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24 February 2020
Under the European Patent Convention, a computer program per se is not considered a patentable invention; rather, program listings per se are protected by copyright.
However, in many cases, a computer program can be considered a technical solution to a technical problem and is thus patentable. For a European patent to be granted, applicants must show that this solution is novel and involves an inventive step with respect to prior art.
In a well-known opinion,(1) the Enlarged Board of Appeal of the European Patent Office (EPO) confirmed that it is possible to avoid any objections to a program per se by adding one or more technical features in the claims (eg, by introducing programmable apparatus). In particular, claiming a 'computer-implemented method' with different steps is considered a technical solution to a technical problem because of the presence of a computer. This criteria is assessed without regard to prior art. The EPO Guidelines for Examination are in line with this approach.
Provided that the claimed subject matter is novel, the major hurdle is then to show that it involves an inventive step. In that respect, mere automation of known processes is typically not enough to show inventive step, as it is considered routine work for a person skilled in the art. Using generic technical terms is not advised, as examiners often consider it insufficient to show inventive step. It is important for such inventions to clearly explain how the claimed invention solves a technical problem. Thus, for such inventions, special consideration and care of the exact wording of the text that is going to be filed at the patent office is more important than ever.
A recent EPO report comparing European and Chinese practices for software-related inventions revealed that the Chinese approach for determining if a claimed object is a patentable invention differs slightly from the European approach.(2) In China, computer programs per se are considered mental activities and cannot be patented. Applicants must show that the claimed invention adopts technical means to solve a technical problem and thereby achieves a technical effect. In other words, this first hurdle is similar to the examination of inventiveness step in Europe.
Even if the Chinese and European approaches differ, the major challenge in both legal systems is showing that claimed subject matter involves an inventive step; acceptable wording is quite similar in both territories.(3)
(1) G 0003/08 (Programs for computers) of 12 May 2010. Available here.
(2) Available here.
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