AIPPI 2017 - Study Question - Patentability of computer implemented inventions
Study Question
Submission date: April 28, 2017
Sarah MATHESON, Reporter General
Jonathan P. OSHA and Anne Marie VERSCHUUR, Deputy Reporters General
Yusuke INUI, Ari LAAKKONEN and Ralph NACK, Assistants to the Reporter General
Patentability of computer implemented inventions
Responsible Reporter: Ralph NACK
National/Regional Group / FinlandContributors name(s) / Johanna FLYTHSTRÖM, Marjut HONKASALO, Timo VUORIMIES, Xin LIU, Sonja HEISKALA, Sirpa KOVANEN, Emma SOPYLLO
e-Mail contact /
I. Current law and practice
1. Does your current law contain any statutory provisions which specifically apply only to CII?
No
Please Explain
2. Please briefly describe the general patentability requirements in the written statute based law of your jurisdiction which are specifically relevant for the examination of the patentability of CII.
Regional law
Under the European Patent Convention (EPC) programs for computers as such shall not be regarded as patentable inventions (Article 52 EPC). The European framework puts emphasis on the technical nature of the invention in determining patentability by, i.a., requiring that the technical field of the invention is specified and the technical problem the invention solves may be understood (Rule 42 EPC). With respect to CII, it is also important to note that the claims must define the protectable subject matter in terms of the technical features of the invention (Rule 43 EPC).
Article 52(2) EPC
The following in particular shall not be regarded as inventions within the meaning of [---]
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; [---]"
Article 52(3) EPC
"[---] shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such."
Rule 42(1)(a) EPC
"The description shall:
specify the technical field to which the invention relates;[---]"
Rule 42(1)(c) EPC
"(1) The description shall:
[---]
(c) disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, [---]"
Rule 43(1)EPC
"The claims shall define the matter for which protection is sought in terms of the technical features of the invention. [---]"
National law
Under Finnish national law (Section 1(1) of the Finnish Patents Act (FPA)) anyone who has, in any field of technology, made an invention susceptible of industrial application is entitled to a patent. However, similarly than under Article 52 EPC, also under Section 1(2) of the FPA, programs for computers as such shall not be regarded as inventions. Under the FPA it is also required, for CIIs and inventions in other fields alike, that the application contains a description of the invention that enables a person skilled in the art to carry out the invention and a precise statement of the subject matter for which patent protection is sought
Section 1(1) of the FPA
"Anyone who has, in any field of technology, made an invention which is susceptible of industrial application, or his or her successor in title, is entitled, on application, to a patent [---]"
Section 1(2) of the FPA
"The following, as such, shall not be regarded as inventions:
[---]
(3) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; [---]"
Section 8 of the FPA
"The application shall contain a description of the invention [---] and a precise statement of the subject matter for which patent protection is sought (one or more claims).[---]The description shall be sufficiently clear to enable a person skilled in the art, with the guidance thereof, to carry out the invention. [---]"
3. Under the case law or judicial or administrative practice in your jurisdiction, are there rules which specifically apply only to CII? If yes, please explain.
No
Please Explain
No, Please see the specific patentability requirements outlined in the answer to question 4).
4. Please briefly describe the general patentability requirements under the case law or judicial or administrative practice of your jurisdiction which are specifically relevant for the examination of the patentability of CII.
Regional Law
1)(EPO Guidelines for Examination (EPO GL) G-II 3.6, F-IV 3.9)
The basic patentability considerations in respect of claims for computer programs are in principle the same as for other subject-matter. Technical character should be assessed without regard to the prior art (T 1173/97, G3/08).
A computer program claimed by itself 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 (T 1173/97 and G3/08). 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.
Computer programming in itself is not enough to demonstrate that the program which results from the programming has technical character, the programmer must have had technical considerationsbeyond "merely" finding a computer algorithm to carry out some procedure (G3/08).
Where all the method steps can fully be carried out by computer program instructions running on means which, in the context of the invention, provide generic data processing functions, further claims in other categories with subject-matter corresponding to that of the method may be included to obtain complete protection of the invention.
Furthermore, 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 [product] may also be present in addition to a computer-implemented method. The category of a computer program [product] claim is distinguished from that of a corresponding computer-implemented method (T 424/03 and G3/08).
EPO GL F-IV 3.9.1 provides a non-exhaustive list that comprises examples of acceptable claim formulations (T 410/96, T 1173/97 and T 2140/08); see answer to question 7 below. If the subject-matter of the method claim is considered novel and inventive, the subject-matter of the other claims in a set formulated in accordance with the acceptable claim formulations will normally be novel and inventive as well, provided that they comprise the features corresponding to all those which assure the patentability of the method.
