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article 20 Mar 2020

The chasm between US and EU software-related inventions

The US and EU (EPO) have a significantly different approach to patent protection for software-related inventions, both in terms of scope of eligibility and in how the determination is made. However, following certain rules can help applicants to protect their rights on both sides of the Atlantic. NLO's Marta Alvarez Guede and Katelyn Bernier explain how.

According to the European Patent Convention (EPC), a patent can be granted in any field. However, it does not regard computer programs as inventions if claimed as such, while methods for performing mental acts, playing games, doing business and presenting information are excluded from patentability altogether.

According to the approach followed by the EPO, a claim directed to a computer program will not be excluded for patentability under Article 52 of the EPC if it contains at least one feature that is considered to have technical character. In this way, it is sufficient that a claim is directed to a device or a method implemented in a computer to avoid exclusion. The non-technical features of such a claim will be ignored when assessing an inventive step.

The EPC provides no general definition of what is technical, but relevant case law before the EPO Boards of Appeal gives some indication of what constitutes ‘technical character’. In particular, a claim to a computer program is not excluded from patentability if, when running in a computer, it provides a further technical effect going beyond the computer’s normal behaviour. Such further technical effect could be saving computer resources such as memory, processor time or energy, or controlling further processes.

In the same way, data encoding schemes, data structures implemented in a computer, data formats contained in physical mediums or electromagnetic waves carrying information are traditionally considered to have technical character. But in order to contribute to a further technical effect, they should refer to functional data, which serves to control the operation of a device, rather than cognitive data, the content and meaning of which are relevant to human users only.

Across the pond

The US approach to patent protection for software-related inventions differs significantly from this approach, both in terms of scope of eligibility and in how the determination is made.

Marta Alvarez Guede and Katelyn Bernier explain the differences in their article. Moreover, they guide you to overcome the hurdles by following consistent principles.

Download the article below.

This article first appeared in IAM Spring Issue 99, published by Law Business Research – IP Division. To view the issue in full, please go to www.IAM-media.com

The chasm between EU and US software-related inventions
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