This post comes courtesy of our friends at DLA Piper, George Godar (Partner in DLA Piper UK’s London office in the Technology, Media and Commercial group) and David Alberti (Partner in DLA Piper’s Silicon Valley office. He focuses on patent litigation, prosecution and counseling).
The issues raised in the recent United States Supreme Court Bilski decision are not exclusive to the US. Europe has been considering these issues for years and has still not reached a conclusion accepted by all signatory countries to the European Patent Convention.
Under the EPC, rules and methods for performing mental acts and doing business, or a program for a computer, are excluded from patent protection if the claims of the patent relate to that thing as such. The European Patent Office (EPO), and national courts, have wrestled with these exclusions. The solutions they have reached may be pragmatic but are not always mutually consistent.
EPO: Examine as a whole
The EPO skirts the issue of whether the invention has a technical character, relating to a technical problem and having technical features. A “naked” business method will not get over the threshold. However, for a business method which specifies an apparatus or technical process for carrying out at least a part of the business method, the EPO Guidelines direct that the method and the apparatus or technical process must be examined as a whole. Note that if the claims specify computers, computer networks or other computer-programmable apparatus or software for carrying out at least some steps of the business method, the patent application will be examined as a “computer-implemented” invention.
Once an invention passes that threshold, the EPO looks to its “technical effect” and, in particular, to a “further technical effect” (or “practical application”) that goes beyond the normal physical interaction between the program and the apparatus/technical process when assessing inventive step. This effect can be, for instance in the context of software-related inventions, improved processor performance or improved security or efficiency of a process. But the issue here is that the benefit derived from the invention must go beyond adding profit (or otherwise relating solely to the business) toward the way the invention is implemented from a technical viewpoint.
When assessing inventive step, the EPO excludes from consideration any non-technical matter, unless these non-technical features interact with the truly technical features to provide the desired technical effect. Further, the exclusions are not regarded as part of the relevant technical field when assessing inventive step. The skilled addressee (person skilled in the art) cannot be the skilled user within the relevant business field: that addressee has to be taken from the field within which the technical effect is found. For instance, the addressee is not in the field of on-line retail sales, but is in the field of computer hardware or software in which the invention solves the problem. As a result, there are not business method patents in Europe which merely implement business methods on a computer-related environment.
UK Court approach differs
An English court (when assessing validity in post-grant proceedings) approaches the issue in a different way, applying a four-stage test:
1. Properly construe the claim
2. Identify the actual contribution to the art
3. Ask whether that contribution falls solely within the excluded subject matter
4. As a cross-check, decide whether the actual or alleged contribution is actually technical in nature.
If the claim passes these tests, then it falls outside the exclusions and the court goes on to consider such issues as novelty and inventive step. This “technical contribution” approach was formerly used within the EPO (and formerly accepted by UK national courts) but the EPO has now abandoned it in favor of the approach described earlier. For computer-related inventions, technical contribution to the art may be internal to the computer itself, for instance improving a computer’s operation by solving a problem arising from its programming (such as a tendency to crash under certain circumstances).
Because irrelevant technical effects cannot be taken into account when assessing technical contribution under this test, the court has also suggested helpful signposts to determine whether a relevant technical effect exists. These include whether the claimed technical effect has a technical effect on a process which is carried on outside the computer; whether the claimed technical effect operates at the level of the architecture of the computer – that is, whether the effect is produced irrespective of the data being processed or the applications being run; whether the claimed technical effect results in the computer being made to operate in a new way; whether the computer’s speed or reliability increases; and whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
In Europe, abstract ideas for business methods not patentable
The result of either of these approaches is that mere abstract ideas for business methods are not patentable. Nor is software as such, although software which has a sufficient technical effect will be patentable (whether within or outside the computer). Nor are business methods as such patentable, unless the claims (which must combine the method with an apparatus or technical process) demonstrate a sufficient technical effect. Accordingly, the lesson is that, to maximize the chances of getting a business method patent granted in the EPO and upheld by national courts, an applicant should specify the apparatus and technical processes in as detailed a way as possible, and highlight any technical advantages the invention achieves and the specific processing steps and interactions described in the claims.
Bear in mind that to obtain a patent which will survive a post-grant attack in national court, the claims should be capable of meeting both the criteria set by the EPO (to be granted) and the criteria set by the national courts (to survive a validity attack). While in clear-cut cases both criteria are likely to be met, often an invention for which a patent is granted in the EPO may not pass the UK court criteria in terms of the required technical effect.
US approach now similar to EPO’s
It seems that the Supreme Court’s rejection of the claims in Bilski as being merely abstract ideas may be getting close to the EPO’s threshold test described above: an abstract idea in US parlance may be the EPO’s “naked” business method claim which will not get over the patentability bar. The “machine-or-transformation” test may be equivalent to the EPO’s “technical character” requirement to which the tests of novelty and inventive step are applied.
Nations on both sides of the Atlantic continue to grapple with how to gauge the patentability of software and business methods.
Tags: "naked" business method, "practical application", "technical effect", abstract ideas, Business Method Patents, computer-implented invention, EPO, European Patent Convention, European Patent Office
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