How the EPO examines software patents | #softwarepatent (2019)

All right, so thank you, Spasiba, thank you
for having me here in Saint Petersburg. It’s actually the second time I’m in Russia
only, the first time in Saint Petersburg. And it’s a beautiful city as
far as I can tell so far. So let’s talk about my favorite topic which is
software patents in Europe. Let me maybe start with telling you a little bit
about what makes me competent to talk about this topic to us. So I’m a patent
attorney, I’m not a lawyer, I’m a patent attorney, so half technical guy and only
half legal guy. My technical background is computer science and my firm BARDEHLE PAGENBERG has been quite active in the software field ever since. So I don’t
know if you’ve heard it, in Germany there has been a lot of patent litigation
lately, we had the smartphone wars for example where basically – my firm was
representing Microsoft and Apple as well against the whole Android ecosystem
basically. Then the smartphone wars have somewhat settled right now. So right now
the next litigation wave is more on the telecommunications back-end, so the
network providers, and the next litigation wave which is already dawning at the horizont and which has already started actually is about
connected cars. Autonomous driving – and I mean cars are these days essentially
smartphones on wheels, so I don’t know if you’ve heard it but Broadcom just sued
BMW and Mercedes Benz in Germany, so also this litigation wave is already starting.
And all of those litigations involve to a great extent not hardware, not at all,
but only software based functions and that’s why this topic is so relevant.
So my firm does quite a lot of litigation as I told you but we’re also
we’re a mixed firm of attorneys-at-law who do primarily the litigation side, the
infringement court proceedings, and the other half of the firm is patent
attorneys like me who participate in the litigations but who deal with
prosecution. So getting the patent applications granted before the patent
offices. Let’s see if that works, yeah, so who of you already has experience with the
European patent system just raise your hand? Has anyone filed a European patent? Not many people. Then maybe it makes
sense to tell you a little bit about the European patent system, maybe some
figures to give you some context. So the this chart shows the number of patent
applications filed at the European Patent Office. Steadily increasing. Last year we had roughly like 175,000
patent applications filed at the European Patent Office which is quite a
lot. I think the the EPO has like 4,000 examiners, so they have quite something
to do. The European Patent Office is also among the so-called IP5, the five
biggest patent offices, and when I was preparing this talk I was curious about
the extent to which Russian companies file European patent applications. So I
looked up this chart from the EPO. If the clicker works, yep. So this chart shows
the top 50 countries of origin where European patent applications come from.
And we have the usual suspects: the United States, number one, Germany, Japan, France, China, and so on. Now, can anyone spot Russia? I was quite – sorry wrong button – I was quite impressed because Russia is only here: number 34.
The Russian Federation has only filed – companies from the Russian Federation
have only filed 229 patent applications last year out of the 175,000. And I’m
wondering: what why is that? So apparently Russian companies don’t really file European patents. In case it is because of a lack of understanding of
the European patent system, I hope my presentation now helps you shed some
light on that. One important thing to know is that the European Patent
Convention, which is the legal text behind all that, is not about the EU, the
European Union. That’s two different things. The European Patent
Convention is simply a multinational contract in which certain member states
participate. and there are 38 member states to to the European Patent
Convention, including most of the European Union countries but also
including countries which are not part of the European Union, for example
Switzerland or Turkey. Those are part of the European patent system although they
are not part of the EU. So the advantage of the European patent system is that
you have a single patent examination procedure. You have to file only a single
application in one language, English, German or French, which is then dealt
with by one patent examiner. And once you convince the patent examiner to grant a
patent, you can get protection in all of those 38 countries with one patent
application. Now there is no such thing as a single enforceable European patent
but right now the system is like that when the European patent examiner grants the patent it kind of explodes into a bundle
of national patents. So once the patent examiner allows your patent application
you can then select in which countries you wanna validate that patent and
this then results, for example, in a German patent, in a French patent, in a UK
patent. And if you wanna enforce your patents that has to be done then on
national level. Now in Europe the most popular litigation venue is Germany. Most
of the patent litigation cases are filed in Germany and also the litigation
defendant then probably will attack the validity of your patent. Also that has
to be done on the national level. So a defendant also has to kill so to say
each and every national part of the European patent. Now that will change
probably with the unitary patent and the Unified Patent Court. You might have heard
of that. Whole different story, I won’t get into much details. It’s in the
planning for many years. It was almost finished, it was about to come into force.