Where not all the steps of the method defining the invention can be implemented fully by generic data processing means, defining claims as listed in EPO GL F?IV, 3.9.1, may not suffice to fulfil the clarity requirements (Art. 84). Furthermore, in such cases, claims of different categories have to be construed and examined separately with respect to novelty and inventive step.
National Law
In principle, the Finnish Patent and Registration Office (FPO) prosecutes computer implemented inventions in line with the EPC and the practice adopted by the regional office (EPO). The Patent Handbook of the FPO (in Finnish “Patenttikäsikirja”, available (in Finnish only) at defines the basic principles and procedures applied by the FPO in the prosecution of patents.
With respect to patentability, the Patent Handbook defines the same principles as set forth by the EPO: There has to be technical character and a further technical effect. Section I.3 ”Tietokoneohjelmien patentointi” concentrates on the patentability of computer implemented inventions. Further, div E.3.5.2 relating to inventive step assessment refers to EPO decisions T0641/00, T0258/03 and T0154/04, as well as to EPO GL G-VII 5.4.2. Even though the intention and the underlying idea behind the Patent Handbook follow the EPO Guidelines and the Patent Handbook reflects the EPO Guidelines, it is not as specific in details as the EPO Guidelines.
5.a. Exclusion of non-patentable subject matter per se.
Do the statutory provisions, case law or judicial or administrative practice (hereinafter collectively referred to as Law / Practice) in your jurisdiction exclude any particular subject matter relating to CII from patentability per se?
In this context, “per se” means that the non-patentable subject matter is identified without any implicit or explicit examination of the contribution to the state of the art the claimed CII makes.
If yes, please answer questions 5.b-5.e, if no, please go to question 6.a
No
Please Explain
No, there are no express exclusions specific to CIIs as such in the regional or national law/practice. However, it is required that the CII must have technical character, i.e., it creates a technical effect that goes beyond what can be achieved through regular data processing by means of a computer program.
However, under both the regional (Article 53 EPC) and national (Section 1b of FPA) law/practice, patents shall not be granted for inventions the commercial exploitation of which would be contrary to ordre public or morality.
Under regional law (Article 53 EPC) also methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body are excluded from patentable subject matter. However, the exclusion does not apply to products for use in any of said methods.
Under national law (Section 1b of FPA) the prohibited subject matter includes in particular inventions such as processes for cloning human beings, processes for modifying the germ line genetic identity of human beings, uses of human embryos for industrial or commercial purposes, and processes for modifying the genetic identity of animals which are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.
5.b. Please describe the subject matter excluded from patentability per se and explain in detail how it is identified in practice
5.c. If there is any subject matter identified in a patent claim relating to CII that is excluded from patentability per se, is it possible to overcome a rejection of the patent claim by adding other subject matter to the claim?
If yes, please answer questions 5.d-5.e, if no, please go to question 6.a
5.d. Does the “other subject matter” need to have a certain quality, e.g. does it need to be inventive?
5.e. Can you describe the areas of human endeavour the “other subject matter” needs to relate to?
6.a. Requirement of a contribution in a field of technology.
Does the examination of the patentability of CII in your jurisdiction implicitly or explicitly involve an examination of the contribution the claimed CII makes to the state of the art (such examination may be part of a general “patentability” test or part of the novelty and inventive step/non-obviousness test)?
If yes, please answer questions 6.b-6.d, if no, please go to question 7
Yes
Please Explain
Regional Law/Practice
In the EPO practice the examination of patentability of CII includes examination of the contribution the claimed CII makes to the state of the art, e.g., through the examination of the novelty and inventiveness of the CII as well as through examining whether the subject matter is considered patentable. This can be seen in the modified inventive step test under Article 56 EPC, referred also in the discussion div of the study question, used at least since the decision of the Enlarged Board of Appeal of the EPO in G3/08 according to which only those features that contribute to the technical character of the invention are considered when assessing inventive step. Features which cannot be seen to make any contribution, either independently or in combination with other features, to the technical character of the invention cannot support the presence of an inventive step. Such technical solution does not necessarily need to result from a physical element but may result from the performance of an algorithm.
National Law/Practice
The national law/practice (FPO) is aligned with the regional law/practice (EPO). Also the national Finnish law/practice and examination of patentability of CII includes examination of the contribution the claimed CII makes to the state of the art, e.g., through the examination of the novelty and inventiveness of the CII as well as through examining whether the subject matter is considered patentable. In assessing the inventive step, the FPO also applies the problem solution approach in line with the EPO practice under which only features that contribute to the technical effect of the invention are taken into account.
6.b. Does this test implicitly or explicitly involve excluding contributions from areas of human endeavour which are not deemed to be sources of patentable inventions? In other words, does patentability of CII implicitly or explicitly require a contribution from areas of human endeavour which are deemed to be sources of patentable inventions (e.g. engineering, natural sciences)? If yes, please explain.
