Intro to computer-implemented inventions / software patents — Lecture flashcards

Flashcards covering key concepts from the lecture notes on European patent law, novelty and inventive step, problem-solution approach, software patents, and non-patentable categories.

When assessing patentability under Article 52 EPC, what key criterion relates to the inventiveness of a solution?

The invention must involve an inventive step, meaning it is not obvious to a person skilled in the art.

What are the three core criteria for patentability under Article 52 EPC?

New, involves an inventive step, and be susceptible of industrial application.

What does 'an invention' mean under the EPC?

A technical solution to a technical problem in a field of technology, defined by technical features.

What is the difference between novelty and inventive step in practice?

Novelty looks at whether something is disclosed at all; inventive step checks if the invention is obvious to a skilled person in light of the state of the art.

What is a 'prior art document' and what can it include?

Any information source available before the effective date (patents, articles, books, internet publications, etc.).

What is the 'closest prior art' in the problem-solution approach?

The most promising starting point in the same or related field that discloses the most features of the claim.

List the five steps of the problem-solution approach.

1) Determine the closest prior art; 2) Determine the difference between the closest prior art and the claim; 3) Determine the technical effect of the difference; 4) Determine the objective problem; 5) Assess whether the skilled person would combine the closest prior art with another document to arrive at the invention.

What is the 'objective problem' in the problem-solution approach?

The problem deriving from the technical difference and its effect, defined objectively and without hindsight.

What is the 'Could-Would' approach in inventive step analysis?

Assess whether a combination document would be found and used by the skilled person to reach the invention.

Who are the two 'skilled persons' considered in mixed-type (software) inventions?

A technical expert in the field and a skilled business person who understands non-technical aspects.

What is the 'Comviq approach' to determining technical character?

Technical character is determined by the presence of technical features; move the analysis to inventive step; allows interaction of technical and non-technical features.

What distinguishes 'technical features' from 'non-technical features' in a claim?

Technical features have technical character or interact to produce a technical effect; non-technical features do not and may serve as constraints but do not drive inventive step.

What is a 'technical effect' in the context of computer programs?

An effect that interacts with physical reality or solves a technical problem when the program runs.

Can computer programs be patented under the EPC?

Programs for computers as such are not patentable, but a computer-implemented invention or computer program product with a technical character can be patentable.

What is the 'state of the art' date difference for novelty vs inventive step?

Novelty uses the publication date as the reference; inventive step uses the day before the effective date for assessing prior art.

What is the role of 'closest prior art' in evaluating inventive step?

It is the starting point for identifying differences, technical effects, and the objective problem to assess obviousness.

What is the purpose of distinguishing 'technical' vs 'non-technical' features for inventive step?

To ensure only the technical aspects drive the inventive step, while non-technical features act as givens or constraints.

How do AI and ML relate to patentability?

AI/ML are mathematical tools; they are not patentable as such, but their application in a technical context with a technical effect can be patentable.

What is the significance of the 'problem-solution approach' in Europe?

It provides an objective, hindsight-free framework for assessing inventive step and is mandatory in the EPO practice.

What practical example illustrates inventive step in software (Sonos/AC analysis)?

A problem-solution analysis showing how a unique combination of technical features yields a technical effect that would not be obvious from the closest prior art.

What is the general guidance on 'business methods' in European patent law?

Business methods as such are not patentable; however, technical means implementing business methods can be patentable if they have a technical effect.

What is the role of a 'technical feature' in claims involving software?

At least one technical feature is needed to create an invention; non-technical features may be used as constraints but do not themselves establish patentability.