Comparing United States and European Patent Law for SoftwareJune 18, 2019

Software Eligibility in Europe

Programs for computers are partially, albeit explicitly, excluded from patentability under Article 52(2) of the European Patent Convention (EPC). Article 52(3) EPC elaborates, “The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such”. 

The term “as such”, as interpreted by the Boards of Appeal of the European Patent Office (EPO), in that a software application can be patentable if it provides a new and non-obvious “technical” solution to a technical problem. For example, the software application may be entirely resident within a computer if the software application makes the computer run faster, run more efficiently in a novel and inventive way, or makes the computer easier to use.

The patent eligibility requirement at the EPO, that the subject-matter must have a technical character, is first assessed without reference to the prior art. Subsequently, any non-technical feature, i.e., a feature from a field excluded from patentability under Article 52(2) and (3) EPC, cannot be considered for the assessment of inventive step, unless the non-technical feature interacts with the technical subject matter to solve a technical problem. The “state of the art” should be construed as meaning the “state of technology”, and one of ordinary skill in the art is the person skilled in the relevant field of technology. Fields excluded under Article 52(2) EPC are not considered part of the technology for the assessment of inventive step. These assessments are highly subjective and have been subject to substantial patent agent and patent examiner argument.

Software Eligibility in the United States

Nowhere in the United States Patent Act (Title 35 of the United States Code) is software or computer programs specifically mentioned. Instead, patent law relating to software and computer programs is determined, at least primarily, by decisions of the United States Supreme Court (SCOTUS) and United States Court of Appeals for the Federal Circuit (CAFC).

These decisions are informed, in part, by Article 1, section 8 of the United States Constitution, which establishes: “Congress shall have Power [. . .] To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”; and Section 101 of title 35 of the United States Code, which establishes: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title”. Generally, a software application in the United States, to be considered patent eligible, must be unique and tied to a machine. Examples of non-patentable subject matter includes algorithms, scientific laws, and abstract ideas.

The eligibility of software, as such, has rarely been addressed in the courts or in legislation. Today, the Supreme Court’s decision in Alice v. CLS Bank serves as the foundation for all inquiries into patent eligibility with respect to whether a software application should be considered an “abstract idea”. In Alice v. CLS Bank (citing Mayo v. Prometheus), SCOUTUS avoids giving a clear definition of the expression “software patent” and holds “merely requiring generic computer implementation fails to transform [an] abstract idea into a patent-eligible invention”.

To determine whether a claim is patent eligible under Alice, it is first determined whether the claims at issue are directed to a patent-ineligible concept and it is then determined whether the claim’s elements, considered both individually and as an ordered combination, transform the nature of the claims into a patent-eligible application.

At the beginning of this year, Director Andrei Iancu of the United States Patent and Trademark Office (USPTO) issued guidelines that were thought to be more favorable to applicants with software-related patent applications.

The guidelines separated the first step of the Alice test into two prongs. The first prong is to determine if the claim actually recites a judicial exception. The second prong is if the claim is found to recite a judicial exception, determine if the judicial expectation is being used for a practical application, and if so, then it is eligible subject matter. Even if the claim recites additional well-understood, routine, or conventional activities, it is still eligible subject matter, as this is assessed in the second Alice step, which has not changed. This change seems to be an effort to put well-understood, routine, or conventional activities back where they belong, in 102 and 103 analysis instead of subject matter eligibility analysis.

The guidelines also increased the burden on Applicants to provide a more robust disclosure for computer related claims (and other types of claims which rely heavily on functional language). More particularly, support for the structures should be in the form of an algorithm, flow chart, mathematical equation, or the like. Also, specific hardware or data structures should also be described, such as a relational database or tables and how they interact with the algorithm. Reference to generic hardware, such as a processor, will not provide sufficient structural support for functional language under 35 U.S.C. 112(f).


For software related patent applications, the USPTO appears to be trending toward a patent eligibility standard that is similar to the standard used by the EPO. However, the USPTO may now actually adhere to a stricter standard than the standard used by the EPO for what needs to be included with the drawings and the description. Of course, this all depends, in large part, on how the claims are to be interpreted.

Gregory “Lars” Gunnerson is a Patent Attorney in the Mechanical and Electrical Patent Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit or contact Lars directly via email.

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