Computer-Implemented Inventions at the EPO – Eligibility and Inventive Step
Protecting computer-implemented inventions (CII) at the European Patent Office (EPO) requires navigating a dual assessment: eligibility and inventive step. Without anticipating these hurdles from the drafting stage, your patent application may face costly rejections or a limited scope of protection. At Improve IP, we combine in-depth knowledge of EPO practice with a global understanding of CII requirements before major patent offices, ensuring your European patent applications are drafted and prosecuted to secure robust protection in Europe without weakening the scope of protection of your inventions in other jurisdictions.
Patentability of computer-implemented inventions before the EPO
According to the European Patent Office (EPO), a computer-implemented invention (CII) is one which involves the use of a computer, computer network or other programmable apparatus, where one or more features are realized wholly or partly by means of a computer program. In other words, the EPO’s definition of CII covers any invention involving software.
Yet, under Article 52 of the European Patent Convention (EPC), computer programs “as such” are excluded from patent protection. This apparent contradiction has created uncertainty for applicants seeking to protect software-related innovations in Europe.
To address this challenge, the EPO’s Boards of Appeal (BoA) developed the two-hurdle approach, a framework that explains how the EPO should assess the patentability of CII. Understanding this approach is essential for anticipating objections, shaping strong applications, and securing enforceable patents in Europe.
The two-hurdle approach for assessing patentability of CII
The two-hurdle approach is a twofold test for assessing patent eligibility and inventive step of a computer-implemented invention application before the European Patent Office.
First Hurdle – Patent Eligibility (Article 52 EPC)
The first hurdle of the approach, corresponding to the patent eligibility hurdle, consists of determining whether the claimed invention falls within a category of patentable subject-matter under Article 52 EPC.
According to consistent case law of the EPO, while computer programs “as such” are explicitly excluded from patent protection under Article 52(2) and (3) EPC, a claim that incorporates or makes use of technical means (e.g. a processor, a memory, or a specific computing system) is considered to constitute an invention within the meaning of Article 52. This approach of an invention has been called the “any-technical-means” approach.
In other words, the inclusion of technical means in a claim ensures that the claim is not directed to a computer program, ‘as such’, even if the rest of the claim relates to the functional principles of a computer program. This allows the claim to comply with Article 52 EPC and to be considered patent-eligible before the EPO.
In practice, a method claim directed to the functioning of a computer program that explicitly states that the method is ‘computer-implemented’ overcomes the first hurdle (i.e. allows the claim to fulfill the requirements of Article 52(2) and (3) EPC), as it is deemed to involve technical means. However, merely stating that a method is computer-implemented is not sufficient to establish patentability of the claim on its own. The invention defined in the claim must still meet the requirements for inventive step, which corresponds to the second hurdle of the approach.
Second Hurdle – Inventive Step (Article 56 EPC)
The second hurdle consists of assessing inventive step (Article 56 EPC) of a claim which has successfully passed the first hurdle.
The particularity of CII claims is that they often comprise both technical and non-technical features, making them what the EPO refers to as “mixed-type inventions”. Assessing the inventive step of mixed-type inventions has posed significant challenges for EPO Examiners, as it requires distinguishing between the technical and non-technical aspects of the invention, while the EPC and case law deliberately refrain from defining “technical”, ensuring that patentability remains adaptable to future technological developments.
To address these challenges, the COMVIK approach, established in the landmark case law T 641/00, provides a structured method for evaluating inventive step in “mixed-type inventions”, which combine technical and non-technical features. This approach is a specific application of the problem-solution approach, the standard methodology used by the EPO to assess inventive step. The COMVIK approach is therefore the framework used by the European Patent Office to assess the inventive step of computer-implemented inventions.
The Comvik Approach for assessing inventive step of CII applications
According to the COMVIK approach, when assessing the inventive step of a claim comprising both technical and non-technical features within the problem-solution approach, only the features of the claim that contribute to the technical character of the invention in light of a selected starting point in the prior art are considered for inventive step. In the literature, the starting point selected in the prior art is often called the “closest prior art”, but we deliberately avoid this terminology since it can be misleading, as explained in decision T 694/15, point 13.
In other words, only those features that contribute to producing a technical effect serving a technical purpose over the selected starting point in the prior art are relevant for the inventive step analysis. It should therefore be determined which features of the claim contribute to the technical character of the invention to correctly apply the Comvik Approach.
