Building High-Quality Patent Portfolios in the United States and Europe: Part II – Software Patents

“U.S. patent drafters should find that if their applications meet the requirements of Alice v. CLS Bank, the Manual of Patent Examining Procedure guidelines, and the USPTO guidelines on software patents, it will help these applications with examination and national court scrutiny in Europe.”

https://depositphotos.com/38756235/stock-photo-software-concept.htmlIn 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.

Software Patents and Computer-Implemented Inventions (Post-Alice, Art. 52(2) EPC)

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.

European patent drafters and litigators should find their knowledge of software patents is an advantage for U.S. examination and U.S. court scrutiny. At the same time, U.S. patent drafters should find that if their applications meet the requirements of Alice v. CLS Bank, the Manual of Patent Examining Procedure (MPEP) guidelines, and the USPTO guidelines on software patents, it will help these applications with examination and national court scrutiny in Europe.

U.S. practitioners commonly use the term “software patents” to refer to patents that cover software-related technology.  European patent practitioners commonly use the term “computer-implemented inventions” to refer to the same patents. The terms are used interchangeably for the purposes of this article.

Under the approach followed by the EPO, a claim directed to software will not be excluded from patent eligibility under Article 52 of the European Patent Convention (EPC) if it contains at least one feature that is considered to have technical character because it is not a “computer program as such.” It is sufficient that a claim is directed to a device or a method implemented in a computer. This eligibility hurdle is an easy hurdle for European patent drafters that is cleared simply by adding any technical feature (e.g., a computer) to a claim.

Non-Obviousness/Inventive Step

The greatest challenge for software patents at the EPO and in national courts in Europe is not eligibility but rather non-obviousness (inventive step). Specifically, the non-technical features of a claim are ignored when assessing inventive step. The EPC provides no general definition of what features are considered technical or non-technical, but relevant case law before the EPO Boards of Appeal gives some indication of what constitutes “technical character.” For example, a claim to a computer program is not excluded from patentability if, when running on a computer, it provides a further technical effect going beyond the computer’s normal behavior. Such further technical effect could involve saving computer resources such as memory, processor time, or energy, or controlling further processes—features that are recognizable to an engineer rather than to a layperson/end user. In short, features do not become technical simply because they are implemented on computers; a feature that solves a technical task and/or provides a technical advantage/effect is considered technical and will help with supporting an inventive step for a patent application in European examination.

Therefore, European examination is more likely to be successful if the examiner initially believes that the invention is technical. A high level of technical detail of the implementation of a method or system should be described, even if not initially claimed. Drawings of systems and flowcharts of methods are generally helpful if specific to the invention. Most important of all—from the perspective of the EPO, at least—is to present a technical problem and its technical solution. It is significantly helpful if the problem is old and the invention is a new, technically improved solution. Often, putting the invention in this light is a matter of picking the right level of generality for the problem.

Accordingly, if a patent drafter carefully includes many technical features in the claims and describes the further technical effect that arises from the claims in the specification, the application will have an improved chance of allowance at the EPO. Also, this inclusion will help in the United States, as explained immediately below. In short, if the EPO wants to see a “further technical effect” to consider an application allowable, that application will also go “further” toward allowance in the United States.

After Alice

Regarding U.S. software patents, in 2014, the U.S. Supreme Court shifted the patent eligibility landscape when it held that electronic escrow services for facilitating financial transactions, even when implemented by a computer, were abstract ideas not eligible for patent protection in the United States under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Internat’l, 134 S. Ct. 2347 (2014). In Alice, the Court set forth a two-part test. Step one involves determining whether a claim is directed to an abstract idea, for example, whether the claims recite a mental process, mathematical formula, or human behavior. If the claim is not directed to an abstract idea, then the claim recites patent-eligible subject matter. If the claim is directed to an abstract idea, then the claim is analyzed under step two to determine whether the claim recites “significantly more” than an abstract idea. If an inventive concept is established, the claim recites patent-eligible subject matter. Specifically, the claim is evaluated to determine whether the claim recites only routine or conventional elements merely implementing an otherwise abstract idea or if it recites additional elements that provide significantly more than just the judicial exception. Adding a specific limitation or combination of limitations that are not well understood, routine, conventional activity in the field or solve a technical problem with a technical solution can be indicative that an inventive concept may be present and the claim is patent eligible. Just based on the number of steps (step one and step two of Alice), the hurdle for eligibility of a software patent in the U.S. is higher than that of Europe (claims must be technical).

