Software patents for emerging tech since 2008

7 principles for the patentability of software inventions


The decision T 0154/04 (Estimating sales activity/DUNS LICENSING ASSOCIATES) of November 15, 2006 is one of the landmark decisions when it comes to the patentability of software inventions at the European Patent Office.

During oral proceedings the appellant submitted the following questions for referral to the Enlarged Board of Appeal:

  • (1) What is the correct approach to adopt in determining whether an invention relates to subject matter that is excluded under Article 52?
  • (2) How should those elements of a claim that relate to excluded subject matter be treated when assessing whether an invention is novel and inventive under Articles 54 and 56?
  • 3(a) Is an operative computer program loaded onto a medium such as a chip or hard drive of a computer excluded by Article 52(2) unless it produces a technical effect, if so what is meant by “technical effect”?
  • 3(b) What are the key characteristics of the method of doing business exclusion?
  • (4) Is a system for estimating product distribution for non-reporting outlets based on weighing factors that are a function of the distance between the non-reporting outlets and sample reporting outlets and the characterisation, e.g. size, of the non-reporting and reporting outlets of a technical nature?
  • 5(a) Are the exclusions of Article 52 to be treated differently from each other in the way that obviousness is assessed?
  • 5(b) Are inventions alleged to be within Article 52 to have a different test for obviousness than other inventions not alleged to be within Article 52?

In answering these referral questions the Technical Board of Appeal 3.5.01 illustratively summarized the patentability requirements for software-related inventions:

From the reasons

5. Considering questions 1, 2, 3(b), and 5(a) and (b) in more detail, the issue raised boils down to the application of Articles 52, 54, and 56 EPC in the context of subject matter and activities excluded from patentability under Article 52(2) EPC.

The constant jurisprudence of the boards of appeal as far as it is relevant to the present case may be summarised succinctly in the following principles:

(a) Article 52(1) EPC sets out four requirements to be fulfilled by a patentable invention: there must be an invention, and if there is an invention, it must satisfy the requirements of novelty, inventive step, and industrial applicability.

(b) Having technical character is an implicit requisite of an “invention” within the meaning of Article 52(1) EPC (requirement of “technicality”).

(c) Article 52(2) EPC does not exclude from patentability any subject matter or activity having technical character, even if it is related to the items listed in this provision since these items are only excluded “as such” (Article 52(3) EPC).

(d) The four requirements — invention, novelty, inventive step, and susceptibility of industrial application — are essentially separate and independent criteria of patentability, which may give rise to concurrent objections. Novelty, in particular, is not a requisite of an invention within the meaning of Article 52(1) EPC, but a separate requirement of patentability.

(e) For examining patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention.

(f) It is legitimate to have a mix of technical and “non-technical” features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features “as such”, do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step.

(g) For the purpose of the problem-and-solution approach, the problem must be a technical problem which the skilled person in the particular technical field might be asked to solve at the relevant priority date. The technical problem may be formulated using an aim to be achieved in a non-technical field, and which is thus not part of the technical contribution provided by the invention to the prior art. This may be done in particular to define a constraint that has to be met (even if the aim stems from an a posteriori knowledge of the invention).

6. These principles have indeed a clear and consistent basis in the Convention and in the case law of the boards of appeal and the Enlarged Board of Appeal, in particular.

Read the whole decision here.

Originally published at on February 19, 2015.

About Bastian Best

Bastian Best

I'm a European patent attorney specializing in software patents and a partner in one of the most renowned IP only firms in Europe.

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By Bastian Best Software patents for emerging tech since 2008