Last year, we looked at the patentability of blockchain inventions in Europe and China, noting the differences and similarities between how these cases are handled in the two jurisdictions. However, blockchain inventions account for only a small fraction of software inventions, which are often also referred to as computer-implemented inventions. This year, we take a look at the broader field of software inventions and consider the tests that may be applied to determine whether or not a software invention is patentable.
At first glance, the chances of obtaining a patent for a software innovation in Europe or China do not seem to be all that promising. Both jurisdictions exclude computer programs from patentability as such. However, those two little words – as such – go a long way.
Under the revised office guidelines of 2017, the China National Intellectual Property Administration (CNIPA) distinguishes between computer programs per se, which are excluded from patentability, and inventions that involve the use of a computer program, which are eligible for patent protection if they constitute a technical solution. When determining whether a claim constitutes a technical solution, the limitations in the claim are considered as a whole to determine whether they address a technical problem, apply a technical means and achieve a technical effect. Provided these criteria are met, the invention is not excluded from patentability.
In Europe, computer-implemented inventions have to overcome two key hurdles. The first hurdle is the eligibility test, which can be overcome by including technical means (e.g. a processer or computer) in the claims. The second hurdle requires a technical contribution to inventive step, which means that the computer program must produce a further technical effect that goes beyond the physical interactions between the software and the computer on which it is run. Thus, a computer program does not derive a technical character simply because it can be implemented on a computer – it must also produce a further technical effect.
In practice, a software invention may be patentable in both Europe and China if it provides a technical solution to a technical problem. Where a claim contains both technical and non-technical features (e.g. "mixed" inventions), features which, in isolation, would be considered to be non-technical may still contribute to producing a technical effect in the context of the invention. Thus, in both China and Europe, it is important to consider the claim as a whole when assessing whether or not the claimed subject-matter constitutes a technical solution.
However, there are notable differences between the approaches in China and Europe. For example, claims to data structures or signals may be difficult to prosecute in China, as they are often excluded according to the prohibition of inventions solely covering rules and methods for mental activity and scientific discovery. In contrast, the Guidelines for Examination for the European Patent Office specifically state that a computer-implemented data structure or format embodied on a medium or as an electromagnetic carrier wave has a technical character and is thus an invention according to European practice.
This highlights the importance of providing a support for appropriate claims in all jurisdictions when drafting patent applications.
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