Can software be patented?

One of my favorite questions, obviously. And it came up again in my lecture about patents for startups last Monday.

Short answer: It depends on what the software does. If it solves a technical problem, then yes.

For an initial “technicality” assessment, rely on your gut feeling, but ask a patent attorney who is specialized in computer-implemented inventions for the details.

Also, here’s an overview article I wrote that summarizes the basics of software patenting in Europe.

Can an AI be an inventor? No, says the EPO

Do you remember the two patent applications filed in the context of the Artificial Inventor Project which named an AI system called DABUS as inventor and which were refused by the EPO?

The EPO has just published the written reasons of the decisions.

As a reminder, in the designation of the inventor filed in both cases, a machine named DABUS was indicated as the sole inventor:

Designation of inventor in EP 18275163.6

In the original designation of the inventor, the applicant indicated that he had acquired the right to the European patent as employer. In a later submission, the applicant filed a corrected designation of the inventor indicating that the he had obtained the right as a successor in title.

The applicant explained that the invention had been made by a machine which “identified the novelty of its own idea before a natural person did”. Therefore, so the applicant, the machine should be recognized as the inventor and the applicant, as the owner of the machine, was an assignee of any IP rights created by this machine.

For both patent applications EP 18 275 163 (EP 3 564 144 – “Food Container”) and EP 18 275 174 (EP 3 563 896 – “Devices and MEthods for Attracting Enhanced Attention”), the Receiving Section of the EPO has decided:

The application is refused in accordance with Article 90(5) EPC since the designation of inventor filed for the application does not meet the requirement of Article 81 and Rule 19 EPC.

In a nutshell, the EPO’s point of view is that the inventor designated in a European patent must be a natural person, and not a machine.

The written reasoning is worth a read and can be found here:

It will be interesting to see whether the applicant will appeal the decisions and take the cases to the Boards of Appeal.

Photo by Franck V. on Unsplash

Software patents in China

I’ve been told that the Chinese Patent Office has updated its Guidelines for Patent Examination, including some changes for inventions involving algorithm features and business rules.

As far as I understand these guidelines, subject-matter eligibility is tested in two steps:

  1. Does the claim include technical features?
  2. Does the claim recite technical means adopted to solve a technical problem?

Concerning inventive step, if the algorithmic features of the claim contribute to the technical solution, they have to be considered in the inventive step assessment.

To me, this sounds very similar to the German framework for assessing computer-implemented inventions. In Germany, we also have a two-step eligibility test (in contrast to the EPO’s more pragmatic “any hardware” approach), and inventive step can be based only on the technical part of the claim.

The amendments will enter into force on 1 Feb 2020.

Many thanks to Feynman Liang for making me aware of this update.

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Patents for computer simulations?

In case you haven’t seen it already on the BARDEHLE PAGENBERG newsfeeds, my colleague Patrick Heckeler and I had a short conversation about the pending referral G1/19 and the underlying question whether computer simulations should be patentable at the EPO:

I’m very much looking forward to the Enlarged Board’s decision. In fact, this decision could affect entire industry branches, since all kinds of industries nowadays heavily rely on computer simulations.

If you want to know more, here is my firm’s amicus curiae letter. A listing of all amicus curiae letters can be found on the EPO website.

Patents for database technology

Yesterday was the first Tuesday in 2020 – time for a new entry in the European software patents knowledge base.

This decision is about database technology. Lately, I had several applications get rejected in first instance based on the argument that the invention involves only logical query optimization (=non-technical), which is by design encapsulated from the physical query execution plan (=technical).

This decision might come in handy. The Board decided that the cost-based optimization of a query in a relational database normally has technical character, as far as it uses a cost estimate for the computer resources (CPU, main memory, hard disk, …).

Unsure whether your software invention will be considered technical at the EPO? Check back regularly, because we publish a new case law summary every Tuesday in the European software patents knowledge base.

Photo by Jan Kolar on Unsplash

30 minutes about software patents in Europe

Here’s a video recording of a talk I gave in April 2019 in Saint Petersburg (Russia). The topic was “IT and software patents in Europe”:

Also check out the accompanying article in the EUROPEAN SOFTWARE PATENTS knowledge base.

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