In Part I of this series, we discussed how patent portfolio managers should be careful when generating company-owned prior art or reviewing competitor prior art, and how a patent litigation or licensing campaign can be significantly hamstrung based on how the United States and Europe consider intervening prior art. In Part II, we will focus on software patents with U.S. and EP family members. The number of software related patent applications that are filed at the United States Patent and Trademark Office (USPTO) and European Patent Office (EPO) continues to increase despite heightened scrutiny during examination. Further, U.S. courts and national courts in Europe continue to critically analyze the eligibility of software patents.
The European Patent Office announced that U.S. companies and inventors filed 5.8% more patent applications at the European Patent Office (EPO) in 2017 than in the previous year. This follows a decrease in applications in 2016 (-6.1%), which had been a knock-on effect of changes in U.S. patent law introduced in 2013.
One of the great aspects of the Unitary Patent is that it follows the normal EPO procedure up to grant. And indeed, the search and the examination processes will be precisely the same as those you’ve been used to with the current EP and PCT procedures, and will be performed by the same examiners. One of the strengths of the EPO is that we allocate examiners to applications according to their technical expertise, regardless of the filing route through which applications arrive. It will only be at the end of the procedure, when the application proceeds to grant, that applicants will have to indicate if they want to have a single Unitary Patent instead of a bundle of patents for individual member states, as is the case for the European patent. So it’s extremely straightforward, cost effective, and much simpler to administer post grant than the current European patent. My impression is that many U.S. applicants already understand the logic and advantages of this very well, sometimes even a little better than European applicants, as the geographical size and the GDP of the market covered by the Unitary Patent is very similar to that of the U.S. patent.
We try to be precise and stick to CII because “software” in itself is a term which lacks precision. It can refer to a high level program, a machine level program, or it can be an executable program. But if we speak about a computer-implemented invention the core of the discussion is rather on the technology. We have a general purpose computer and we program it, and when it runs it executes the instructions and performs certain functions. So the essence of our approach is to ask what the software does. Software of course can do a variety of things, many of which can be totally out of the patentable area if they’re purely abstract or purely business oriented. But when software solves a technical problem you are definitely in the area where a patent is possible. That is the core element of our approach.
The UK Supreme Court recently addressed the extent to which under the European Patent Convention 2000 (“EPC 2000”), a patentee may obtain protection against products or processes that are not covered by the literal meaning of the claims. In doing so, the UKSC modified what had been previously seen as the established approach of the UK courts towards ‘equivalents’. In particular, while not disapproving the test, the Court has chosen to reformulate the three “Improver” questions that, since 1990, have been in common usage for aiding determinations as to what might constitute patent infringement… The UKSC has concluded that subsequent to the Improver decision, which was then reinforced by the judgment in Kirin-Amgen, there has been a tendency by the UK courts to place “..too much weight on the words of the claim…” and what the patentee might have anticipated or intended. Instead, the UK courts should have focused on whether, on a basis of fact and expert evidence, the variant is a true equivalent of the invention as described in the patent.