Following are a few tips for helping to ensure patent claims meet the test for patent eligibility under Alice in the United States. If these tips are followed, they will also help with European patent applications and scrutiny in national courts in Europe.

  • Patent drafters should describe a specific technical benefit that is linked to a hardware feature or other features (e.g., software process) of the claim (these can be considered technical features in Europe). Examples include improving computer network traffic technology by identifying disjointed connection flows through deploying network monitors, extracting information from a packet with a parser system, and generating and integrating reports of suspicious activity, Packet Intelligence LLC v. NetScout Systems, Inc., 965 F.3d 1299 (Fed. Cir. 2020); improving computer functionality with the reduction of latency experienced by using parked secondary stations in communication systems, Uniloc USA, Inc. v. LG Electronics USA, Inc. ( Cir. 2020); improving functionality of computer networks by identifying hackers or potential intruders by using a plurality of network monitors to analyze data on the network and integrate reports from the monitors, SRI International, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2019); improving computer functionality with behavior-based virus scanning, as opposed to the traditional code-matching method, Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018); improving a computer memory system with multiple benefits that flowed from the claimed improved memory system, Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017); using a set of rules to set parameters for a digital animation software process, McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016); and improving the functioning of the computer itself with a self-referential table for a computer database, Enfish v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
  • Patent drafters should include a clear definition of the technical problem solved and lay out the specific technical solution to that problem. As a corollary, drafters should teach how the claimed invention improves the existing technology instead of reciting that the invention generally improves an existing system.
  • Patent drafters should recite the steps for improvement in the claim language, especially for claims that are mostly software related. For example, in Finjan Inc. v. Blue Coat Systems, Inc., the claimed invention involved a method of virus scanning that scans an application program, generates a security profile identifying potentially suspicious code, and links the security profile to the application program; the claims that were upheld as patent eligible recited specific steps to accomplish the result, which method realized an improvement in computer functionality.
  • Patent drafters should include more technical features, associated technical effects, and a defined technical problem and technical solution in their drafts. This will help satisfy Alice in addition to helping with European examination and court scrutiny in European national courts.

Part III of this article will build on Parts I and II to focus on the value of examiner interviews in the U.S. and Europe.

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The Author

Gregory Rosenthal

Gregory Rosenthal has represented clients in patent matters before the United States Patent Office (USPTO) and European Patent Office (EPO). His experience includes prosecuting patent applications in addition to challenging and defending patents in Inter Partes Review (IPR) proceedings at the USPTO and oppositions at the EPO. He also has represented companies in patent litigation in both the United States and Europe. Greg is currently a senior associate at Davis Wright Tremaine.

Gregory Rosenthal

Reinhard Knauer is a senior partner at Grünecker. He has worked as a patent attorney in Europe, and Germany specifically, for nearly three decades, and many of the patents he has worked on have corresponding U.S. family members. He has litigated patents in Germany that were originally drafted and filed in the United States. Based on his extensive experience, he has a deep understanding of the differences between EPC, German, and U.S. patent law.

Gregory Rosenthal

Robert Bailey is senior IP counsel at NetApp. Prior to NetApp, Robert worked as a partner and associate in private practice for over 10 years, and a significant portion of this experience was related to patent prosecution and patent litigation. Throughout his career, Robert has worked with patent families that include U.S. and EP members.

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  1. shyon September 8, 2021 11:07 am

    as a person who has worked in software, it is encouraging to hear software patents in the US and Europe have some similarities that this article nicely points out.

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