For applicants, there is a real challenge in properly highlighting the technical contribution of claim features in the patent application. It is important to provide, in the application, a basis for arguing that such features should be taken into account when assessing inventive step, thereby reducing the risk of the invention being deemed non-inventive. Given the subtle boundary between what the EPO considers to contribute or not to the technical character of the invention, correctly presenting these contributions in the application requires both experience with EPO’s CII practice and extensive knowledge of the jurisprudence.
Classifying technical and non-technical features
The first step in identifying the features that contribute to a technical effect is independent of the prior art and consists in classifying the claim features as either technical or non-technical.
Although the term “technical” has been deliberately left undefined, case law has established that a non-technical feature is one that, when isolated from the others, would fall within the list of exclusions under Art. 52(2) (see, for example, G 1/19, point 32).
Hence, a non-technical feature may correspond to a feature associated with:
(a) discoveries, scientific theories and mathematical methods;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; or
(d) presentations of information.
Accordingly, two groups of claim features are distinguished: technical and non-technical.
Decomposing the non-technical features between those serving a technical purpose and those that do not
With respect to the non-technical features, they should further be classified in two subcategories:
• the non-technical features that serve no technical purpose; and
• the non-technical features, that, in the context of the invention, produce a technical effect serving a technical purpose.
This second classification is also performed independently of the prior art. In practice, it requires reviewing the application for determining technical effects produced by the claimed invention and thereby identifying which non-technical features, when combined with other features of the claims, contribute to produce at least one of the determined technical effects.
A good example to understand the concept of non-technical features contributing to produce a technical effect is a method for encrypting/decrypting electronic communications. Although the individual steps of the method are essentially mathematical and are therefore considered non-technical by the jurisprudence (see Art. 52(2)(a)), they nonetheless contribute to producing the technical effect of securing communication between participants. Such features are therefore classified as non-technical in isolation, but they are still features that, in context, produce a technical effect serving a technical purpose.
To be exhaustive, purely technical features should also be submitted to the same division between those that serve a technical purpose and those that do not. In practice however, and especially for CII, it is extremely rare for technical features of a claim not to serve a technical purpose in the context of the claimed invention.
Hence, at the end of the second step, the technical contributing features of the CII claim to be used for the inventive step assessment are, in principle, identified. They comprise:
(i) all the technical features; and
(ii) the sub-category of non-technical features that contribute to a technical effect.
However, as explained below, this set of technical contributing features is not final. It will be reassessed in view of the prior art since only the features of the claim that contribute to the technical character of the invention over the selected starting point in the prior art are considered for inventive step.
This raises the question: what is the purpose of these first two steps if the final set of technical contributing features is only determined once the prior art, and especially the starting point, has been considered?
Identifying a realistic starting point for the problem-solution approach
The purpose of determining the technical contributing features without looking into the prior art is to identify a realistic starting point for applying the problem-solution approach. Indeed, as explained by the Board of Appeal in the decision T 1379/11, “the closest prior art […] does not normally have to include non-technical features of the claim”. However, “features which would, when taken in isolation, be considered non-technical may nonetheless impose technical requirements or contribute to the technical character of the invention” […] and “should be taken into account when choosing a starting point for assessing inventive step”.
Hence, the first two steps should be used to select a realistic starting point in light of the technical contribution of the invention when applying the problem-solution approach. As clearly stated in the decision above, the choice of a realistic starting point does not need to consider claim features that serve no technical purpose.
Evaluating whether the differences between the claim and the realistic starting point serve a technical purpose over the starting point
When the realistic starting point is selected, the Comvik approach, as a specific application of the problem-solution approach, identifies the features of the claim that differ from this starting point.
If there is no difference, whether technical or non-technical, the claim lacks novelty in view of the starting point.
If, however, some features of the claim are not disclosed by the starting point, it should be determined whether each of these features, called “distinguishing features”, alone, or in combination with other distinguishing features, contributes to producing a technical effect in view of the starting point. Only the distinguishing features that actually contribute to a technical effect relative to the prior art are considered for assessing inventive step.
What is interesting here is that some features initially classified as contributing to a technical effect at the outset may, in light of the starting point, be found not to contribute technically. Conversely, features first classified as not contributing to a technical effect in the context of the invention alone may acquire a technical contribution when compared with the starting point. The technical contribution of each feature is therefore determined on a case-by-case basis and is directly dependent on the selected starting point.
Then, if none of the distinguishing features contribute to produce a technical effect, the claim does not involve an inventive step in view of the starting point.
