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
The Board provided a hypothetical example to illustrate its
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
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.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As the public cloud services market continues to mature and grow, concentration of computing resources into cloud data centres is increasingly attracting the attention of NPEs as a target for patent litigation.
Competitor pay per click campaigns where a company bids for the name of a rival in the hope that a customer or client who searches for a particular company will not notice when a similar company appears in the search suggestions.
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).