Then we had brexit and some other obstacles and basically right now no one
really knows when the European – the unified patent will come. So we still
have this system which I told you: one prosecution before the European Patent
Office and then national patents in the end. So that’s basically a brief rundown of of the European patent system. If you
have any questions in the meantime, we can do this interactively in no problem
so if you have any questions just raise your hand and interrupt me also in case
I tell you something that is completely uninteresting maybe. So, European patents
for software, that’s the basic question are there patents for software at the
European Patent Office. And the answer is – typical attorney answer – well it depends.
Yes, there are patents for software if there’s an inventive technical
contribution to the prior art. That’s really the bottom line. If you can only
remember one thing from my presentation that’s it. You can get a European patent
on software if the software does something technical in a non-obvious
manner, in an inventive manner. If we look a bit in more detail into the the legal
framework, there are basically two hurdles to software patentability. the
first hurdle is patent eligibility, so that’s an absolute hurdle.
No comparison with the prior art with existing things at that point, but it’s
an absolute hurdle. And this is basically a very coarse filter to filter
out inventions that are purely abstract, purely conceptional. So pure business
methods, mathematical methods, scientific theories, things like that. Things that
are purely non-technical, those are filtered out here at the patent
eligibility hurdle. But in practice it’s really, it’s really a non-issue because
you overcome this patent eligibility hurdle if there is a single technical
feature in your claim. And that feature can be trivial. So as soon as you have
for example a computer your patent claim which is always the
case because any software is executed on a computer you overcome this patent
eligibility hurdle. The challenging test is then the second hurdle and that
is then the the typical hurdles novelty and inventive step. You compare the
invention to the prior art and here the decisive thing is that when
assessing inventive step, obviousness, only the technical features of the
invention are looked at. So what a patent examiner typically does is he will take
your patent claim, all the features, he will compare it with the closest prior
art, something which already exists, he will figure out which features are
already known in the prior art and which are the real novel features. And
concerning those novel features he will make an assessment for each novel
feature: is it technical or not? And if it’s not technical,
it is simply disregarded in the inventive step assessment. So only the
technical novel features can establish inventive step. Only those enter the
obviousness assessment. Now maybe a brief comparison with another
jurisdiction, the US jurisdiction. I think it’s to some extent it’s the other way
around. So if you if you are familiar with the US approach there is lots of
discussions about patent eligibility. There was a couple of years ago this
Alice decision which opened up the box completely new and right now it’s
quite hard to predict whether something will be considered patent
eligible or not. There’s not a really settled approach
here but we will have to wait about the case law developing. So the decisive
hurdle at the USPTO is patent eligibility, and once you pass that
hurdle which is quite difficult right now, inventive step is about the
invention as a whole. So here the whole invention is looked at. And that’s quite
the other way around that in the EPC as I just told you. At the EPC patent
eligibility is a non-issue, a single technical feature is enough, for example
a computer, and then in inventive step that’s the real hurdle, only the technical
part of the invention – sorry – is looked at. So now you might ask yourself I’m
talking about technical all the time so what is then – the clicker somehow doesn’t
work – what what is technical and well here it gets a little bit complicated because
there is no, let’s say there is no exhaustive definition of the term
technical in the law. What we have in the law is only a short list of things that
are considered non-technical: mathematical methods, scientific theories,
the presentation of information, computer programs also. Those things are
considered non-technical. But they are only excluded from patentability if
they are claimed “as such”. So that’s quite difficult to understand from from the
legal text and frankly I really cannot understand it alone from the legal text.
But the Boards of Appeal of the European Patent Office have established
quite a reasonable approach how to deal with that, and that
was what I just told you, namely inventive step and there only the
technical features are taken into account. So if we look at individual
specific cases in many cases it is quite easy to determine whether something is
technical or not. So if we look at the far end of this scale I was trying to
draw here so if we have for example embedded control software that’s clearly
software that achieves a technical effect, that’s something technical if
it’s embedded if it controls I don’t know the manufacturing plant or
something like that that’s clearly technical software and that is then
patentable. On the other right end of the spectrum we would have something like a
pure business method I don’t know a method of selling products in a certain
way implemented on a computer. If that’s the only technical feature that won’t
get you a patent because the majority of the claim will be directed to this
business method which is non-technical and which doesn’t count for inventive
step so that is an example of a non-technical method and I mean it gets
interesting of course right in the middle where there are a number of cases
where it’s really not so easy to say should this be patentable or not. So in
the end as I said there is no legal definition of the term technical. What it
comes down to is you have to know the case law. So in the European Patent
System there’s the first instance the patent examiners but if a patent
examiner rejects your patent application you can find an appeal and the appeal is
then dealt with by the Boards of Appeal which is a separate entity separate from
the patent office those are more like judges they only do with appeals and
they then check the first Instance decision and
render an own decision and this then creates case law. They really decide on
specific the individual aspects in the appeal case and those appeal cases are
then published and that’s what you need to know you just have to need have to
know the the old cases and have to see well there is a similar case and this
one was decided so and so technical or not and then you have to draw analogies
for your case. So I think the best way to for you to get a feeling of how
the Boards of Appeal deal with software inventions is just to go through
examples. And I have six examples here which I would like to show you to give
you a feeling of what is now technical or not is only tools or is it also
something else. So the first example that’s maybe an
easy one so maybe let’s let’s do a little quiz here so that’s the patent
claim. It’s – all of those examples are real cases but the patent claims are a
little bit abstracted by me so it’s a little yeah to make it easy to
understand most of the time a patent claim is more more comprehensive and
more complicated. So this one is about an anti-lock braking system configured for
detecting lateral lateral strain on each wheel, monitoring if a threshold is
exceeded, and selectively adjusting brake fluid pressure to each wheel. So
implemented in some kind of control algorithm in software probably so it’s a
software patent. So what would you say? Is this – let’s go through these two
hurdles – is it patent eligible? Who says yes, raise your hand. Who says no?
