The year since Alice v CLS has provided a challenging and shifting landscape for filers of business method and software patent applications in the USA. The situation is unclear and guidance from the courts and the US Patent and Trademark Office (USPTO) on what is and is not allowable is scant and often unhelpful. However, the USA seems to be going through the same travails as Europe did less than a decade ago. Is there anything in the experiences of European practitioners that can help US colleagues pick a way through the murk?
The law on patent eligibility at the European Patent Office (EPO) is now largely settled. There are different ways to view the test applied by the EPO, but the effect of all of them is broadly the same. In essence, the EPO ignores all non-technical features and assesses whether the remaining technical features contribute to anything inventive.
The key question then becomes what is technical? Even now, a decent definition of “technical” is difficult to arrive at, but European practitioners know it when they see it. One test that is sometimes used is whether a feature has some effect in the physical world and outside a computer on which the invention is implemented, e.g. the transmission of data or the controlling of a process. However, it is not enough for those features simply to be present in a claim, but they must provide an inventive contribution in the claim. The use of known technical features does not make an invention technical.
Like it or loathe it, this law is established and firm and, above all, provides certainty for applicants and practitioners alike.
The situation in the USA is a lot less certain at present, although the approach of the USPTO appears to have similarities to that of the EPO – non-technical features and well known technical features are ignored. Since Alice, the term “abstract idea” has become a hot topic in the same way “technical effect” was in Europe a few years ago. The Supreme Court gave little guidance on what an “abstract idea” is and many practitioners (and even the USPTO) are struggling to understand the scope of the term as a result. However, the notion of an “abstract idea” is similar in many respects to an invention not having a “technical effect”. The law arrived at in Europe may therefore provide clues to US practitioners as to where their own law might end up and European-style practice points might provide guidance for US practitioners while the law solidifies in the USA.
For example, US practitioners are now more likely to need to assess the patent eligibility of inventions ahead of filing. In going through the same assessment, European practitioners might take the steps that the EPO takes – strip out non-technical features and ask whether the remaining technical features provide any technical solution to a technical problem. In the USa at the moment, the advice may still be to file, as we are in an uncertain period and it is not clear which way the law will eventually go. However, a good understanding of the chances of success will no doubt help determine the likely cost-effectiveness of an application.
When drafting, US practitioners might find benefit in emphasising technical aspects of the invention by using more “technical” language. There may also be benefit in describing technical features in detail, as they are now more likely to become important during prosecution.
Also, anecdotally it is understood that European style arguments during prosecution are having some success in convincing US examiners on patent eligibility. If US practitioners are able to show technical features of a claim that solve a technical problem then that is likely to be a good indicator that the invention is not an abstract idea, but is technical in nature.
Overall, we appear to be seeing a more harmonised approach to patent eligibility from the US and Europe. That seems set to continue and European practice may provide a good resource for US practitioners while things settle down in the US.