More Patentable Subject-Matter Becomes Software and Business Methods

Author: Dr Jacekas Antulis, an Associate Partner, the Head of the Patent Division at METIDA

6157582062_b32a52f418_oAlthough to file any software and business method patent application to European Patent Office (EPO) related with high amount of risk, however during last years the situation is changing: the ice of winter is already started to melt like at spring time.

It is stated, that computer programs and business methods, among other things:, “mathematical methods”, “mental acts”, “games” and “presentations of information”, are specifically excluded from patentability by the European Patent Convention. But it seems only from the first glance, because these things are only excluded from patentability “for an application or patent that relates to these activities as such”. Thus, does it mean that some particular computer related patent application is excluded? As practice shows – no, or at least – not likely.

Examining the validation history of European Patents (EP) in Lithuania translating the claims, to validate EP in Lithuania just claims needed to be translated under London agreement, sometimes we see that the application, which is granted in EPO, from the position of person skilled in computer science, is practically computer program. Although the text of invention is tried to be related as much as possible with hardware however from the position of person skilled in the art from that field it simply a protocol or structural steps of computer program, and nothing more. Sometimes it is really astonishing how the applicant was managed to penetrate the examination barrier in EPO. And it seems that barrier for computer related applications is lowering and lowering. Whether it is good bad– kind of question of philosophy, because it is a natural result of existence of different patent systems in the world: if we have different approaches in different patent offices, in long time perspective we will always have some metastability which would have a tendency to go to equilibrium (this is like a process of diffusion in physics or current flow in electrodynamics).

Having started out from the original premise that this sort of subject-matter is not patentable, the EPO has gradually adapted over the years, such that many inventions can be protected after all. For a start, it is now accepted that a computer-implemented method is not a computer program as such and therefore constitutes patentable subject- matter (T424/03 Clipboard formats/Microsoft). Another important milestone was the allowance of a claim to a computer program product as a claim category — however, in order to meet the requirements of inventive step, the program needs to “produce a further technical effect which goes beyond the normal physical interactions between the program and a computer” (T1173/97 Computer program product/IBM). A third case (T641/00 Two identities/Comvik) expounds the “any hardware” approach which is the currently-favored method of assessing whether an invention relates to excluded matter — the presence of any sort of hardware, e.g. a computer-readable medium or a processor, will result in the invention overcoming the excluded matter hurdle, but, the solution that the invention provides to the problem being solved must be technical. In other words, if the invention uses only standard computing equipment and is in fact an automated business method, it will fall at the inventive step stage.

There has long been a tendency to think that it is only worth applying for patent protection for software in the United States, where the starting position for the development of the body of case law was much more generous to patentees than the starting position in European legislation. However, the EPO has moved on in recent years and it is now possible to obtain protection for computer-related matters, where once it would have been thought impossible. Providing the software causes some sort of technical effect — either inside or outside a computer, but beyond what would be expected just by virtue of embodying an invention in software — there is a good chance of success. Not only that, but if your invention is primarily to a computer-controlled device or computer control of a separate device, as well as claiming the device, you should also be able to be allowed for a claim to the computer program. The key is to ensure that your patent application includes enough technical detail to explain how the program interacts with the computer hardware, the operating system software or an external device or system.

Thus, it forces to think that computer related patent applications will be more and more acceptable by EPO. Also, all the world is going to sphere of computer forests, protocols and modeling methods. The era of invisible inventions is louder and louder knocking to the door… and there is no way to escape from it because it is natural development of human civilization – to virtuality.

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