Continuing our new series of articles, we discuss key takeaways from another recent decision by the Boards of Appeal at the European Patent Office, as these provide learning points for those seeking patent protection for software inventions in Europe.
BACKGROUND
Is my invention patentable? For most inventions, the answer is straightforward: yes, in principle, assuming the invention is new (novel) and not obvious (inventive).
For software inventions in Europe, however, the answer is usually another question: well, what does the software do? This is because the purpose or contribution of a software invention risks being found by the European Patent Office to be non-technical or falling under one or more areas that are excluded from patent protection1.
The following example shows that avoiding a finding of a non-technical contribution continues to present challenges for software inventions in Europe.
As further background to this article please visit our guide to software patents here, and our frequently asked questions here.
STORY ALBUM (HUAWEI)
This patent application relates to a story album display method and apparatus, so that a thematic (e.g., “birthday”) story album can be generated that allows a user to review photos of past events quickly and conveniently. According to the application, “this improves efficiency with which a terminal [such as a mobile phone] manages an image in a gallery.”
The following features of the claimed invention were considered by the Board for technical contribution (the interested reader is referred to the case for the exact claim wording):
- Software functionality to select a subset of images from an image collection on the basis of criteria involving image similarity and image metadata, where the image metadata includes photographing time, photographing location and image labels or tags. An image of this subset is then selected for display as "album cover".
The Board held that “it cannot be seen what specific technical effect is achieved by the selection of a subset of images from a larger set of images on the basis of these criteria or by the selection of an "album cover" image from the selected subset of images.”
In addition, although a specific implementation in software or hardware of a non-technical function may in certain cases be technical, technical details of such an implementation – in the Board’s view – were not claimed.
- A “theme” is determined for the subset of M images on the basis of an “image feature” of one of the M images and “association information” such as calendar information.
Because the wording of the invention as claimed did not define “image feature” the Board looked to the description of the application and found:
“that the theme may be determined on the basis of "image features" reflected by the textual labels associated with the M images. Hence, the determination of a "theme" in the present case encompasses a mere processing of non-technical textual information, which does not make a technical contribution.”
A first takeaway from this case is to define the key features of an invention in a patent application in a way that focuses on technical aspects rather than subjective information or other excluded subject matter.
For example, image classification (or recognition) on the basis of features extracted from the visual content of the images may in certain cases be technical if, for example, technical considerations relating to image processing are involved (such as improving the alignment of stitched images). If Huawei had included technical definitions (from a European standpoint) regarding feature 2 in their claimed invention, the Board may have reached a different conclusion regarding technical contribution.
Huawei also argued that “the invention achieved "improved accuracy for a story album and for the displaying of its cover", which allowed a user to search and retrieve images more efficiently and faster.”
The Board was not persuaded by this argument, however, “for the reason alone that the method of claim 1 merely displays an "album cover", which can be a single image.” In other words, the language of claim 1 was broad enough to cover embodiments of the invention that Huawei’s argument did not wholly support.
Nor was the Board persuaded by Huawei’s argument that the claimed invention is analogous to a case underlying a much earlier decision that found that an arrangement of menu items (or images) on a screen may be determined by technical considerations. In the Board’s view, Huawei’s claimed invention did “not define any user-interface mechanism for allowing a user to search an image.”
Huawei further argued that the claimed invention reduced working memory usage, but as “Claim 1 does not specify in any detail how the "story album" image selection of first N images and later M < N images is represented in memory.”, the Board held that it “is therefore not credible that a reduction in working memory usage is achieved over essentially the whole scope of the claim.”
Ultimately, this patent application was refused.
A second takeaway from this case is to ensure that arguments for a technical contribution of an invention are consistent with – that is, apply to “essentially the whole scope of” – the wording of the invention as claimed.
HOW CAN I PROTECT MY SOFTWARE INVENTION USING PATENTS?
As the above example shows, navigating around the pitfalls faced by patent applications for software inventions can be challenging. To add further complexity to this area, there is no collective agreement among the major patent offices as to how software inventions should be assessed. Indeed, in certain cases, the absence of a collective agreement can lead to contrasting outcomes for an applicant. As with the cases considered in our first article, while Huawei’s patent application was ultimately refused in Europe, the US Patent and Trademark Office granted a corresponding patent (albeit based on a differing claim scope pursued)2.
More generally, depending on the details of the software invention – which returns us to the additional question “well, what does the software do?” – seeking patent protection may not necessarily represent the best approach at the outset.
In our view, a specialist team that understands the challenges of patenting computer-implemented inventions is key to protecting the software, whether through patents or other IP rights (such as trade secrets), as it is this protection which is fundamental to the software's success.
To find out how to protect your software invention using patents or other IP rights, please feel free to contact us.
REFERENCES
- The technical assessment by the European Patent Office in this respect follows the established COMVIK approach. Briefly, this approach involves identifying differences of a claimed invention over the closest prior art and only considering those differences which contribute to claimed invention’s technical character (that is, which contribute to producing a technical effect serving a technical purpose) in the assessment of inventive step.
- See US11386140B2 Story album display method and apparatus.
