Exclusive with Grant Philpott: Patenting Computer Implemented Inventions in Europe

Grant Philpott

I recently had the opportunity to speak on the record with Grant Philpott, who is the Chief Operating Officer for patenting in the new Information and Communications Technologies technical area at the European Patent Office (EPO). Philpott has responsibility for approximately 2,000 highly qualified patent examiners, managers and administrative staff, and finds himself at the epicenter of what we in the United States would generically refer to as software patents. The ICT technical area at the EPO is one of three new primary technical areas created by the EPO as a part of its current re-structuring (the other two are Mobility and Mechatronics, and Healthcare, Biotechnology and Chemistry). The EPO ICT technical area comprises 25 directorates, each responsible for the entire end-to-end patent grant process within their technical specialty. The re-structuring reflects the new industrial landscape within the patent ecosystem, and is designed to deliver the best possible service to applicants.

During his 28 years at the EPO Philpott has worked across a range of technical fields encompassing ICT, mechanics and industrial chemistry, as a member of the committee responsible for organizing the European qualifying examination for patent attorneys, in the EPO’s Controlling Office and also on several automation projects. He is now based in the EPO’s office in The Hague, back where he started his EPO career, but he has also spent over 20 years working at the EPO’s Munich headquarters site. Previous managerial positions include Principal Director of the Computers and Telecoms operational areas and Director of the EPO’s semiconductor patenting directorate in Munich. Prior to joining the EPO Grant spent 3 years as director of the Brazilian subsidiary of a German SME and 9 years as an engineering officer in the British Army. He holds a master’s degree from Cambridge University.

The impetus for this interview was the EPO’s upcoming two-day seminar in Palo Alto, California on September 20-21, titled Patenting Information and Communication Technologies in Europe. Our conversation was not limited to this topic, and we did delve into other topics such as the Unitary Patent, the Internet of Things, and Alice.

Without further ado, what follows is part 1 of my interview with Grant Philpott.

QUINN: Okay, Grant, thank you very much for taking the time to chat with me today. I know you’re a busy guy and I know you have this seminar coming up in the U.S. and hopefully we can talk a little bit about that. But there’s a lot going on in Europe right now that is of quite a bit of interest so I thought maybe we could start there.

One of the questions I have for you is regarding the IT sector and software specifically. Right now as you know the U.S. has some uncertainty in this area, but it appears as if the EPO has really figured out a solid approach. I was wondering if you could tell me a little bit about the EPO approach to examining patents in this field and then maybe give my American audience a little bit of a comparison to the differences between the EPO approach and the U.S. approach.

PHILPOT: Let me first give you a helicopter view of how the EPO sees these things. We’ve been observing developments in the ICT industry for a long time now, but in the last three or four years we’ve become much more focused on ensuring that we provide a high-quality service on software issues, especially as we’ve experienced a rapid rise in the number of applications dealing with the replacement of hardware by software. Such inventions based on software implementation are referred to as computer-implemented inventions (or simply “CII”) in the context of the European Patent Convention (EPC). And if there’s one thing that we try to achieve in processing this type of applications, it is to provide a consistent approach and a uniform interpretation of the EPC and case law. In practical terms this translates into what I call procedural certainty, and is for me the bedrock for delivering patents with a high level of legal certainty in the area of CII. As the ICT industry leads the transformation to a society substantially dominated by software-based technology, I see it as our task to provide the highest level of certainty as to how the related patent applications will be examined.

To achieve this we have looked at the ability of our internal structures and processes not only to provide that stability but also to respond to the way in which the ICT industry is transforming itself. As a consequence, in 2014 we brought together our telecommunications and computer areas to form a single unit under one management team, creating a core area of expertise to serve the ICT industry. Building on the success of that change, we are currently going through a further reorganization in which we will create a much larger ICT unit of 1,800 staff covering the majority of the electro-physics technical area. At the same time the EPO will create two additional operational units, one covering healthcare, biotechnology and chemistry, and the other dealing with mobility and mechatronics. We will endow all three of these new units with CII expertise. This means that CII-competence at the European Patent Office will not just be centred in the ICT area, but will be available across all technologies, ensuring procedural consistency in CII, no matter where an application is treated.

Early in 2014 we also lifted the limitation of competence in business methods on PCT applications from U.S. firms, creating a level playing field for U.S. applicants vis-à-vis those from other countries. That has worked out particularly well. We’ve monitored the results and are very pleased with them.

We’ve also just come to the end of the third year of a program of annual revisions of the CII content of our examination guidelines, which now provide our examiners and applicants a much clearer indication of how CII is dealt with at the European Patent Office. And last but not least, we have really focused a lot of attention on outreach to applicants in order to build up a solid picture of where industry is heading and what its expectations are, so that we can really match our services to our applicants’ needs.

