Software and AI Patents at the EPO: A Guide for US Companies

US software and AI companies often assume that a claim which survived Alice at the USPTO will pass the European Patent Office. It frequently does not. The EPO does not ask whether a claim is directed to an abstract idea; it asks which features make a technical contribution, and it assesses inventive step only on those features.

The EPO test in two steps. First, the claim as a whole must have technical character — reciting a computer, processor or memory normally suffices. Second, under the COMVIK approach, only features contributing to a technical effect count toward inventive step. Business rules, user-interface preferences, pure mathematics and presentation of information are treated as a given constraint, not as an invention.

What counts as a technical effect. Reduced memory or bandwidth use, lower latency, improved security of a communication channel, more accurate sensor processing, control of a physical device or industrial process, and adaptations of an algorithm to specific hardware. For machine learning, the EPO Guidelines (G-II, 3.3.1) accept AI as patentable where the model serves a technical purpose — for example classifying images for defect detection, or heart-beat analysis — or is adapted to the internal workings of the computer.

Where US claims fail. Claims built around a better recommendation, pricing or workflow logic, or a generic "train a model on data and output a prediction", usually fail for lack of inventive step: the only novel features are non-technical. The fix is rarely argument alone. It requires a specification that describes the technical problem, the implementation and the measurable technical effect — which is why pre-filing review of the US draft matters.

Practical checklist for US applicants. (1) Identify the technical problem in engineering terms. (2) Disclose the data flow, architecture and hardware interaction, not only the result. (3) Describe the technical effect of each distinguishing feature, with data if available. (4) Provide fallback dependent claims tying the method to a concrete technical application. (5) Avoid relying on post-filing declarations — under Article 123(2) EPC the effect must be derivable from the application as filed. The wider doctrinal comparison is in the EPO vs USPTO practice guide.

Computer-implemented inventions, electronics and physics-based systems are a core part of Bauer IP's EPO prosecution practice. For a review of a US software or AI application before European regional-phase entry, see European patent attorney for US companies.