Okay, the rest is unsure. So this is clearly patent eligible because as I told
you the patent eligibility hurdle requires only a single technical feature
in your claim and it might be a trivial feature and I mean here we have a
braking system which is a physical system so this is clearly
patent eligible. Now the second hurdle is then inventive
step. Now we don’t have time to assess the prior art right now to see if it’s
really non-obvious and inventive but we can try to figure out whether the
features of those claims the three features whether those contribute to to
the technical character, whether those are technical features and what would
you say here? I mean detecting strain on a wheel,
monitoring a threshold and adjusting brake fluid pressure on a wheel. Are
those technical features? Yes, raise your hand. People nodding. Yeah exactly, so in
this case all of the features contribute to the technical character because they
achieve a technical effect, they solve a technical problem – that’s always the
control question you might ask – so all of those features have to be looked at when
comparing the invention to the prior art. Now here’s another example: a method of
sorting a list of numbers, comprising finding the smallest number, swapping the
smallest number to the top of the list, and repeating steps a. and b. for the
remainder of the list. So that’s basically a sorting algorithm.
I think it’s called selection sort if you’re into computer science a little
bit. So should that be patent eligible? Who says yes? People shaking
their heads. You would say yes should be patent eligible. Sorry, no, it’s not
because if you look at that claim it doesn’t have any technical feature in it.
It’s just a method of sorting a list of numbers and operating in features a, b
and c on those numbers. It can be done completely in the mind and the human
mind. It doesn’t require any computer or any
technical features though so this claim would not be patent eligible. That’s one
of the rare cases which fail on the first hurdle. Now what if we
say the same invention and we say it’s a computer implemented method of sorting a list of numbers and the same features you might already guess it, that’s then
patent eligible because of only the presence of this word computer in the
claim. That makes the claim patent eligible. Now does it provide a technical
contribution for a mental step what would you say which of the features are
technical and which are not? Well, the only feature in that claim is the
computer in computer implemented. The rest, sorting numbers, finding the
smallest number, swapping the number to the top and so on, are purely abstract
mathematical concepts, no technology involved here. So what happens then is
that the examiner just strikes out all of those features and assesses only the
remaining technical features compared to the prior art and I mean the decision
will then be implementing this as such excluded method on a computer that’s the
only technical thing that’s obvious. And the invention will not be granted a
patent because it’s it’s obvious. So those are kind of extreme examples, the
break control system is clearly technical, sorting numbers as such is
clearly non-technical. Let’s move a bit into the middle of the scale. So we
have a heart monitoring apparatus comprising. So that’s basically a cardiac
pacemaker. I hope no one had a heart attack yet, so if you had you’ll probably
have one of those pacemakers. It has a sensor for receiving an
electrocardiograph signal from a patient, means for pre-processing the signal to
suppress noise and, a neural network for identifying irregular heartbeat. So this
is really an artificial intelligence invention. It uses a neural network, some
kind of machine learning, fancy stuff like that.
So should that be patent eligible? Yes, people nodding. Of course, because
it’s it has an apparatus of apparatus in it and that’s a technical feature. And
which of the features contribute to the technical character for the second hurdle?
