09/08/2018

Software Patents at the European Patent Office

One common misconception is that the software is not patentable in Europe. This is absolutely incorrect as the European Patent Office has for many years granted European patents for computer implemented inventions having an important software element.

Before determining whether or not to grant a European patent a newly filed patent application is examined by an experienced patent Examiner who has an understanding of the technical field of the invention.

Initially, the Examiner will determine whether the invention has technical character. This involves the examiner checking that the patent application is not solely concerned with non-technical or abstract matters (such as business rules). Reciting that the invention is implemented by a computer system is always sufficient to overcome this initial “technical character” test.

The Examiner will then assess whether the invention is novel (new) and inventive (not obvious). To achieve this, the Examiner conducts a search through patent and non-patent literature published before the filing date of the patent application.

An invention is novel/new if it contains one or more features that are not present in any one of the documents located in the search conducted by the Examiner.

To assess inventiveness the Examiner will identify the closest prior art document located in the search and the technical features of the invention that are not in the closest document and which contribute to solving a technical problem. This is the critical part, the software invention must provide a solution to an underlying technical problem (as opposed to a business problem).

Finally, the Examiner will determine whether the identified technical features are obvious in light of the technical problem.

To give the best chance of successfully obtaining a European patent for an invention implemented by or having an important software part, a patent application should:

• identify and describe what is already known in terms of its technical shortcomings or problems,
• set out benefits achieved by the invention in terms of how the invention provides a solution to the problems identified,
• describe all physical/technical components or processing steps that are needed to   achieve the technical solution,
• describe all possible practical applications and/or implementations for the   invention,
•  describe conventional aspects (such as data processing) in as much technical detail as possible,
• include flow charts, block diagrams and stylised schematics in the patent specification.

(Note that there is no requirement to include the source code – snippets of code which can clearly illustrate essential features of the invention are useful)

JP White European Patent Attorneys are experts at preparing patent applications in software and information technology fields.

Contact us now for a free initial consultation.

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• Jonathan White