1

THE PATENTABILITY
OF SOFTWARE UNDER
THE EPC

Impact.
Passion.
IP.

www.bardehle.com

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CONTENTS

5
1. What is an “invention” under the EPC?
5
2. Software/Computer programs/Computer-implemented inventions?
5
3. Technical character
8
4. Assessment of technical character under the EPC
9
5. The assessment of the further patentability requirements for CIIs
9			 5.1 Industrial applicability
9			 5.2 Novelty
9			 5.3 Inventive step10			 5.4 Clear and complete disclosure
10 6. Summary of current EPO practice12
7. Claim format for computer-implemented inventions
12
8. Specific aspects decided by case law
12			 8.1 Information modelling12			 8.2 Database technology
12			 8.3 Mathematical methods/simulation
14			 8.4 Business methods/Financial transactions
14			 8.5 Information/Translation
14			 8.6 Graphical user interfaces (GUIs)
14			 8.7 Computer games
14			 8.8 Bioinformatics
15
8.9 “Big Data” and artificial intelligence17
9. Referrals G 3/08 and G 1/19
17
10. Summary
17
11. Further information

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The invention of the microprocessor and theresulting digital revolution has created anever increasing variety of software-controlled
products and services, which have led towhat is referred to as the age of information
technology and Industry 4.0. The protection of
costly investments in innovative technology
in the fields of telecommunication, softwaredevelopment, “big data” analysis and artificial
intelligence has strategic importance for thecompetitiveness of any market participant, be
it a global player or a small start-up company.
Although the justification of patent protection forsoftware-related inventions may still be prone tocontroversy among policymakers, lobbyists andthe media in Europe, case law of the Boards ofAppeal of the European Patent Office has clarified
various fundamental issues in this respect sothat patentability of software-related inventions
under the EPC has become relatively predictable.

THE PATENTABILITY
OF SOFTWARE UNDER
THE EPC

The following executive summary explains the legal status quo under theEuropean Patent Convention (EPC) andelucidates the possibilities available forand the limits imposed on the obtainingof European patents for software-related
inventions.
1. What is an “invention” under the EPC?
The legal situation is even more complex, since
the listed examples are only excluded frompatentability to the extent that they are claimed“as such”. Consequently, the EPC does not consider these items to be non-inventions under all
circumstances, but postulates the developmentof suitable criteria by case law that will distinguish patentable subject-matter from subjectmatter excluded “as such” for all the items on
the list. With respect to computer programs, thecriteria developed by the case law are explained
below.
The EPC does not define the term “invention”.
However, the EPC specifies the qualities an invention must have if it is to be patentable, i.e. it
must be novel, involve an inventive step and besusceptible of industrial application. Under the
EPC, the term “invention” should therefore beunderstood as “subject-matter generally eligible
for patent protection” without a priori having
the required qualities of being novel, inventive
and industrially applicable. The EPC contains
an exemplary list of items that are not regarded
as inventions and are excluded from patent
protection regardless of whether they have the5

above qualities. Among the excluded items on
the list are– mathematical methods,– schemes, rules and methods for
performing, mental acts, playing games,or business methods,– programs for computers, and– presentation of information.
2. Software/Computer programs/
Computer-implemented inventions?
Computer programs are on the list of items
excluded “as such” from patentability. In orderto underline the fact that computer programs
may only be inventions if they meet the criteria explained below, it seems appropriate tocoin a new term for patentable subject-matter
involving the use of computer hardware and/or
software, i.e. “computer-implemented inventions” (CIIs). This term is regularly used by theEuropean Patent Office (EPO) when assessing
the patentability of software under the EPC.
3.Technical character
The basic criterion for deciding whether the
subject-matter defined in the claims of aEuropean patent application may be regarded
as an invention is the presence of a “technicalcharacter”. This requirement is grounded in a
traditional European understanding and has
been firmly established by the judicial practiceof the Boards of Appeal of the EPO for CIIs andindeed for all fields of technology. As mentioned

1. What is an “invention”
under the EPC?
2. Software/Computer programs/Computer-implemented
inventions?
3. Technical character6