Yes
Please Explain
Yes, both under national and regional law/practice. Namely, the general exclusions on patentable subject matter under the EPC and under the Finnish Patents Act apply to CIIs (e.g., aesthetic creations are not patentable as such). However, such restrictions apply to all inventions and are not specific to CIIs.
6.c. Does this test also implicitly or explicitly require that the relevant contribution the CII makes to the state of the art qualifies as inventive/non-obvious? This additional test may be integrated into the general inventive step / non-obviousness examination, or may be a stand-alone test. If yes, please explain.
Yes
Please Explain
Yes, the CII must also qualify as inventive/non-obvious both under the national and regional law/practice. The approach follows the reasoning of the Enlarged Board of Appeal of the EPO in G3/08 (for more details, see answer to question 6a above).
6.d. Is there an implicit or explicit consensus in your jurisdiction as to the areas of human endeavour which are accepted as sources of patentable CII? If yes, are these areas of human endeavour defined, and if so how?
No
Please Explain
7. Does the Law / Practice in your jurisdiction contain any specific claim drafting or other formal requirements which are applicable to CII, i.e. which deviate from the Law / Practice applicable to inventions which are not CII? If yes, please explain.
No
Please Explain
Under Finnish law/practice, there are no claim drafting or other formal requirements specifically applicable to CII except that the invention must be defined in the claim through those features that are necessary to create the technical effect. However, both the national (the Patent Handbook of the FPO) and the regional (EPO Guidelines for Examination) practice provide guidance for claim drafting.
Regional Law/Practice
The EPO Guidelines for Examination set forth a non-exhaustive list of examples of acceptable claim formulations:
"A computer-implemented method comprising steps A, B, ..." (EPO GL, 3.9.1 i)
"A method carried out by a computer comprising steps A, B, ..." (EPO GL, 3.9.1 i)
"A data processing apparatus/device/system comprising means for carrying out [the steps of] the method of claim 1." (EPO GL, 3.9.1 ii)
"A data processing apparatus/device/system comprising means for carrying out step A, means for carrying out step B, ..." (EPO GL, 3.9.1 ii)
"A data processing apparatus/device/system comprising a processor adapted to/configured to perform [the steps of] the method of claim 1." (EPO GL, 3.9.1 ii)
"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." (EPO GL, 3.9.1 iii)
"A computer program [product] comprising instructions which, when the program is executed by a computer, cause the computer to carry out steps A, B, ...." (EPO GL, 3.9.1 iii)
"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." (EPO GL, 3.9.1 iv)
"A computer-readable [storage] medium comprising instructions which, when executed by a computer, cause the computer to carry out steps A, B, ..." (EPO GL, 3.9.1 iv)
"A computer-readable data carrier having stored thereon the computer program [product] of claim 3." (EPO GL, 3.9.1 iv)
National Law/Practice
According to the Patent Handbook (Chapter I.3) of the FPO, a claim concerning a computer program as such, on a storage medium, or in the form of a signal must be defined in such a way that the computer program, when executed on a data processor, creates the same technical effect as the invention described in the claim (in the same application) concerning a process or a device. If a reference to the effect of the process or device is not sufficient to indicate the scope of protection of the patent, the invention must be described in its entirety in the patent claim. This is the case, e.g., when the claims concerning a process or a device include characteristics that cannot be executed with a computer program.
The Patent Handbook also provides some examples of acceptable patent claims (subject to the acceptability of claims 1-N):
"Computer program, characterized in that it comprises program code means arranged to carry out all phases of a process defined in patent claims 1–N when said computer program is executed on a computer." (Chapter I.3.4)
"Computer program product, characterized in that it comprises program code means stored on a computer readable storage medium, which code means have been arranged to carry out all phases of a process defined in patent claims 1–N when said computer program is executed on a computer." (Chapter I.3.4) "Computer readable storage medium, on which a computer program has been stored, characterized in that said computer program comprises program code means, which make a computer carry out all phases of a process defined in patent claims 1–N when said program is executed on a computer." (Chapter I.3.4)
8. Does the Law / Practice in your jurisdiction contain any specific requirements as to sufficiency of disclosure and/or enablement which are applicable to CII, i.e. which deviate from the Law / Practice applicable to inventions which are not CII? If yes, please explain.
No
Please Explain
No, under both the national and regional law/practice the requirements for sufficiency of disclosure and enablement are in principle the same for CII that for other types of inventions. However, it should be noted that if the claimed scope for a CII cannot be unambiguously determined based on a mere reference to a method or a device claim, the invention must be set forth in the CII claim in its entirety.