In T 1370/11, the Technical Board of Appeal of the EPO considered a patent application directed to a method for determining values of objects in a program by performing a calculation based on properties of those objects and using the result of the calculation to determine if a cache required updating. The Board considered whether a reduction in computing time by itself provides a technical contribution to the art and found that it did not unless some “further” technical effect could also be established. It was also decided that it is not possible to rely on a reduction in computing time to support inventiveness unless the reduction affects the “further” technical effect which has been established.
For a computer-implemented invention to be patentable, it must have a technical character. This means establishing a technical effect going beyond the “normal” physical interactions between the program and the computer on which it is run or merely finding a computer algorithm to carry out some procedure.
The method for determining values of objects claimed in the application was quicker than that which was disclosed by the prior art, but was otherwise materially the same. The Examining Division had found that the claims were obvious over the slower prior art. The Appeal Board considered whether or not the reduction in computing time provided by the claimed invention could support an argument for inventive step.
The Board held in paragraph 10 of the decision that “the argument that a computer program or computer-implemented method is inventive because it is faster than an earlier one is on its own insufficient to establish an inventive step. More specifically, the improved speed of a computer program is by itself not a technical contribution to the art.” [Emphasis added]
The Board provided a hypothetical example to illustrate its point:
A computer program that implements a mathematical method or method of doing business would necessarily take time to complete the computation. This is a consequence of normal interactions between software and hardware. The time a program takes to complete a computation does not by itself contribute to the technical character of the method in question. Computing time therefore cannot support the presence of inventive step of a corresponding computer-implemented method. This finding cannot be changed by prior art that discloses an earlier, slower alternative.
Only if the computer program is shown to have a “further” technical effect independently of its absolute or relative computing time would patentability be arguable. Even then, any alleged acceleration could only be used in support of an inventive step argument if it actually affects the “further” technical effect.
It is interesting to note that the Board pointed out in paragraph 11 that certain embodiments may well have been accepted as being the technical solution to a technical problem (the example given is a fast page cache in RAM that avoids repeated access to a slow peripheral hard disk). However, the application lacked the detail to claim such embodiments.
This reinforces the idea that claims which define underlying hardware providing a technical effect (in synergy with a reduction in computing time) are less likely to be objected to on the basis of comprising unpatentable subject-matter. Of course, such claims may not overcome obviousness objections but they would at least allow reduced computing time to be used in support of arguing inventiveness.
This case provides useful guidance for those hoping to patent quicker, more efficient computer programs. It is clear that a reduction in computing time is, by itself, not a technical contribution and cannot be relied on to support inventiveness. Inventors and claim drafters should instead consider what “further” technical effect their invention provides in order to satisfy the EPO examiners that a technical, inventive contribution is provided over the state of the art.