November 11th, 2016

A comparative analysis of European and American law in this field

On September 29, 2016, our patent agent Julien Lacheré delivered a conference on Europe-USA comparative law with Jean-Baptiste Thibaud of the Paris firm LOYER & ABELLO in the prestigious setting of the Cernuschi Museum in Paris.

This article provides a synthesis of the conference.

U.S. Perspective

Legal Framework

Article 35 U.S.C. §101 of the United States Patent Law defines four categories of patentable inventions: processes, machines, manufactures and compositions of matter. This list is exhaustive. That is, in order to be patentable, an invention must fit into at least one of these categories. Statutory law of the United States does not define any exclusions from patentability. However, a number of exclusions have been developed through case law. The exclusions from patentability set forth by the United States Supreme Court in its decisions in Gottschalk vs. Benson, Parker vs. Flook and Diamond vs. Diehr include abstract ideas, natural phenomena and laws of nature.

Between 1982 and 2014, the number of U.S. software issued patents increased significantly. This trend was seen as a negative drift in some areas (business methods, in particular). As a result, the Supreme Court’s decision in Alice vs. CLS Bank in 2014 has raised the bar on eligibility criteria for patentability by defining new outlines that continue to be delimited in lower Court decisions.

New Post-Alice Reality

Although the Alice decision does not render software and business methods patent-ineligible, it makes patent-eligibility more uncertain. In Alice, the Supreme Court applied its biotechnology-related decision in Mayo vs. Prometheus to the field of software. The Court’s application of the test may be summarized as follows:

Step 1 aims at determining whether a claim is directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter.

If the condition of Step 1 is not met, then the claimed subject matter is not eligible for patent protection. If the condition of Step 1 is met, then the test continues to Step 2A.

Step 2A aims at determining whether the claim as a whole embraces a judicially recognized exception, such as a law of nature, a natural phenomenon, or an abstract idea. With regard to this step, the Supreme Court did not define what it meant by “an abstract idea”, and merely provided a non-exhaustive list of "abstract ideas". The list includes economic practices, methods of organization of human activities, ideas as such, and mathematical relationships and formulas.

If the claimed subject matter is not directed to one or more of the judicial exclusions, the claim is eligible for patent protection. It goes without saying that in order to be patentable, a claim must also meet all other patentability criteria (such as novelty, non-obviousness). If claimed subject matter is directed to a judicial exception, then it must be analyzed in accordance with Step 2B. Step 2B aims at determining whether the elements of the claim, considered both individually and as an ordered combination, are sufficient to ensure that the claim as a whole amounts to “significantly more” than the exception.

The Supreme Court did not give a definition of what is "significantly more". The USPTO guidelines provide examples of some limitations that may qualify as "significantly more" when recited in a claim with a judicial exception:

  • Improvements to another technology or technical field;

  • Improvements to the functioning of the computer itself;

  • Applying the judicial exception with, or by use of, a particular machine;

  • Effecting a transformation or reduction of a particular article to a different state or thing;

  • Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application; or

  • Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.

The USPTO guidelines also provide examples of the limitations that were held to be insufficient to qualify as "significantly more", when recited in a claim that included a judicial exception:

  • Performing repetitive calculations;

  • Receiving, processing and storing data;

  • Scanning or electronically retrieving data from a physical document;

  • Electronic recordkeeping;

  • Automating mental tasks; or

  • Receiving and transmitting data through a network.

The USPTO notes, however, that some specific combinations of these features may be patent-eligible.

European Perspective

Legal framework

Unlike in the laws in the U.S., European laws followed by the European Patent Office (EPO) have been relatively stable in the last decade. For example, Article 52 (2) of the European Patent Convention lists subject matter that, considered as such, is not patent-eligible. The national laws of the member countries are identical in this regard.

The list of exclusions recites:

  • “Discoveries, scientific theories and mathematical methods;

  • Aesthetic creations;

  • Schemes, rules and methods for performing mental acts, playing games or doing business, and computer programs;

  • Presentations of information.”

Two questions arise in the EPO Boards of Appeal regarding the application of this article:

  • Since the list is not exhaustive, what are the conditions for subject matter to be patent-ineligible even though it does not appear on this list of exclusions?

  • Since the exclusions in this list apply only to the given categories of subject matter “considered as such”, under what conditions should subject matter be regarded as being patent-eligible even though it might be related to the categories in this list?

The concept of technical character has emerged through European case law as a determinative criterion to answer these questions. This means that for the EPO, any subject matter that has a technical character, namely a technical solution to a technical problem, is an eligible invention for patent protection. Conversely, any subject matter lacking technical character cannot be regarded as an invention even if it is not expressly included in the list of exclusions.

Finally, the inventive step required for subject matter to be patentable in Europe (this criterion might be considered as being similar to the U.S. Criteria of non-obviousness) cannot derive from non-technical features. This requirement must be assessed solely on the basis of technical features of a claim.

Criteria for assessing technical character

The European Patent Office has refrained thus far from giving a comprehensive definition of the term "technical character", likely because it views the Patent Law as being intended to encourage new inventions.

In order to attempt to define the term, two sources of interpretation should be considered.

The first source is case law. Certain features are usually attributed to technical subject matter in the decisions of the EPO, such as:

  • Artificial features that do not exist in nature;

  • Features that are physical, concrete, from the real world;

  • Features corresponding to a reproducible, objective causal description;

  • Features specialized in some realities or activities.

Interestingly, a computer program does not appear to be deprived, at first glance, of the above-mentioned features. The second source of interpretation is the list of exclusions and calls for a “further technical effect”. In other words, a technical effect is required which is beyond the inherent properties of the categories of subject matter excluded by law.

Case law shows that computer programs “as such” lack a specialization to achieve the technical character status. Furthermore, whenever said specialization falls into a field specifically deemed non-technical as per the exclusions list, the technical character is not present.


Some convergences are emerging between the development of European and U.S. laws on protection of inventions relating to digital technology generally and software technology in particular. Nevertheless, points of divergence are bound to remain given the very different legal frameworks of the two jurisdictions. Patent applications must be carefully crafted to improve the chances of meeting the criteria of both jurisdictions, in particular by including a thorough description of the various implementations of the invention, emphasizing the technical character of the invention and the problem(s) it solves.

LOYER & ABELLO is a French law firm representing clients in front of both the Institut national de la propriété intellectuelle (INPI) and the European Patent Office (EPO).