Applicant-friendly pointers from the EPO’s Board of Appeal

​A recent Board of Appeal decision at the European Patent Office, T 697/17, has reaffirmed a key practice point in the drafting of software-based patent applications for Europe: make the technical considerations which were at play when designing an invention the main focus of your application.

In its decision, the Board provides further guidance on how features of an invention should be assessed to determine whether they contribute to providing a patentable “technical effect”. The key conclusion is that features which are specifically chosen with the intention of overcoming a technical problem in the prior art are more likely to be considered relevant for patentability than features chosen based on business-related motivations.

In practice, it might be difficult to prove whether a feature was motivated by technical or business considerations during prosecution without supporting evidence. Our advice is therefore to draft your applications to include as many technical considerations and motivations which went into devising the invention as possible. It might not always be possible to “fix” applications for Europe at a later stage due to the strict approach taken by the EPO in relation to added subject matter, so getting this detail in at the outset is of the utmost importance. It will be harder to convince an Examiner that a technical consideration was at play if it appears to have been “made up” during prosecution.

Emphasising technical considerations is especially important when patenting technology in areas the EPO tends to consider non-technical, like fintech, e-commerce or even aspects of AI. When drafting, ask yourself and the inventors why each identified feature is needed and how such a feature disrupts existing solutions in a technical way. That is, what does the feature in question do to bring about technical advantages such as security of data exchange, speed of computing, reliability of services and the like.

We know that prosecuting software-based patent applications in Europe can be a frustrating experience for applicants, especially for those in sectors such as finance, advertising and e-commerce. It is galling to be told by a patent examiner that an invention which is clearly useful and provides benefits to the user is “non-technical”, or merely uses a computer as a tool to perform abstract ideas.

This decision by the Board of Appeal therefore comes as welcome guidance on how to avoid such disappointment. The message is clear – tell a technical story, not a commercial one, from the outset if you want to bring EPO examiners on side.

Practice points:

  • When drafting software patent applications for Europe, tell a technical story from the outset

  • Focus on how the invention works and what technical advantages it brings (improved computing speed, efficiency, reliability etc.)

  • Minimise discussion of business and commercial features/advantages - these will at best act as a distraction and at worst give the impression that your invention is non-technical