QUINN: There is so much there and I know you’re going to cover a lot of the details in your seminar in September in Palo Alto. So I’d like to keep this high level if we can. But one of the things that really interests me is sitting here and listening to the conversation and reading about what you’ve been doing over the last few years, it doesn’t seem to me that the European Patent Office uses the word “software” very much, if at all, anymore. Am I missing it? You keep saying CII, which refers to Computer Implemented Inventions, but here in America we call it software, and one of the problems that I’ve always seen with this is the all-encompassing nature of what qualifies as software. An app on your smartphone to keep track of calorie intake is software, although it’s not particularly complex software. But then IBM’s Watson, which I think of as being akin to the Star Trek computer, is also software. And I think that’s where we get into trouble in America. And it seems like you kind of have really come up with a different way of looking at this, almost a very different philosophy on these kinds of innovations.

PHILPOT: Your question is a good one. Regarding the expression CII, we are repeating the terminology used in the EPC, and we use the term computer-implemented inventions because Article 52 EPC refers indeed to the exclusion of computer programs from patenting. We try to be precise and stick to CII because “software” in itself is a term which lacks precision. It can refer to a high level program, a machine level program, or it can be an executable program. But if we speak about a computer-implemented invention the core of the discussion is rather on the technology. We have a general purpose computer and we program it, and when it runs it executes the instructions and performs certain functions. So the essence of our approach is to ask what the software does. Software of course can do a variety of things, many of which can be totally out of the patentable area if they’re purely abstract or purely business oriented. But when software solves a technical problem you are definitely in the area where a patent is possible. That is the core element of our approach.

First of all, we look at a claim and we identify whether it contains a feature having technical character. If this is the case, this means the first hurdle – eligibility – is met. In Europe, the question of eligibility for patent protection is overcome if you have an element in the claim which is technical in character. But the real discussion focuses on inventive step – the second hurdle. Does the invention solve a technical problem? That’s where lots of applicants coming from the U.S. in the past did not get over the second hurdle. Many of the applications that we have seen, particularly in the area of business methods, might have included great ideas for doing business. These could be marketing or financial instruments, or even advertisement. But as long as you do not solve a technical problem there is no possibility to get a technical inventive step recognised. It is in the question of inventive step that the real discussion takes place: what is required is a computer-implemented invention which solves a technical problem in a non-obvious way. The examiner will always look for some technological problem which is overcome by means of a programmed computer, while the question of whether software is involved is a rather secondary one. So “computer-implemented invention” is the correct term. It encapsulates the approach the EPO follows, and is a useful starting point for a patent office to evaluate CII applications.

QUINN: I think if you look back a few years, at least prior to the Supreme Court’s Alice decision that was sort of what was developing in the United States after the Bilski decision. We didn’t use the same exact language that you all are using in Europe, but things really dramatically took a change in America after the Alice decision and I don’t know when or how we’re going to come back, but it just strikes me that you all have really figured this out in a way that makes great sense. And most importantly, it seems from my perspective to be far more predictable. Now I realize when you have any certain number of examiners there will always be decisions that are hard to rationalize, and that’s just the nature of any business or any governmental body of a certain size. But are you comfortable with the predictability of the analysis?

PHILPOT: I think the answer is: we must never be satisfied. Industry and technology are moving too quickly for us to be able to say that we’re satisfied. If we say that, we’ve lost the race. We’ve seen what’s happened in the U.S. with the Bilski and Alice decisions and we must learn from that, it’s a very hard job for a large patent office to ensure a harmonized procedure in computer-implemented inventions. If case law is not as consistent as one would wish, this further exacerbates the difficulties that a patent office encounters. But it’s not really for me to reflect on what’s happening in the U.S.

As already mentioned, we identified CII as a critical issue at the EPO quite a number of years ago, and of course one could say that the whole discussion took off when the planned EU directive on CII was not adopted, as people started then to see the sensitivity of the matter. Over the years, European case law on CII has become increasingly consistent and well-reasoned. We’ve been able to train our examiners in the correct application of that case law. We are constantly engaged with programs for training and harmonization. All of our examiners receive CII training when they start, irrespective of their technical field, and those regularly examining CII applications receive advanced training. Every year we run CII harmonization workshops between units. In the revision of our guidelines we have put in a number of publically-available electronic bookmarks to identify CII content so that it can be easily accessed. So we continually try to improve our performance in this area. Whilst there is always work to be done and improvements to be made on the issue of CII, I do hope that we provide sufficient stability and quality for industry to come to us and feel that our service meets their needs.