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above, the currently applicable version of the
EPC refers to this requirement. In a first stepof the examination whether a European patentcan be granted, the claimed subject-matter istherefore to be assessed to determine whether
it has a technical character, i.e. is an invention.
This is followed by a second assessment (seesections 5 et seqq. below) to determine whether
the invention meets the other requirements forpatentability, i.e. novelty, inventive step andindustrial applicability.
The term “technical” (here synonymous withtechnological), though mentioned at various
places in the EPC, is defined neither by the Convention nor by case law. Moreover, the general
understanding of this term is not static, but
may change over time. However, the situation is
not hopeless in that, on the basis of its historicroots, the core area of the meaning of “technical” is clear and gives reliable directions for
future extrapolations. In particular, the items on
the “as such” exclusion list should be regarded
as non-technical.
The extrapolation approach may be illustrated
by the example of a washing machine. In thepast, the various steps in the operation of a
washing machine (pumping, soaking, tumbling,etc.) were performed under the control of somekind of mechanical control unit. There can be no
doubt that such a mechanism and the controlled
steps in the washing process had a technical character and were thus eligible for patent
protection. Modern washing machines no longer
use a mechanical control unit but instead a

combination of hardware and software. There is
no reason why the transition to computer-controlled operation of the washing machine should
affect its general eligibility for patent protection.
Moreover, an innovation in the operation ofsuch a washing machine should be patentable
regardless of whether it is implemented in amechanical controller, dedicated hardware or
only in software running on an off-the-shelf-micro-processor. A narrow definition of the term
“technical” that would exclude such innovations
is not appropriate.
It is self-evident that when any computer program is loaded to and running on a computer it
causes physical transformations of bit patterns by modifying electrical charges with theaid of electrical voltages and currents. If these
phenomena themselves were considered to be
sufficient for the required technical character, adilemma would arise: either all computer programs would be eligible for patent protection, in
contradiction to the law, or – in the absence ofa discriminating criterion – no programs would
be patentable.
This dilemma has been solved by judicial
practice holding that the above-mentioned selfevident technical effect achieved by all computer
programs is not sufficient for the grant of patent
protection. A further technical effect beyond
that self-evident effect is required to distinguish patentable programs from programs “assuch”, the further technical effect residing in thenature and purpose of the computer program.
In particular, programs serving a technical ap-

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4. Assessment of technicalcharacter under the EPC

9plication by e.g. controlling technical processes or apparatuses may be seen to achieve
such a further technical effect and are hence
eligible for patent protection. Illegal use ofsuch controlling software may therefore be
regarded, and prosecuted, as a direct patent
infringement.
In the above example, the controller for a washing machine may be implemented by a conventional hardware processor and an innovative
controlling program running on this processor.
The program causes a further technical effectbeyond its standard interaction with the hardware processor by controlling a technical apparatus and may therefore be separately claimed
and protected.
Since a computer itself is also a technical apparatus like the washing machine discussed
above, the same approach may be applied inthat all programs which control the internalfunctioning of a computer (i.e. which make or
keep the computer running) so that it can beused as a platform for any applications shouldbe patentable, such as the BIOS or the operating system.
In summary, a computer program is not necessarily a technical means, and the art of programming is not necessarily a technical activity.
Only those programs that lend themselves to atechnical application are considered to have atechnical character, i.e. to have become a technical means.

4. Assessment of technical character
under the EPC

5. The assessment of the further patentability requirements for CIIs

Purely abstract or aesthetic concepts devoid of any technical implications are notconsidered to be inventions. They generally
fall under the “as such” exclusions explicitly mentioned in the EPC (see above). In
all other cases, judicial practice has greatly
simplified the assessment of technical character by establishing that concrete man-madeproducts/devices/apparatus have per se atechnical character. Methods/processes havea technical character if they employ technicalmeans, irrespective of whether or not thesemeans are conventional, provided that they
are explicitly set out in the claims of a European patent application.

At this stage of the examination procedure, available prior art arrives on the scene and serves as abasis for evaluating the above mentioned qualities
of an invention. This assessment, in particularwith respect to inventive step, is the second hurdle
to patentability for a computer-implemented
invention, and is by far more difficult to overcome
than the first hurdle.
5.1 Industrial applicability
Computer-implemented inventions are normallysusceptible of industrial application, so that thisrequirement is easily fulfilled.
5.2 Novelty

Hence, the first hurdle to patentability requiring the presence of an invention is rather
low, and any claimed subject-matter with an
explicit technical bearing is taken “on board”.
This particularly applies to mixtures of technical and non-technical features in a claim,
which is common practice. For the assessmentof technical character, no prior art is taken into
account because the technical character is anabsolute requirement regardless of whether
the subject-matter claimed is known or obvious from the prior art. Technical character istherefore already present if a method claim
sets out hardware components or peripherals,
in particular a conventional PC, or if a device
claim relates to a conventional data carrier
storing a program.

