How the EPO examines software patents |

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The European Patent Office will grant a software patent if the invention provides a non-obvious technical contribution to the prior art. More information:
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In this 30-minute talk, patent attorney Bastian Best gives a walkthrough of the European Patent Office's "two hurdle" approach for assessing the patentability of software-related inventions with many practical examples.

Quick navigation:
▶ 2:25 Facts and statistics about the European patent system
▶ 7:38 The "two hurdle" approach for assessing European software patents
▶ 15:15 Five examples for technical and non-technical inventions

This is a recording of a talk given at the 3rd International Conference "PROTECTION OF INTELLECTUAL PROPERTY RIGHTS" in Saint Petersburg, Russia on 11 April 2019.

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The basic patentability requirements for any kind of invention at the European Patent Office, including software-based innovations, are laid down in Art. 52(1) EPC: "European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application."

The EPC does not include a fixed definition of the term “technology“. For a good reason: Technology constantly evolves and the legal framework should be flexible enough to adapt to new developments. But there is a list of items in Art. 52(2) EPC that are considered not to be inventions in a field of technology. The common denominator of these items is that they are all rather abstract things, i.e. they are in themselves non-technical:
discoveries, scientific theories and mathematical methods
aesthetic creations (those are subject to design protection)
schemes, rules and methods for performing mental acts, playing games or doing business, and * programs for computers
presentations of information

But to make it even more complicated, these items are only excluded from patentability if they are claimed “as such” according to Art. 52(3) EPC. Over the years, however, the Boards of Appeal of the European Patent Office have created a stable and reliable framework for implementing these complicated legal provisions. The so-called “two hurdle” approach:

1. Patent-eligibility: a single technical feature in the patent claim is enough
2. Inventive step: only the technical features can establish non-obviousness

Unlike in the US, the European Patent Office has made the patent-eligibility hurdle only a very coarse filter. Its purpose it to filter out those inventions that are purely abstract and conceptual, without any involvement of technology whatsoever. In fact, the only thing needed to overcome the first hurdle is a single technical feature in the patent claim. Note that the patent-eligibility hurdle is an absolute hurdle. There is no comparison of the invention with the prior art allowed at this point. As a matter of fact, the (single) technical feature can even be a trivial one.

When assessing inventive step, the EPO examiner will compare the invention to the prior art and identify those novel features which distinguish from the closest prior art. Importantly, from these novel features, only those that contribute to the solution of a technical problem are taken into account in the non-obvious assessment. In other words, inventive step cannot be based on a non-technical delta between the invention and the prior art. Instead, it is only the technical contribution that is looked at.

Control questions for a European software patent application:

1. Does the invention use technical means?
2. Does the invention solve a technical problem, i.e. does it bring about a technical effect / advantage?
3. Is the solution non-obvious in view of the prior art?
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