EPO Guidelines On Software Claims Fact Card

• Published date: 15 June 2022
• Subject Matter: Intellectual Property, Technology, Copyright, Patent, Trademark, New Technology
• Law Firm: Maucher Jenkins
• Author: Maucher Jenkins

The EPO Guidelines are the main resource used by EPO examiners for guidance in the examination process. Section F-IV, 3.9 of the guidelines sets out examples of acceptable kinds of claims directed to computer-implemented inventions ("CII").

Section F-IV, 3.9 aims to codify a typical acceptable structure and formulation for claims related to CII, appreciating that differing formulations will be assessed on a case-by-case basis. The Guidelines suggest that the claims related to CII start with a method claim, followed by a respective pseudo-independent claim in the other categories (e.g. apparatus/device/system, computer program product, and computer readable medium/data carrier) that merely reference the method claim. Examiners can then start with the method claim when assessing novelty and inventive step, and efficiently conclude that the subject-matter of the other corresponding claims in the set is novel and inventive as well.

Methods carried out by generic data processing means

The suggested formulation is relatively concise for software inventions in which all the method steps can be carried out by one or more generic data-processing means. A set of exemplary claim formulations in such a case includes:

1. A computer-implemented method comprising steps A, B, ...

or: A method carried out by a computer comprising steps A, B, ...

2. A data-processing apparatus/device/system comprising means for2 carrying out the steps of the method of claim 1.

or: A data-processing apparatus/device/system comprising a processor adapted/configured perform the method of claim 1.

3. A computer program product comprising instructions which, when the program is executed by a computer, cause the computer to carry out the steps of the method of claim 1.

4. A computer-readable storage medium comprising instructions which, when executed by a computer, cause the computer to carry out the steps of the method of claim 1.

or: A computer-readable data carrier having stored thereon the computer program product of claim 3.

1. Be mindful to avoid reciting a list of method steps that may be considered to relate to excluded subject-matter (e.g business or administrative, non-technical in nature), thus deemed straightforward for a skilled person (i.e. a programmer) to implement on generic data processing means.
2. Under European practice, "means for" is generally interpreted as "means adapted/configured to" in the data-processing/ computer program field. In Qualcomm v Nokia [2008] EWHC 329 (Pat)...