Alternatively, if at least one distinguishing feature contributes to produce a technical effect, an objective technical problem should be formulated to continue the problem-solution approach.
Formulating the objective technical problem which may include distinguishing features making no technical contribution over the prior art
In the problem-solution approach, the objective technical problem represents the aim and task assigned to the person skilled in the art to modify or adapt the starting point in order to achieve the technical effects that the invention offers over the starting point. According to the approach, the skilled person is therefore assumed to know the objective technical problem and will turn to the prior art to find a solution to this problem. Depending on what the prior art teaches, the claim will or will not involve an inventive step.
Formulating the objective technical problem is therefore one of the most critical, if not the most critical, steps of the problem-solution approach since it defines the precise question the skilled person must answer when looking into the prior art once in possession of the teaching of the starting point.
A fundamental rule is that the formulation of the objective technical problem should not contain any pointers or hints to the technical solution contained in the claim. In other words, the objective technical problem cannot be framed in terms that already anticipate the distinguishing features of the claim corresponding to the technical solution. The reasoning behind this is that part of a technical solution offered by an invention in the statement of the objective technical problem must necessarily result in an ex post facto assessment of inventive activity, which is inadmissible.
In the Comvik approach, given the nature of CII, the distinguishing features often comprise non-technical features which do not contribute to the technical solution of the claim over the starting point. However, according to EPO case law, for example decision T 1053/98, there was no possibility of an inventive step being involved by purely non-technical features (i.e. by non-technical features which do not contribute to the technical solution). To avoid the risk that inventive step could be recognized based on purely non-technical features, the Comvik approach authorizes the objective technical problem to be formulated to include these distinguishing non-contributing features, not as part of the technical solution, but as part of the constraints that the person skilled in the art has to meet. That is, the objective technical problem may be formulated to legitimately include part of the invention described in the claim, but only regarding the non-technical features which do not contribute to the technical solution of the claim over the starting point.
Then, once the correct objective technical problem has been formulated, the analysis proceeds in line with the classical problem-solution approach. At this stage, the Comvik approach fully converges with the traditional problem-solution approach.
Strategic Patent Drafting and Prosecution for CII at the EPO
The Comvik approach therefore constitutes the theoretical framework that must be understood in order to patent computer-implemented inventions before the European Patent Office. Whether a feature is framed as contributing to the technical character of the invention can make the difference between grant and refusal. Bridging this complex legal test with practical drafting and prosecution strategies is precisely where Improve IP provides added value.
We draft the patent application in line with the EPO’s expectations for CII in order to ensure that the invention is presented in a way that highlights its technical contribution and meets examination standards. Our drafting and prosecution approach also incorporates the requirements and best practices of other major patent offices (USPTO, CNIPA, JPO, KPO, CIPO, etc.), ensuring consistency across jurisdictions and minimizing the risk of procedural conflict in parallel filings.
However, if the patent application has already been drafted and has not yet entered the European phase, there may still be an opportunity to adapt the claims upon entry. In accordance with Article 123(2) EPC, such amendments must not introduce subject-matter extending beyond the content of the originally filed application. Nevertheless, our specialists can adjust the claim structure and terminology to align with EPO practice for CII, thereby reducing the risk of rejection and overall prosecution costs.
If the application has already entered the EP phase, we provide expert representation throughout the prosecution process. We apply our deep expertise in CII to navigate examination proceedings effectively. Our team ensures that responses to EPO objections are drafted with a strategic understanding of the COMVIK approach and the EPO’s examination standards for software-related inventions, while maintaining coherence with ongoing prosecutions in other jurisdictions.
Even after grant, computer-implemented inventions may face critical legal challenges through opposition or appeal proceedings before the EPO, particularly in relation to inventive step and technical contribution. Improve IP assists clients at this stage, either to defend the patent or to oppose it. Relying on our CII expertise and strong knowledge of the EPO jurisprudence, especially the COMVIK approach, we help reinforce weak points or contest non-compliant grants to tip the balance in our client’s favor during complex, high-stakes proceedings. Our interventions are carefully coordinated with ongoing prosecution or litigation in other jurisdictions, ensuring consistency across your global patent strategy.
Our services for CII before the EPO therefore include:
– Drafting patent applications aligned with EPO’s CII practice;
– Strategic amendments at EP entry;
– Expert representation during prosecution;
– Defense and opposition in post-grant proceedings;
Regardless of the stage of your application, our experienced professionals are working alongside you to secure the strongest possible protection for your computer-implemented innovations.
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