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24 August 2022

Kilburn & Strode

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We're taking you on a journey through the history ofsoftware patents in Europe, through the lens of pop culture. Byzooming out and looking at the big picture of what the EPO hastaught us over the years, we'll be building up a clear visionon what you need to do to improve the success of your softwarepatents at the EPO. At each step along the way through history,we're stopping to see a case where the EPO redefined the lawin a way that is still applied today.

In Part I to Part IV of our journey, we've seen the EPOset out the foundational principles of how software patents aredealt with in Europe. Next, we'll build upon Part V:Cheating your way to the finish line to discover how the EPOreally cares about the purpose of your invention.

Our story now takes us to 2006, the year Silicon Valley darlingsFacebook, Twitter and YouTube were born (do you remember lifebefore them?), but we're not here to talk about them.Instead, we want to take you back to think PINK in2006.We're not talking about the American singer, eventhough her 2006 album I'm not dead was somewhatof a comeback for her. We're also not here to talk aboutSteve Martin's appalling resurrection of Peter Sellers'classic 60s film the Pink Panther. In fact, are we even allowed tomention a film that scores less than 25% on Rotten Tomatoes?We're also not even talking about Millennial Pink remember that? Well that term wasn't even coined for another8 years. No, we're here to get technical and talk about pinknoise.

What's pink noise you ask? And why was it significant in2006? Let's start with the second of those two questionsfirst.

In 2006, the EPO issued the Infineon decision, which dealt withthe question of the patentability of simulations the sameissue dealt with in the 2021 Enlarged Board of Appeal decision(G1/19). The case comes from the issue that when you'resimulating a technical process then arguably nothing technical ishappening as it is all the hypothetical simulation of reality.However, the result of a simulation is that you can make betterdrugs, improve performance of engines and better understand theimpact of a chemical process. So, at the time there weresuggestions that even though the simulation itself might not betechnical or produce a further technical effect, the fact that thesimulation takes place positively impacts something that is thendone in the real world. In other words, there is a resultanttechnical advantage to the simulation.

In the Infineon decision the EPO agreed. The EPO concluded thatsoftware inventions must have a technical purpose. The purpose ofthe simulation mattered. For example, according to the EPO,software for controlling a braking system is technical, whilstsimulating a financial transaction is not.

So let's go back to the first question what ispink noise? Pink noise, or 1/f noise, is a signal or process with afrequency spectrum such that the power spectral density isinversely proportional to the frequency of the signal. Still withme? Well, even if you're not, what was significant in theInfineon case was that the invention related to simulation of anelectronic circuit in relation to 1/f, or pink, noise. It was foundthat simulating test circuits, instead of testing on real circuits,significantly reduced the number of circuits that needed to beproduced, tested and ultimately wasted. Since the simulation was ofan electronic circuit it was deemed to have a technical purpose.Therefore it was not excluded from patentability under the EPC.

The Infineon case therefore taught us more about what Vicomfirst laid out back in 1986 that inventions were notexcluded if they are technical. Furthermore, as thesimulation was purely software, we then saw the application of theIBM case's further technical effect. Inparticular, the software, which was loaded onto a computer,provided for improved automatic simulation and evaluation ofnoise-affected circuits. It is nice seeing the law convergingin this way to a logical result.

In practice, the result of Infineon is that inventions in fieldswhere there is arguably not a technical purpose for the inventioncan be very difficult to protect at the EPO. Spoiler alert this general principle has now been confirmed at the highest levelin the 2021 Enlarged Board of Appeal decision (G1/19). Sadly,examiners can quickly point at the related section of theEPO's Guidelines to kill off a case early. Hence, care needsto be taken when drafting to ensure the invention is framed with aclear technical purpose, not simply with technical advantagesassociated with the software-implemented process.

The content of this article is intended to provide a generalguide to the subject matter. Specialist advice should be soughtabout your specific circumstances.

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