Novelty is generally present if not all features ofa claim are known from a single item of prior art.
Whether non-technical features of a claim alone
may establish novelty over the prior art does notappear to have been conclusively decided by caselaw. This issue is, however, of minor practicalimportance since it can normally be bypassed bydirectly considering inventive step.
5.3 Inventive step
When examining inventive step, a major problem arises for a claim containing a combinationof technical and non-technical features: Can an
inventive step be acknowledged on the basis of a
non-technical feature only? However, since in thiscontext not only differences have to be considered,

but also their effects, which must be of technicalnature, judicial practice has given a clear answer
to this question by laying down that an inventive
step can only be based on one or more featuresthat contribute to the required technical character.
More specifically, a feature justifying the acknowledgment of an inventive step must serve thetechnical solution of a technical problem.
This approach has important consequences for thepractical assessment of inventive step: Based on
the above approach, the relevant skilled person isa person skilled in the technical (or technological)
arts. They are neither competent in, nor do theytake account of non-technical knowledge. Any
non-technical input is considered to be transferred by a non-technical expert to the technicallyskilled person as a framework within which theskilled person may become active. In other words,
features which do not contribute to the technicalcharacter of the claimed subject-matter are to be
excluded from the assessment of inventive stepand treated as pre-existing constraints for thetechnical problem to be solved. The prior art isthen used for assessing whether the novel technical features were obvious in view of the technicalproblem and the pre-existing constraints.
In this context, it is regularly held that the mere
automation of non-technical concepts (e.g. inbusiness or financial services) by means of conventional hardware and normal programmingskills lacks an inventive step.
All in all, inventive step proves to be the barrierthat sorts the wheat from the chaff in the field ofcomputer-implemented inventions.

5. The assessment of the further patentability requirements
for CIIs
5.1 Industrial applicability
5.2 Novelty
5.3. Inventive step

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5.4 Clear and complete
disclosure

5.4 Clear and complete disclosure

6. Summary of current EPO
practice

Apart from novelty and inventive step, an invention has to be disclosed in the description and thedrawings of a patent application in a manner sufficiently clear and complete for the average person
skilled in the art of the related technical field to beable to carry out or rework the invention.
Computer-implemented inventions usuallyconsist of a variety of interacting components,
such as a large data pool, complex algorithms,
interaction of different system components, etc.
To fulfill the requirement of clear and complete
disclosure, all components relevant for theinvention should be sufficiently acknowledged
and described in a patent application.
It is advisable in this respect, on the one hand,to explain the functionalities conceptually, i.e.
regardless of the specific implementation, and,on the other hand, to also describe specificimplementation options and alternatives.
Special attention should be paid to disclosing the individual functional components as“modularly” as possible, so that afterwards,
individual parts of the invention may be used
for delimiting it from the prior art without
having to limit oneself to further parts that are
unnecessary for this purpose.

6. Summary of current EPO practice

Following the structured approachdeveloped by the Boards of Appeal,
the EPO’s current practice in examining software-related inventions
may be summarised by the following
sequence of questions:(i) Does the claimed subject-matter
define or use technical means?
If it doesn’t the claimed subject-matter
is not eligible for patent protection andhence not allowable for this reason.
If it does, it has the required technicalcharacter and is an invention. The firsthurdle has been overcome.
(ii) Is the claimed subject-matter distinguished from the available prior art?
If it isn’t, the claimed subject-matterlacks novelty and is hence not allowable
for this reason.
If it is, it is novel.
(iii) Do any of the distinguishing features contribute to the technical character and are those features inventive
over the prior art?
If it doesn’t, the claimed subject-matterdoes not involve an inventive step and ishence not allowable for this reason.
If it does, a patent may be granted. The
second hurdle has been overcome.