All of them, because well it’s it’s a sensor which is a physical thing it
receives signals from a patient that represent the heartbeat so to say and
yeah the neural network – that’s important to know – the neural network, the last
feature, a neural network would in itself be only an abstract data structure. That
would not be a technical feature but this is a neural network for which is
specifically designed for identifying irregular heartbeats. And if you limit, as
in this claim, the neural network to this purpose which is a technical purpose – identifying irregular heartbeats – then this neural network also becomes
technical. So here we have all features contributing to the technical
character of the invention. Now it gets more interesting maybe. So we have spam
classification, basically a spam filter. It’s a method of classifying emails
depending on their content performed by a computer program, and the steps are:
applying a probabilistic classifier to calculate a probability that the email
is spam, wherein the classifier has been trained on past classifications of email
content. So that’s also an AI example, machine learning, artificial intelligence.
And what it does is it yeah looks at your incoming emails in your
inbox and classifies them into spam or not based on this probabilistic
classifier which has been trained on past emails. Patent-eligible, yes or no?
Yes, because it’s performed by a computer program executing on a computer. That’s a
technical feature. And now the question is are those algorithmic features
applying that probabilistic classifier to calculate the probability that email
spam and that the classifier has been trained,
are those technical features? You’re shaking your head. You’re right, they are
not because what this is actually a patent application from Microsoft. We
also have people from Microsoft here I think. So sorry, didn’t fly in that
case. What the Board of Appeal said in that case was that classifying emails
depending on their content and that’s what the invention does here, depending
on the text inside the email, to check whether the the text of the email, the
content, is really valuable to the user or whether it is spam, that’s a
non-technical differentiation because the question whether an email is
wanted by the user or not so that it is spam, that’s that’s a non-technical issue.
Would have been different maybe if the emails would have been classified based
on a technical characteristic, maybe I don’t know – the size of an email
attachment or something. That would have been maybe a technical characteristic,
the storage size – two minutes, okay – then let’s skip this one and come to an
interesting case. This is then the last example. A computer-implemented
method for simulating pedestrian crowd movement. So in this case the invention
was about having a model of, for example a building,
(((technician informing about problems with the live translation))) Hmm, I’m sorry. Should I proceed
nevertheless? I hope you understand my English talking. Yeah okay, so this was
about having a mathematical model of a building, for example, a railway station
for example, and a model of how people move in such an environment. And then the
method would simulate how a crowd of pedestrians would move through the
railway station, for example, then you could derive insights, such as in case of
an emergency whether people could be evacuated fast enough and things like
that. So question: is it patent-eligible? Yes, because it’s a computer-implemented
method. And now the interesting question: Do those algorithmic features, do those
contribute to the technical character? No one, no one really knows. And the thing is:
no one really knows! Because this is an interesting case, because it was an appeal
case and the appellant said that where there was an earlier decision which was
about simulating an electronic circuit and the current flow in that circuit and
this one was considered technical. Now the appellant said, well this invention
is quite similar because it’s about simulating an environment, such as a
railroad station, which is also a technical thing. And he also said that
people moving through that environment also follows – on a macro level – kind of
physical constraints. People, cause for example,
a human being cannot move through a wall and things like that. So he said that
it’s quite similar to this current circuit simulation case, and therefore
this one should also be patentable and technical. So the Board of Appeal here
was not so sure because they said, well yes, it’s somewhat similar to this older
case. But they really questioned the older case as such. They said that, well,
only simulating a hypothetical system here, because that doesn’t need to
be a real railroad station. It can be just a model of a hypothetical railroad
station. This claim also covers, for example simulating movement of people
through an online game, for example, which is purely – it’s not real – so they said, no
we don’t agree with that earlier approach and therefore what they did
here, the Board of Appeal, is they referred some questions to the Enlarged
Board of Appeal, which is the highest judicial entity of the European patent
system, to answer that question basically. If simulation methods which only operate
on a simulated model of a real word entity but not on a real-world entity
itself, whether that should be technical or not. And we don’t know, the
Enlarged Board of Appeal will have to decide that. And this decision will have
tremendous impact on a whole industry branch, the whole simulation methods
branch. So bottom line: what you need to know. The legal framework at the
European patent system is quite stable. Patent eligibility non-issue. The decisive
question is always inventive step, where only the technical part of the invention
is looked at. And the question what is technical or not is then always a
question of the individual case, and you have to know basically old cases to
draw analogies for your case. Now to help you with that, what we did – my team and I
at my firm – is we set up a little website called
You might wanna visit that website, it’s some kind of a Wiki where our mission is to provide
actionable summaries of virtually all Board of Appeal decisions that concern
European software patents. Currently we’re adding a new entry every Tuesday
and Thursday, so check it out, I hope it’s helpful. Okay, that’s all for my side.
Thank you, Spasiba!

One thought on “How the EPO examines software patents | #softwarepatent (2019)

  1. 23:55 Was she complaining that you were talking to fast?
    (English is my first language, and I can understand everything you're saying.)

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