General

Technical Contribution in European Patent Office (“EPO”): COMVIK and G 0001/19 Approach

A significant part of the applications made to EPO with regards to computer applied inventions are rejected due to a “lack of technical contribution”. Although this is frequently considered as legal assessment, most of the time it results from the failure to clearly and tangibly specify the technical aspects of an invention. The fact that an algorithm works is not sufficient alone. EPO requires such an algorithm to explicitly show which technical issues are solved and what contributions are made to the system.

Although computer applied inventions play a significant role in software and artificial intelligence, it is still of crucial importance for applications to clearly introduce technical contributions. The EPO approach to this end is defined particularly by COMVIK (T 0641/00) and G 0001/19 decisions.

The COMVIK decision no. T 0641/00 is among the fundamental decisions demarcating technical and non-technical elements in computer applied inventions. In line with these decisions, it is agreed that technical contribution is taken into consideration only at the inventive step assessment and that non-technical elements do not directly contribute to inventive step despite offering a framework for problems.

In this sense, exploration of the logic behind the work and arrangements regarding user interface alone are not considered sufficient for algorithm patentability. To the contrary, technical contribution is ensured when an algorithm provides tangible enhancement on a technical system (e.g. when data processing time is reduced or system performance is enhanced).

The COMVIK approach is key to application strategy. In this approach, the technical aspects of an invention should be clear, understandable and tangible. Technical contribution should define what features allow the desired goal rather than being evaluated as an end in itself. Such approach requires the appreciation of technical contribution through tangible technical elements, not simply a definition of it.

G 0001/19 Decision: Computer Simulations

G 0001/19 decision is among the significant decisions clarifying the approach concerning the patentability of computer simulations. As per the decision, two crucial criteria play a key role in assigning technical quality to simulations. These are simulation capacities to solve a technical problem and to provide a measurable technical effect. In other words, simulations are deemed patentable as long as they provide tangible contribution by affecting a technical system even though they may not directly interact with a physical system. For example;

• control algorithms improving energy efficiency,
• simulation models enhancing hardware performance, and
• automation simulations reducing error rates in production processes,

are among essential simulations in this regard. Therefore, G 0001/19 decision allows EPO to focus not only on theoretical accuracy of a model, but also on its effect on a technical system when evaluating simulations.

The most common mistake in application is pointed out to be the presentation of a technical contribution as a result while omitting how this result was achieved. However, statements alone such as “faster”, “more efficient” or “optimized” do not explain the technical effect. To the contrary, EPO considers what technical elements are used to solve a certain technical problem and  how an achieved improvement emerges in technical terms. Hence, it is inevitable for an application to fail the technical contribution threshold and get denial at the inventive step assessment in case the above questions are not clearly and consistently answered.

Significance of COMVIK G 0001/19 Decisions

COMVIK (T 0641/00) and G 0001/19 decisions stipulate that it is not sufficient to define technical contribution in computer applied inventions. Rather, it should be demonstrated clearly and tangibly in the application, and should be substantiated in technical terms.

These decisions show that the EPO approach is based on a systematic and consistent framework. Accurate configuration of technical aspects and clear expression of what technical elements allow the technical contribution are crucial to success when applying for patent.

Therefore, it is not satisfactory to define technical contribution alone when preparing a patent application in Europe; it is necessary for applications to clearly and consistently show technical contribution is provided through tangible technical elements.

Such clear and consistent presentation of technical contribution has the potential to offer pivotal advantage for applicants during the assessment process.