The following figure illustrates the above sequence of steps:

Does the claimed
subject-matter define oruse technical means?

nonot allowable:
no invention

no

not allowable:
not novelnonot allowable:
not inventiveyes

Is the claimed subjectmatter distinguished fromthe available prior art?

yes
Do any of the distinguishingfeatures contribute to thetechnical character and arethose features inventive overthe prior art?

yespatent granted

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7. Claim format for computerimplemented inventions
8. Specific aspects decided bycase law
8.1 Information modelling
8.2 Database technology
8.3 Mathematical methods/
simulation

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7. Claim format for computerimplemented inventions

8. Specific aspects decided by case law
8.1 Information modelling

Software-related inventions are predominantly
claimed as computer-based methods or processes where the basic concept of an underlying program is expressed by method steps.
This formulation normally highlights the main
thrust of such a program: It will be apparent
from the method what the program is aiming at
and what effects are achieved. Computer programs may also be claimed by themselves or as
records on a carrier. The category of computer
programs (or computer program products) has
to be distinguished from method claims sinceprograms are only an inanimate sequence ofcomputer readable instructions that have thepotential for achieving concrete effects when
loaded to and running on a computer, whereas
method steps are actually carried out andeffects are actually achieved. If claimed as acomputer program, computer program productor a record on a carrier, such a claim is in mostcases added and refers back to a corresponding method claim. A literary presentation of
all program instructions, such as for copyright
purposes, is neither required nor useful.
Device/apparatus claims, or, in case of “distributed” inventions like client-server architectures, system claims or claims to subunits ofsuch systems are also possible, and frequently
refer to program constructs as modules ormeans. Finally, the claiming of data and signal
structures or formats is conceivable, eventhough it approaches the grey a of purely mental acts.

Information modelling, though a precursor for
program design, has been considered to be a
non-technical activity as such. It might contribute to the technical character only if specificallyapplied in a technical environment.
8.2 Database technology
Database technology, in terms of the technicalfunctions and data structures actually stored in
the computer, has been found to be technical.
Likewise, the exchange of data between different
application programs using functional data structures (e.g. clipboard formats) were considered an
extension of the the inner operation of a computer
system and were thus found to be patentable. In
addition, programs that refer to garbage collection
and aspects of data retrieval were also considered toprovide a technical effect.
8.3 Mathematical methods/simulation
On the one hand, mathematical methods assuch are also on the list of non-inventions. On
the other hand, mathematics easily qualifies fortechnical applications. In this respect, it was
found that a linear combination for automatically selecting a database management system
in a data consistency management system has
technical character, since it significantly contributes to the operation of the system.

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8.4 Business methods/Financial transactions
8.5 Information/Translation
8.6 Graphical user interfaces(GUIs)
8.7 Computer games
8.8 Bioinformatics

15

Even a simulation that is essentially based onmathematical models can solve a technical problem if it produces a technical effect that exceeds
the mere implementation of the simulation.
8.4 Business methods/Financial transaction
Such concepts - that are excluded as such - arehardly suitable for technical applications and,thus, must not be considered when inventive
step is assessed.
What could, however, turn out to be patentable
are special implementation aspects using hardware designs or program constructs that, in themselves, have a technical character. It is therefore
important to include as many concrete technicalimplementation details as possible to support sufficiency of disclosure and to increase the chancesof obtaining a patent for innovations in this field.
8.5 Information/Translation
Pure information contents are not patentable. However, the use of a piece of information in a technical system, or its usability forthis purpose, may confer a technical character on the information itself in that it reflects
the properties of the technical system inwhich it exists, e.g. by being specifically formatted and/or processed. Linguistic aspectsof a translation process may also generally
assume a technical character if they are used
in a computer system and form part of asolution to a technical problem.

8.6 Graphical user interfaces (GUIs)
Judicial practice is reluctant to attribute technicalcharacter to the design of graphical user interfaces, particularly if they are only based on aesthetic
considerations or solely aim to facilitate humanperception or mental processing. Visual indications of the internal states of a technical system inthe form of visual feedback for human interaction
with the system have, however, been accepted astechnical. All in all, for the time being it appears
that, even though they use one and the samestructured approach to assessing patentability,
different Boards of Appeal are not consistent indrawing the line in respect of technical characterof GUIs. Rather, the assessment seems to depend
on whether a broader or narrower constructionof the meaning of “presentation of information”(which are excluded “as such”) is applied.
8.7 Computer games
Computer games naturally involve schemes,
rules and methods for playing games, softwareand presentations of information throughgraphical user interfaces. All of these aspects
have to be carefully examined to see whether
they make a technical contribution. Aspects
purely driven by game rules have to be ignored.
8.8 Bioinformatics
Albeit not abundant at present, the existing caselaw throws light on the realms of technicality inbioinformatics and follows the established viewin other technical fields that features excluded “assuch” must not be ignored or separated if they servea technical purpose and thus contribute to the technical character of the claimed subject-matter. In
particular, an automated genotype determination
is technical, and improving the confidence of the
genotype estimate relates to a technical problem.

