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16 September 2021PatentsMuireann Bolger

Software patents ‘more successful’ at UKIPO than EPO

Software patent applicants are more likely to be successful at the UK Intellectual Property Office (IPO) than at the European Property Office (EPO), a report from law firm Mewburn Ellis has revealed.

The report, ‘ Software Inventions: UKIPO and IPO approaches to patent eligibility’, released on Wednesday, September 15, was based on an analysis of patent applications filed at both the IPO and EPO over more than a decade between 2007 and 2016.

The report identified a dataset of patent application families relating to software which included pairs of UK and EPO patent applications having substantively identical claims. It then took a close look at the prosecution history of these “application pairs” to see how they fared during examination at the IPO and EPO.

More favourable outcomes in the UK

The report cited evidence that patent eligibility issues were less likely to be raised by the EPO than the IPO. According to the report, the prospects for avoiding or overcoming patent eligibility issues are better at the EPO, compared with the IPO, by around 10%.

However, there were also indications that, in some scenarios, more favourable outcomes could be obtained at the IPO. The report revealed that in a quarter of cases, 17.5% of application pairs were granted UK application while the EPO application was terminated. Meanwhile in the remaining 7.5% of application pairs, EPO application was granted and the UK application was terminated.

These figures suggest that more favourable outcomes were gained at the IPO compared with the EPO, despite patent eligibility objections being raised more often by the IPO.

Different approaches

The difference in outcomes appears to arise, partly due to the different approaches taken by the two offices when examining whether a software invention is eligible for patent protection.

The EPO uses its “Comvik” approach, developed in the early 2000s, which tightly couples patent eligibility with the assessment of inventive step.

The IPO instead uses its own “Aerotel/Macrossan” test, which originates from a UK court decision in 2006 . Unlike the ‘Comvik’ approach, the IPO’s four-part Aerotel/ Macrossan test assesses patent eligibility independently of inventive step.

In theory, the two approaches should produce the same result, but the new report suggests this is not happening in practice.

The report concluded that applicants may want to consider pursuing a dual filing strategy, by filing applications at both the IPO and the EPO in relation to the same software invention, to maximise the prospects of obtaining patent protection.

Situations where such a strategy may be applicable include: high value software inventions; software inventions where UK protection is particularly important; and software inventions where inventive step arguments over known prior art are believed to be marginal

James Leach, partner and European patent attorney at Mewburn Ellis who led the report, said: “This report shows that the differences in the way in which the IPO and EPO examine software inventions can translate into different outcomes for such inventions at the two patent offices.”

He added, however, that it was difficult to predict with any certainty whether a given software invention will fare better at the IPO or EPO. “This suggests that applicants looking to protect a new software invention could benefit from a dual filing strategy, in which the same application is pursued at both the IPO and EPO. Indeed, we have already seen anecdotal evidence that some large US tech companies are pursuing a dual filing strategy along these lines,” he said.

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