If a patent for a computer-implemented
invention is not a listing of the program code, then what would such a patent
look like? What would it disclose?
Patents for CII may comprise claims to
computers, computer networks or other programmable apparatus, whereby at least
one feature is realised by means of a computer program. If the invention
concerns software which can be loaded into memory, transmitted over a network
or distributed on a data carrier, a claim to a ‘computer program' or ‘computer
program product' may also be present in addition to a computer-implemented
method. However, in such inventions, although different claim structures are
possible, the set of claims usually starts with a method claim, defining the steps
performed by a computer, or other data processing means capable of running
software, to achieve the desired technical effect.
A common type of CII patent relates to
subject-matter where all the method steps can be fully carried
out by computer program instructions running on e.g. a personal computer, the
processors in a smartphone or printer etc. Other types of CII patents
concern inventions where some method steps are performed outside a
computer, and require specific technical means, such as a sensor. For example, in a method for
automatically braking in an self-driving vehicle, sensors measure the distance
to the vehicle in front, and the signals received and produced by the sensors
are used to control the braking process. Physical devices like sensors provide inputs and outputs for the
invention, but the decisions as to how the devices operate are taken by a
computer according to parameters and instructions, i.e. software. Any patent
for such an invention would protect the combination of devices and computer
carrying out the novel method.
Whereas mechanical inventions are
represented with technical drawings in patents, for CII the patent will often
feature a flow diagram for the method, showing the decision steps in the
process, and any interactions with devices and external inputs and outputs. For
the method mentioned above, for automatically braking in a self-driving
vehicle, the flow chart might look
like this:
Figure: Flow diagram for an automatic braking system in a self-driving vehicle.
Some examples of claim formulations:
(i) Method claim (claim 1)
- A computer-implemented method
comprising steps A, B, ...
- A method carried out by a
computer comprising steps A, B, ...
(ii) Apparatus/device/system claim
(claim 2)
- A data processing
apparatus/device/system comprising means for carrying out [the steps of] the
method of claim 1.
- A data processing
apparatus/device/system comprising means for carrying out step A, means for
carrying out step B, ...
- A data processing
apparatus/device/system comprising a processor adapted to/configured to perform
[the steps of] the method of claim 1.
(iii) Computer program [product]
claim (claim 3)
- A computer program [product]
comprising instructions which, when the program is executed by a computer,
cause the computer to carry out [the steps of] the method of claim 1.
- A computer program [product]
comprising instructions which, when the program is executed by a computer,
cause the computer to carry out steps A, B, ....
(iv) Computer-readable [storage]
medium/data carrier claim (claim 4)
- A computer-readable [storage]
medium comprising instructions which, when executed by a computer, cause the
computer to carry out [the steps of] the method of claim 1.
- A computer-readable [storage]
medium comprising instructions which, when executed by a computer, cause the
computer to carry out steps A, B, ...
- A computer-readable data carrier
having stored thereon the computer program [product] of claim 3.
- A data carrier signal carrying
the computer program [product] of claim 3.
Example claim
formulation for an invention where some method steps are performed outside
a computer, and require specific technical means
1 A method of controlling the braking
process in a vehicle, comprising:
receiving, in a control
device, signals from sensors arranged to detect wheel blocking while pressure
is applied on the brakes of the vehicle,
controlling brake pressure,
by operation of said control device, to
alternatingly de-block and block the wheels,
such that permanent
blocking of the wheels is avoided.
2 A system for controlling the braking process
in a vehicle, the system comprising sensors and a control device, the sensors
arranged to detect, during a braking operation, wheel blocking and produce
corresponding signals, the control device arranged, during said braking operation,
to receive said signals and control brake pressure to alternatingly de-block
and block the wheels, such that permanent blocking of the wheels is avoided.
3 A computer program (product) comprising
instructions which, when loaded and run on the system of claim 2, causes the
control device to perform the corresponding steps of claim 1.
4 A computer-readable medium having stored
thereon the computer program (product) of claim 3.
Remarks: The method has steps which are
executed by specific technical means (the sensors and the control
device), which therefore have to be defined in the device claim because they are essential features
for executing the method. In this example, the device claim may make reference
to method claim 1, since it is clear how means for executing this method are to
be implemented. However, a computer program making reference only to claim 1
would lack support, because such a program could not be executed e.g. on a
general-purpose computer which does not have the sensors and control
device. Therefore, it
must be clear from the program claim that the program is to be executed on the
specific system of claim 2.
