26/11/2015
Much has been said about the impact of the Alice v CLS US Supreme Court decision on the patentability of computer-implemented inventions and especially ‘fintech’ inventions in the US. Since then it has become harder, but not impossible, to obtain US granted patents in this space. However, in practice, and unexpectedly, the decision has provided some benefits to those wishing to obtain patent protection in Europe.
Before the Alice v CLS decision was published, it was common for our clients to file patent applications for their computer-implemented inventions in the US alone. This was because the subject-matter that could be patented in the US was broad and in this field the US is often the most significant jurisdiction in which to obtain a patent.
After the Alice v CLS decision came out, to improve the chances of a US patent application proceeding to grant, it became very desirable to include as much technical information about how an invention works in a new US patent application for a computer?implemented invention. It is desirable to include as much detail of how the technical features of the invention are arranged and how they operate and interact. This usually involves illustrating how data moves around and is processed as well as which technical components are involved. The technical components might be memory and a processor for inventions implemented on individual computers like smartphones and tablets; they might be individual computers as part of a groups of computers or data centres depending on the scale of the invention.
It is useful to explain the technical advantage of the technical components such as how considerations are made due to limited memory or processing power, latency or bandwidth limitations, or to synchronise components. Despite the huge advances in computer technology these things are still significant considerations in most computer-implemented inventions even in fintech.
Does this sound familiar? It is sounding like a statement of the requirements for a good European patent application in this field. So, as a result of the Alice v CLS decision, the extra information required to boost a US patent application is also boosting the chances of success of an equivalent European patent application. As a result, where pre-Alice clients might have filed only a US patent application, post-Alice they might give greater consideration to filing a patent application at the European Patent Office as well. Armed with a patent application with a more detailed technical disclosure, they will have a greater chances of success than they might have had before.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
