and it is also interpreted, in particular the terms "invention" and "technical", in a way that provides tests for eligibility and patentability. These are sometimes criticised as artificial, but the a priori approach appears to lead to more certainty in the results.

The possible meanings of "invention" range from (i) anything that is not excluded, through (ii) what the inventor thought he did, (iii) what he actually did, i.e. the contribution (novel features) over the prior art, to (iv) what he actually did that was inventive.

The UK courts use the third interpretation, namely the actual contribution. If the exclusions are applied to this meaning of invention, eligibility boils down to determining whether the claim contains any contribution that is not excluded. This is called the "contribution approach". The contribution approach also acknowledges a technical contribution (see below). Any excluded features that get through because of a contribution from other features would count for inventive step.

The boards of appeal derive the first, most general meaning of invention from the fact that Article 52(1) EPC defines "invention" in parallel with the patentability criteria of novelty, inventive step, and industrial application, so that it is therefore a separate and independent criterion. If the exclusions are applied to this meaning, then the test reduces to checking whether the claim contains any eligible (non-excluded) feature. The claim is said to have "technical character". This has been termed the "any hardware approach". Although this is a low threshold, as in the US, it is not redundant as it bars claims consisting entirely of excluded matter. The parallel requirement for industrial application also has a low threshold.

However, the boards further rely on an interpretation of "technical" in Rules 42(1), 43(1)(a) and (b) EPC at the patentability hurdle to require that a patentable claim should specify a "technical solution to a technical problem". The German courts have the same requirement.

As an aside, in order to understand the concept of a "technical solution to a technical problem", the basic principle of the problem-and-solution approach to judging obviousness must be understood. In simple terms, it is that firstly the novel features are determined (this is the same as the contribution over the prior art discussed above). This is the "solution". Secondly, the effect of this solution is determined. This leads to the formulation of the objective problem that the invention can be considered to solve, which is usually "how to achieve (the effect)". This may be what the inventor says it is in the patent, but it might be less ambitious if there is prior art that the inventor was not aware of – hence the use of "objective". Although the solution is used to formulate the problem, the problem may not contain any elements or pointers to the solution. Thus, if the solution is to drive an X-ray tube at constant current and the effect of this is to prolong the life of the X-ray tube, the problem is how to prolong the life of the X-ray tube, not how to drive the tube. Formulating the problem via the effect helps prevent such inadmissible hindsight. Finally, it is judged whether, given the objective problem, the skilled person would have considered it obvious to arrive at the solution. Thus, the additional aspect when dealing with mixed inventions is that there must be a "technical solution" and an "objective technical problem".

This leads on to the important question, what is technical? In many situations the list of exclusions in Article 52(2) EPC is a good indicator as most of the activities listed can be considered to have been excluded for not being technical. There are additional activities or objects that are not considered as technical, which must be decided on a case-by-case basis and could conceivably change as technology advances.

It is usually relatively easy to judge whether the solution is technical because it is ultimately defined by features of the claim, which are easier to analyse than hypothetical objective problems. One example of a non-technical solution is a circumvention of the problem, e.g. prolonging the life of the X-ray tube (technical) by the solution of using the machine only on Monday morning (non-technical).

Determining whether the problem is technical is more difficult because there are more types of problems than solutions. For example, the problem could range from improving an investment scheme (non-technical) to prolonging the life of an X-ray tube (technical). The difficult cases are in between these extremes, relating, for example, to simulations, graphical user interfaces, data visualisations, etc. As mentioned above, the problem is derived from the effect of the features of the solution, so that a technical problem requires that these features have a technical effect. This is sometimes also called the "technical contribution". Most of the discussion centres on determining this effect or contribution.

A key point in judging the technical effect is that a feature that on its own would be excluded, e.g. a computer program or a discovery, might have a technical effect (e.g. a computer program controlling an X-ray machine to prolong the life of the X-ray tube). This is another consequence of the exclusions only being "as such".

The exclusion of computer programs poses special problems as they potentially have technical aspects. Decision G 3/08 confirmed the jurisprudence that programming per se is not technical although it might have "technical considerations", i.e. involve thinking about technical aspects. Also, the technical effect that a computer program inevitably causes by virtue of changing the state of the computer when it is run is not a sufficient technical contribution – a "further" technical effect is required.

If the invention has some technical features, but is essentially concerned with a non-technical field, such as methods of doing business on a computer, it is often impossible to formulate a technical problem rooted in the field. In such cases, technical aspects first come into play with the implementation of the non-technical idea. Often, the only way to formulate a technical problem is along the lines of "how to implement (the non-technical idea)". If the implementation is conventional or obvious, there is no inventive step.

The above shows that the boards of appeal's approach to excluded matter is intimately linked to that of obviousness. This makes the overall approach harder to understand, but lends it a unified character. One advantage of deferring the judgement of the subtleties of the technical nature of the invention to the inventive-step stage is that is does not need to be performed as a separate knockout test potentially leading to the sudden death of a claim before any discussion of the actual invention, or alternatively, requiring a lengthy additional analysis. Instead, the excluded matter is discussed hand in hand with setting up the technical problem, the solution to which is then examined for obviousness.

An analysis of previously decided cases gives leads to some empirical "signposts" for a technical effect and thus a technical problem. These can be used by all European courts because generally all approaches involve judging whether there is a technical effect or not, albeit at different hurdles. The signposts include such things as: whether there is an effect on a technical process outside the computer (e.g. prolonging the life of the X-ray tube) or inside the computer (improved architecture, new functioning, increased speed or reliability), and indications about the conditions inside the computer (e.g. providing a visual indication about events occurring in the input/output device of a computer).

On the other hand there are a number of arguments that are often given in favour of a technical effect that could be considered as "fallacies". These include situations where the alleged technical effect derives from the mere implementation on a computer rather than the solution to a technical problem (e.g. a computer making the non-technical solution to the problem of determining a shopping itinerary faster), or relies on the interaction of a user to be achieved (e.g. a particular arrangement of icons on a graphical user interface to solve the technical problem of more efficient searching of data – a mental act analogous to advising the user to have a good night's rest).

At first sight, it appears that the boards of appeal and UK courts apply a significantly different approach. However, both approaches require the presence of a technical contribution, albeit at different hurdles. The difference is that in the UK, although features with no technical effect cannot contribute to the invention, they might contribute to patentability if the claim gets over the eligibility hurdle because of some other novel technical features. In the boards' approach, features with no technical effect can never play a role.