The starting point for assessing the
patentability of computer-implemented inventions is the fundamental provision
that a patent should be granted for any invention, in any field of technology,
provided that it is new, involves an inventive step, is susceptible of
industrial application and is not expressly excluded from patent protection. Article
52 EPC stipulates that certain subject-matter is not regarded as a
patentable invention when claimed as such, for instance discoveries, scientific
theories and mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts,
playing games or doing business, presentations of information and programs for
computers.
Patent
protection for technical creations
Whilst the EPC sets out the patentability
requirements of novelty, inventive step and industrial application in some
detail (Articles 54,
56
and 57
EPC), it does not contain a legal definition of the term "invention".
It has, however, been part of the European legal tradition since the early days
of the patent system that patent protection should be reserved for technical
creations. The legal basis for this requirement is found in Article 52 and Rules 42 and 43 EPC, as well as in relevant case law of the EPO Boards of Appeal. The
subject-matter for which protection is sought must therefore have a
"technical character" or, to be more precise, involve a
"technical teaching", i.e. instruction, addressed to a technically
skilled person as to how to solve a particular technical problem using
particular technical means.
The problem solved by the invention must
thus be technical, in contrast for example to a purely financial, commercial,
cognitive or mathematical one. This must be satisfied in order for the
invention not to be excluded from patentability.
Although the law does not define the term
"invention", it does contain a non-exhaustive list of subject-matter
or activities that are not to be regarded as "inventions". Among the
particular examples mentioned in this list are "programs for
computers". It should be emphasised that the subject-matter or activities
on the list are excluded only if the European patent application or patent
relates to them "as such".
In particular, a claim to a computer program claimed is not
excluded from patentability if it is capable of bringing about, when running on
or loaded into a computer, a further technical effect going beyond the
"normal" physical interactions between the program (software) and the
computer (hardware) on which it is run. The normal physical effects of the
execution of a program, e.g. electrical currents, are not in themselves
sufficient to lend a computer program technical character, and a further
technical effect is needed. The further technical effect may be known in the
prior art.
The case
law of the Boards of Appeal
In the field of computer-implemented
inventions, many decisions have developed the interpretation of the EPC
provisions relating to the term "invention", providing guidance on
what is patentable and what is not. EPO case law says that controlling or
carrying out a technical process is not excluded from patentability,
irrespective of whether it is implemented by hardware or by software.
Whether the process is carried out by means
of special circuits or by means of a computer program has been found to depend on
economic and technological factors; patentability should not be denied on the
grounds that a computer program is involved.
A specific claim form for the protection of
computer-implemented inventions is the "computer program/computer
program product". It was introduced in order to provide better legal
protection for computer programs distributed on a data carrier and not forming
part of a computerised system.
This claim form should not be confused with
the term "computer program" as a list of instructions. Subject-matter
claimed under this form is not excluded from patentability if the computer
program resulting from implementation of the corresponding method is capable of
bringing about, when running on a computer or loaded into a computer, a
"further technical effect" going beyond the "normal"
physical interactions between the computer program and the computer hardware on
which it is run.
The normal physical effects of the
execution of a program, e.g. electrical currents, are not in themselves
sufficient to lend a computer program technical character, and a further
technical effect is needed. If the requirement for a further technical effect
would be dropped, and any computer program would be considered an invention,
this would effectively circumvent the exclusion of most of the items mentioned
in Article 52 EPC. In practical terms, subject matter such
as business methods, mathematical methods, methods for performing mental acts,
would then be patentable inventions, if implemented as computer programs. The
requirement for a further technical effect in the case of computer programs
serves therefore this purpose, namely compliance with Article 52 EPC, and at the same time enables patenting of
those technical inventions implemented partly or wholly as computer programs.
The further technical effect may result for
example from the control of an industrial process or the working of a piece of
machinery, but also from the internal functioning of the computer itself (e.g.
memory organisation, program execution control) under the influence of the
computer program.
