Home > Insights > EPO Board of Appeal Advises How to Determine Technical Subject Matter for Assessing Inventive Step

Authors: Simon Kahn and Joshua McFarlane
15 January, 2018

Computer implemented inventions, such as computer software, can be easy to copy but time-consuming to develop. Therefore, companies and developers are keen to ensure that relevant intellectual property is obtained for the computer implemented inventions, in which they have invested considerable resources. Patent protection seems like a good choice for protecting such products, because it can provide broad protection and can be enforced without any need to prove copying. Although patent law often restricts protection for computer-implemented inventions, many such inventions are patentable. Nevertheless, there are still grey areas, where protection may be obtainable, but only in certain circumstances and each patent office assesses such inventions in a different way.

The European Patent Office (EPO) adopts a two-stage approach in assessing technical subject matter. The first step is to identify whether the claim includes a technical feature (e.g. a computer). If a technical feature is present, the invention will not be excluded on grounds of non-patentable subject matter. The second step is to determine whether the invention provides a technical solution to a technical problem. Only features of a claim that are deemed to contribute to solving a technical problem will be considered when assessing whether an inventive step is present.

It can be seen from the above that the success of a patent application can depend on whether a particular key feature of an invention is deemed to be technical or non-technical by the EPO.
Decision T 0625/11 is the result of an Appeal following the decision of an Examining Division to reject an application on the grounds of lack of inventive step. The claims of the application in question included the step of determining a threshold value of an operating parameter of a nuclear reactor. In the decision, the Examining Division argued that determining a threshold value is an abstract calculation and does not have an effect on a technical object. They therefore did not include this step in the assessment of inventive step. All other steps in the claimed process were deemed to be well-known steps in the design of nuclear reactors. Therefore the application was refused on grounds of lack of inventive step.The applicant had also filed an Auxiliary Request that further included the step of operating the nuclear reactor using the limit value determined in the previous step. However, the Examining Division determined that this did not convey technical character on the step of determining the threshold value and ruled that the step of operating the reactor using the threshold value determined in the previous step was a matter of common practice. They therefore held that the Auxiliary Request also lacked an inventive step.

This approach taken by the Examining Division is a departure from the approach of the Board of Appeal taken in previous case law. For example in a previous decision of the Boards of Appeal (T 1277/05), the board held that a simulation pursuing a technical objective (specifically simulating an electronic circuit subject to noise) is itself technical, even if the objective is not stated in the claim.

In defence of their nuclear reactor claim, the applicant argued that the technical nature of the calculation step did not only arise from the fact that the calculation was performed by a computer, but also because of the objective pursued by the invention (i.e. controlling a nuclear reactor in order to allow better exploitation of its capacities). This technical objective, they argued, conferred technical character to the claim beyond simply implementing an administrative method, even though the objective was not integrated into the claimed process.

The Board of Appeal agreed with this reasoning, in line with the previous case law mentioned above. They therefore agreed that the step was indeed technical and could be taken into account in assessment of inventive step. They also noted that none of the prior art suggested determining the threshold value in this way and therefore the application was granted on the basis of the Main Request.

This decision does not change the approach taken by the EPO to assessment of inventive step for computer-implemented inventions that contain some technical subject matter. Nevertheless, it does remind us of the difficulties that are often faced in securing patent protection for computer-implemented inventions. Such objections from Examining Divisions come up frequently and it is important to be aware of how they can be overcome, so the applicant can be awarded the protection to which they are entitled.

If you would like any further information on the patentability of software inventions, please speak to your usual Boult Wade Tennant adviser.

Authors

Simon Kahn

Simon Kahn
Partner

Phone this number +44 (0)20 7430 7500

Email this address skahn@boult.com

Verulam Gardens
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London
WC1X 8BT

joshua macfarlane

Joshua McFarlane
Patent Attorney

Phone this number +44 (0)20 7430 7500

Email this address jmcfarlane@boult.com

Verulam Gardens
70 Gray's Inn Road
London
WC1X 8BT