Intellectual Property | Patenting of software – what components are part of the technical character of the invention?

Patenting software inventions raises specific questions of patent law, since the European Patent Convention exempts computer programs and presentations of information as such from patenting, but not inventions that go beyond that. The extent of this exception has been subject to ample case law from the European Patent Office. A recent decision from a Technical Board of Appeal on the patentability of search-based application development frameworks further contributes to the clarifications and finds that indexing can be part of the technical characteristics that contribute to patentability.

Any invention must have technical character to be patentable. For software inventions, this requirement has been interpreted through case law to entail that a software invention needs to have a “further technical effect” (see, for instance, Part G-II, 3.6 of the EPO Guidelines). To meet this requirement, an invention needs to comprise something beyond the normal, technical interactions that take place in a computer when running any computer program. At the same time, the fact that an invention includes a computer program or is suitable for presenting information, is not sufficient to deny a patent if the requirement of a further technical effect is met.

Further technical effect can be found, for instance, if the software invention can operate a technical process, if it processes data that represent physical entities or affects the computer’s way of operating. System software will often therefore entail a further technical effect, whereas software applications often do not. If the invention controls the operations or functioning of the computer, for instance by allocating the computer’s resources in a given way, or if the invention requires the computer to be designed with a specific consideration or architecture, that will typically constitute a further technical effect.

The assessment of technical character is done without differentiating between known and new features of the invention. It is only necessary to differentiate between features that contribute and features that do not contribute to the further technical effect. This distinction is important because only the features of the invention that contribute to the further technical effect are taken into consideration when assessing the further requirement of inventive step.

Recent case law

The facts before the Technical Board of Appeal in case T 1247/18 were that Oracle International had applied for a patent for search engine technology that allowed a user to input natural language search queries to search transactional enterprise applications and to perform actions using the results of a search. The invention did this by creating an index store for the search engine.

The question before the Technical Board of Appeal was whether the invention had further technical effect. The first-instance Examining Division found that the only technical feature of the patent application was that the solution was implemented in a computer, and by itself, that is already known.

In its decision of 4 September 2020, the Technical Board of Appeal found that the Examining Division’s analysis was flawed, and agreed with Oracle International that “indexing, creating an indexing store and accessing the index store using the search engine all contribute to the technical character of the invention” (page 10). The reasoning was that the index store concerned the management of computer resources used when performing a search.

This decision follows several other cases from the Technical Board of Appeal on the same question concerning technical features of software inventions, notably two involving Accenture Global Services Limited (T 1924/17) and Microsoft Technology Licensing, LLC (T 0697/17).

On 29 July 2019, the Technical Board of Appeal in case T 1924/17 found that the claimed features in Accenture’s patent application did contribute to the technical character of the invention, contrary to the finding of the Examiner. The invention related to a relational data consistency management system, and specifically an automated approach for deciding the trade-off between ensuring data consistency and scalability in the cloud. The Technical Board of Appeal found that this was technical, as database management systems “are not merely static memory configurations, they implement methods operating on the data and the data structures to query the data, for example” (point 9 at page 14). The Board further referred to a line of previous cases that support the finding that query optimisation in a relational database management system does contribute to the technical character of the invention.

The Technical Board of Appeal followed up with its decision in T 0697/17 on 17 October 2019, in which Microsoft’s patent application for a relational database system and a corresponding method for updating values in a complex-structured-type column had been refused. The Board found that it followed from established case law that internal data structures, including an index, a query tree and components, have technical effects because they “purposively control the operation of the database management system and of the computer system to perform those technical tasks” of providing access to data and for optimising and processing queries (point 5.3.1 at page 20-21). The Board found that a database management system involves technical considerations, and the requirement for further technical effect was met.

BAHR’s opinion

The case law that clarifies the framework for patenting of software is welcome. The exception that excludes computer programs and presentations of information as such from patenting, does at first sight appear to exclude quite a lot of software inventions from patenting. Whether a certain invention has “further technical effect” will continue to require a case-specific assessment, but the recent case law does go one step further towards clarifying the framework for such an assessment, especially when a software invention controls the operations or functioning of a computer.

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