For instance, a method of encoding audio
information in a communication system may aim to reduce distortion induced by
channel noise. Although the idea underlying such a method may be considered to
reside in a mathematical method, the encoding method as a whole is not a
mathematical method "as such", and hence is not excluded from
patentability by Article 52(2)(a) and (3) EPC. Similarly, a method of
encrypting/decrypting or signing electronic communications may be regarded as a
technical method, even if it is essentially based on a mathematical method.
On the other hand, "schemes,
rules and methods for (...) doing business" are not patentable; but a new
method which solves a technical, rather than a purely commercial,
financial, cognitive or administrative problem may indeed be patentable.
Case
law of the EPO Boards of Appeal and the examining practice
Two very influential decisions of the Boards of Appeal
define the present EPO practice: T 0641/00 (Two
identities/ COMVIK) of 26.9.2002, and T 0258/03 (Auction method/HITACHI) of
21.4.2004. In the first one, the Board concluded that
"An invention consisting of a mixture of
technical and non-technical features and having technical character as a whole
is to be assessed with respect to the requirement of inventive step by taking
account of all those features which contribute to said technical character
whereas features making no such contribution cannot support the presence of
inventive step".
In
the second, the Board concluded that
"A method involving technical means is an invention within the meaning of
Article 52(1) EPC".
As a consequence
of these two decisions, the present approach is essentially a two-step
procedure. In the first step, it deals in a more or less formal manner with the
requirement of technical character. However, in the second step, it scrutinizes
the features of the claimed invention, clarifying that only technical features
support the presence of inventive step.
In more
detail, during the first step an evaluation is made as to whether the claimed
subject-matter is an invention within the meaning of Article 52 of the EPC. For
apparatus claims this is always the case. For method claims, if the claim
involves technical means (for example the use of a computer or the Internet),
then the claim is judged to be an invention according to Article 52 EPC. In
such a positive case, an evaluation of the remaining requirements of the EPC
(novelty, inventive step) takes place in the second step.
In the
second step of this approach, when evaluating the existence of novelty and
inventive step, the Examining Division disregards any features that do not
contribute to the technical character of the claimed invention.
Two
further decisions of the Boards of Appeal that confirm present practice are
mentioned below:
T0930/13 (M-Commerce virtual cash system / QUALCOMM)
of 02.03.2017, confirming that financial and/or administrative features in the
claim cannot support the existence of inventive step.
T2330/13
(Checking selection conditions in a product configuration system/SAP) of
09.05.2018, confirming that even if a task performed by the main claim is of
non-technical nature, the specific technical features of the computational
method performing the task can contribute to the technical character of the
invention and can, therefore, support the existence of inventive step.
The digital technology that has become so
widespread in recent decades has two complementary elements, each dependent on
the other. Hardware refers to the physical components, such as the
micro-processor chips and digital memory inside a computer as well as the
external devices the computer controls. Software, on the other hand, includes
all the protocols and instructions to tell the hardware what to do, when and
how. Without software, hardware is useless; and without hardware, software
cannot perform.
Patents can protect novel and inventive products
(like physical hardware) as well as novel and inventive processes, even if the
sequences of steps in these processes are carried out on a computer using
software. Such novel and inventive products or processes are known as "computer-implemented
inventions" (CII).
Original source code and object code are
protected by copyright - just as if the program was a work of literature like a
poem or novel. However, while copyright protects a creator's original expression
of a concept, it does not protect the underlying technical concept itself. For
example, the copyright on a source code that, when being run on a computer,
controls the temperature of an air-conditioned room in a novel and inventive
way essentially protects only the software as is from being copied. However,
copyright cannot provide protection for the actual novel and inventive solution.
Patents, on the other hand, can be used to protect technical solutions in the
form of products, processes and computer programs.
In the case of CII, software which
does not solve a technical problem in a novel and non-obvious manner cannot be
patented. However a process comprising a series of steps to solve a technical
problem, may be worthy of patent protection, even if the process is carried out
using software. The process in question might control external hardware (like a
robot arm or a GPS device) or just run purely internally within a computer
(like software to improve memory access or compress data). For example, a systems engineer who invents a
new way of load balancing on a network of computers (defining which computer
will perform which task), can implement the invention entirely in software. If
this way of load balancing is new and inventive, it can be protected by a
patent, such that competitors will be prevented from using the invention,
unless they pay a fee to the patent's owner.