Any means contributing to the solution ofthat problem therefore
qualifies as technicalmeans.
8.9 “Big data” and artificial intelligence
Not least due to the rapid development of theInternet and the success of smartphones, theglobal data pool has grown almost exponentially in the last few years. The developmentof modern high-performance processors andthe steadily growing storage media make theefficient analysis of “big data” possible. Knowledge obtained from this in conjunction withartificial intelligence (AI) has created voice andface recognition systems, autonomously drivingcars as well as adaptive production facilities.
By now, the latter play a central role in the areaof Industry 4.0, with the use of AI not only
improving known manufacturing processes but
also the automation of drafting and design processes. But also in other high-tech sectors, suchas medical technology and the pharmaceuticalindustry, AI systems are now increasingly used.
The core of AI systems is usually constituted ofsoftware that controls and monitors the trainingof self-learning AI systems.
As regards protection of AI-related inventions,a variety of aspects arise which have to be taken
into consideration in the process of drafting andgranting patents. What is paramount here is theprotection of AI systems as such, of “big data”
used for training the neural networks used in AI
systems and of products manufactured by such
systems.
For software-implemented components of AI
systems, the above-described rules and approaches from the field of computer-implemented inventions are used for determining
patentability. The focus is thus also on assessing
whether individual features of the invention
solve a technical problem by technical means.
Since the software-implemented functioningof an AI system is often not or hardly predictable, especially the correct explanation of thefunctioning of an AI system is a great challenge
in drafting a corresponding patent application
as the latter has to disclose the invention in amanner sufficiently clear and complete for the
person skilled in the art to be able to carry it out(or to rework it). Therefore, all components ofan AI-related invention should comprehensively
be acknowledged in an associated patent application, from the training data, the used traning
method, and the configuration of the neuralnetwork underlying the AI system to the manu-

8.9 “Big Data” and artificial
intelligence

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factured product or result. Ideally, the patentapplication also contains measurement data thatmake the functioning of the AI system underlying
the invention plausible.
The protection of products generated by an AI
system is less problematic, because here theconventional standard of examination for assessing inventive step applies.
9. Referrals G 3/08 and G 1/19
At the end of 2008, the above case law was challenged by the President of the EPO, who referredquestions to the Enlarged Board of Appeal andalleged divergences between various decisions
on the patentability of computer programs, inparticular on how narrowly the exclusions frompatentability were to be construed. In its Opinionof May 12, 2010, the Enlarged Board decided that
the Referral G 3/08 was inadmissible since no divergences in the sense of “conflicting decisions”
could be identified.

10. Summary

10. Summary
11. Further Information

Inventions involving computer hardware
and software are patentable under the
EPC– if they have technical character by
relating to a technical product or to amethod employing technical means, and– if the combination of the features that
contribute to the technical character isnovel and involves an invenive stepover the prior art.

If these requirements are met, claims in the format of method, system, apparatus and computer
program (with and without carrier) are allowable.
It is furthermore important to include concrete
technical implementation details in the patentapplication to support sufficiency of disclosureand to increase chances of grant.
11. Further Information

In the Opinion of March 10, 2021 concerning
Referral G 1/19, the Enlarged Board of Appeal
confirmed the application of the practice for assessing inventive step of computer-implemented
inventions explained at the beginning of this IP
Brochure, which particularly equally is to be applied to examining the patentability of computerimplemented simulations.
Hence, the case law on CIIs must be considered
to be firmly established as it stands, thus promoting legal security.

9. Referrals G 3/08 and G 1/19

Further information on the “patentability of software” can be found in:– Stobbs, Gregory A.: “Software Patents
Worldwide”, WOLTERS KLUWER LAW &BUSINESS, ISBN-13: 978-9041125026– Steinbrener, Stefan V.: “Patentable subject
matter under Article 52(2) and (3) EPC:
a whitelist of positive cases from the EPO
Boards of Appeal — Part 1”, in Journal ofIntellectual Property Law & Practice, Volume
13, Issue 1, 1 January 2018, Pages 13–35.
– www.europeansoftwarepatents.com

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