Technical character, technical contribution… don’t get confused by the EPO lingo

I’m happy to see that my recent LinkedIn post on whether software is patent-eligible at the EPO got 1,200 views in two days! So let’s take a closer look at how the EPO deals with software patent inventions:

The European Patent Convention (EPC) sets two hurdles on the way to a European patent:

  1. An absolute hurdle stating that the invention has to be an “invention” in the sense of Art. 52 EPC. This is met when the invention has “technical character” (and I’ll explain in a second what that means).
  2. The invention has to have certain qualities relative to the prior art: it must be novel and non-obvious. In the software field this boils down to the requirement of a non-obvious “technical contribution“.

So when does an invention have “technical character” (first hurdle)?

The law does not provide an exhaustive definition of “invention” or “technical”, but Art. 52(2) EPC contains a non-exhaustive list of subject-matters that are not regarded as inventions by law – e.g. “programs for computers”, “mathematical methods” and “methods for doing business”. However, Art. 52(3) EPC states that these subject-matters are only excluded from patentability when claimed “as such”.

So what does that mean for software-related inventions?

Without going into too much detail about the complicated wording of the law, the jurisprudence (the EPO boards of appeal) has developed a quite pragmatic solution: the so called “any hardware” approach:

Any method involving technical means has “technical character” and is thus an invention within the meaning of Article 52(1) EPC (the corresponding landmark decision is T 0258/03 – Auction method/HITACHI).

So what does that mean in practice?

Any piece of hardware recited in a patent claim will make the claim pass the first hurdle. I’ve outlined how to draft a computer program claim at the EPO here.

Summary

The first hurdle to software patentability (“technical character”) can be overcome in virtually every case by proper claim drafting, namely when any sort of technical device is involved. Blame your European patent attorney if your case gets rejected for failing this hurdle 😉

The decisive hurdle then is regularly the second one, the “technical contribution” which I will cover in the next post.

Have a great weekend!
Bastian

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