Patenting ICT
& Computer Implemented Inventions

ICT and Computer Implemented Inventions (CIIs) are patentable in Europe, and by extension Ireland, so long as strict criteria set down by the EPO are adhered to. It is worth noting that ICT companies can generate large royalty revenue streams by using patents. For example, Qualcomm Inc. are paid several billion dollars per annum in licensing fees by allowing major Telecommunication companies around the world make use of their patents.

In general, for ICT inventions, the main criteria in assessing whether an ICT invention is patentable are Novelty and Inventive Step (obviousness). Novelty is normally straight forward to prove - the invention is either new or it is not. Determining whether an invention involves an Inventive step is more of a grey area and very difficult to quantify. In identifying the contribution any particular invention makes to the art in order to determine whether there is an inventive step, the Problem-Solution approach is normally used by the EPO. The requirement for the objective technical problem and its solution to be determined is the approach almost all European Patent Examiners adopt during examination.

What are CIIs?

Computers are part of almost every area of modern life, and they are getting more advanced every day, with increasingly small gadgets performing ever more complicated tasks. Consequently, the number of new inventions seeking patent status in the field has been rising steadily.

The EPO's stated practice, from their website, is that a thorough examination process awaits all new applications in the field of CII inventions. The main aim of the EPO is to distinguish true technological innovations - which contribute to the overall level of progress - from straightforward variations on existing methods. In technical terms, this means ensuring the novelty and inventiveness of computer implemented inventions (CII).

A CII is usually defined as an invention that works by using a computer, a computer network or other programmable apparatus. To qualify, the invention also needs to have one or more features which are realised wholly or partly by means of a computer program.

What are the requirements to obtain a patent in Europe?

To be patentable, CIIs must fulfil the same basic patentability requirements as inventions in all other fields. These are set out in the European Patent Convention (EPC) and primarily Articles 52, 54 and 56 EPC.

Accordingly, CIIs can be patented if:

• They have technical character and solve a technical problem.
• They are new.
• They involve an inventive technical contribution to the prior art.

With this definition as a basis, the patenting process for CIIs at the EPO is very restrictive as it puts emphasis on new technical solutions. The most striking consequence of this definition is that computer programs, which do not solve a technical problem, are not patentable in Europe.

Why are such programs not patentable in Europe?

The EPO does not grant patents for computer programs or computer-implemented business methods that make no technical contribution. Programs for computers as such are excluded from patentability by virtue of Art. 52(2)(c) and (3) EPC. According to this patent law, a program for a computer is not patentable if it does not have the potential to cause a "further technical effect" which must go beyond the inherent technical interactions between hardware and software.

On the other hand, a CII (even in the form of a computer program) that can provide this further technical effect can be patentable, subject to the other patentability requirements, such as novelty and inventive step. In this case, it would be recognised as providing a technical solution to a technical problem.

What does this mean in practice?

In order to demonstrate the effects of CII legislation the following are two real-life cases illustrating what types of CII inventions are patentable before the EPO:

A patent application for an Internet auction system was not granted by the EPO because the system used conventional computer technology and computer networks - which meant it made no inventive technical contribution to the level of existing technology. Such a system may provide business advancement to its users, but that is not the type of advancement required by the EPO.

On the flip side, the problem of improving signal strengths between mobile phones is a technical problem, even if it is solved by modifications to the phone software rather than its hardware. Such an invention would obtain a patent, provided that the solution is also novel and inventive.

In this respect, the granting practice of the EPO differs significantly from that of the United States Patent and Trademark Office (USPTO), where patent protection for software is granted, even if it does not solve a technical problem.

Summary

For several years now, opponents of EPO practice regarding CIIs have voiced their criticism in public. Applicants have and are having severe difficulties with prosecuting their applications before the EPO, usually ending with a refusal due to the strict interpretation of the law adopted by the EPO. The above information setting out the EPO's position on CII inventions is sourced from the EPO's website and can be found on www.epo.org. Please contact Michael, michael@purdylucey.com, if you have any general queries on CII applications or ICT related inventions. Michael will also be glad to give advice on any specific patent application.