The EPO and the German Patent and Trademark Office have essentially taken the following approach to so called Computer Implemented Inventions (CII): Any standard hardware or method to be executed thereon makes a claim as a whole “technical”. However, features of a claim that do not solve a technical problem (but a problem in a non-technical field) cannot be used to prove the presence of an inventive step.
In theory, this sounds clear and there should be no doubts about whether a CII claim can be patented or not. In practice, however, things are more complicated and it is the attorney’s skill and experience to find convincing arguments (in case of prosecuting an application) as to why a feature actually solves a technical problem.
MHP has great experience in this regard. Many of the litigation cases handled and many patent applications in this field have been handled by us, in particular in the field of graphical user interfaces (GUI’s). The field of GUIs is very attractive for applicants since a potential patent infringement can be easily proved and verified by the courts.