But I think one should not underestimate the challenge when you’re in an organization of several thousand patent examiners dealing with fast-moving technology. It’s a given that very intelligent examiners will diverge in their interpretation of the EPC if they’re not given the appropriate training, the reinforcement of that training, the correct guidance, the correct management and the correct environment in which to work. That’s why we are constantly working to deal with these challenges, and we know that there are a number of big ones coming up. If we look at cloud computing, if we look at artificial intelligence, we are going to have to pick up very quickly on these topics and the relevant case law, and make sure that our examiners apply it consistently in order to continue to work at the highest end of the quality spectrum.

QUINN: That’s interesting that you mention that because I was just going to bring up artificial intelligence, but I was also going to ask you about the Internet of Things, because it’s my perception with the Internet of Things that it is more of a marketing label than it is any kind of a technical description. Feel free to correct me if you disagree with that, but it seems to me that the Internet of Things relates to the connection of a whole lot of different gadgets that you might now otherwise think are connected. Not you and I wouldn’t think are connected, but the general public might not otherwise think are connected. Like your refrigerator, for example, now has a computer in it that you can access through your smartphone, which becomes the Internet of Things. And I don’t really see that as a separate technical area in the same way that I would see artificial intelligence or virtual reality. Is that the way you look at it as well?

PHILPOT: Yes, absolutely. Here in Europe, Industry 4.0 is also a term being used in the same way. There’s a degree of generalization attached to such terms such that they do not identify a specific technology, but they are nevertheless helpful for patent offices in terms of understanding the transformation process that industry is going through and the bundle of technologies that are driving that process. Once we understand this, we can actually identify the discreet, concrete technologies the patent office has to deal with as part of this bundle, and keep a careful eye on how they develop and how we are dealing with them. 4G and artificial intelligence are two good examples of such key technologies that lie at the heart of this “movement”, whether you label it the Internet of Things, Internet of Everything or Industry 4.0.

We don’t have a business unit under the heading of “Internet of Things” or “Industry 4.0” but these are concepts which we have to follow and understand. Cloud computing, for instance, is a general term. But what does it mean in technical and patenting terms? Formulating claims that provide adequate protection for distributed processing is a challenge, and the claim formulations being used to give appropriate scope are often quite imaginative. We therefore place increasing emphasis on talking with our applicants about the drafting of such applications and claims so as to give the best possible basis for a high quality patent to be granted as quickly as possible. This is one area where we will be more active in the coming months and years, because higher quality applications are to the benefit of applicants and patent offices alike.

In this context, the second drafting seminar that we’re now offering in Palo Alto this September is specifically aimed at assisting U.S. industry to draft higher quality applications for filing with the European Patent Office. Throughout the seminar, attendees will have the opportunity to come to three workshops covering very specific technical areas: one is on business methods, one on HCI, or human-computer interaction, and the third one is in the life sciences area, that is, the application of CII to life sciences. Each workshop is run by an EPO director together with a highly qualified and experienced European patent attorney. Through this seminar we will offer top-level advice so that those who attend will have a very clear idea of how to draft the best possible applications.

TO BE CONTINUED… Up next is discussion of the rise in patent applications containing computer implemented inventions, the Unitary Patent, and what the term “patent quality” means to the European Patent Office, which seems to be rather different from what that term means in the U.S.


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Join the Discussion

One comment so far.

  • [Avatar for Z. A.]
    Z. A.
    September 17, 2017 03:40 am

    As an outsider (from Israel) its interesting to examine the different approaches.

    The first step (European approach) of deciding (for a claim) “whether it contains a feature having technical character” sounds a lot like the first step of the Alice/Mayo framework: deciding whether the claim is directed to a patent-eligible cocept. So the question boils down to how it’s interpreted by an examiner, as the statement itself doesn’t emphasize enough the difference between both approaches (maybe the specifics are clarified in the upcoming follow-up of this interview).

    There is not doubt, on the other hand, that the second step is defined better by the EPO. The second step of Alice looks for an inventive concept that amounts to significantly more than the abstract idea – this is too vague. How do we accomplish such a task? (case law is too confusing as well, can’t rely on it at this point). The EPO provides a simpler answer: by checking whether the invention solves a technical problem (going back to the famous and ridicolous MRI case – it would be simpler to identify an MRI machine, or at least specific components of such a macine, as a technical feature, leaving us with a simpler decision – does the invention actually solves any technical problem).

    Most of the famous cases we are familiar with (Diehr, Bilski, Alice and so on) are from the US. It would be interesting to understand what are the major European cases – on which European examiners rely.