Patentability of Covid-19 smartphone apps at the EPO

There are several such apps in development. One way in which they can work is to allow a first user’s smartphone to detect when and for how long it is within a certain distance of a second user’s smartphone. It does this using a short wave radio technology such as Bluetooth®. If the two smartphones are within that distance for more than a certain time period (that is, long enough for a sufficient risk of transmission of Covid-19), this is recorded. If the first user later becomes ill with Covid-19, they then inform the app which, in response, causes an alert message to be sent to the second user. The alert warns the second user they are at risk and, for example, advises they obtain a Covid-19 test. An alert message is also sent from the second user to any other users who have had contact with the second user and who may be at risk.

This is potentially life-saving technology which has never before been at humanity’s disposal when tackling a pandemic. In order to encourage the biggest possible public take-up (the more people using it, the more effective it is), a country’s app of choice will most likely be paid for by government and made available as a free download to individual smartphone users.

This leads to an important point, however. Although the app will be free at the point of use to members of the public, developing a reliable, well designed app that is to be potentially distributed to everyone in the country with a smartphone involves a huge investment of time and money. App developers therefore need to be able recoup that investment in order to make such a project viable.

One way in which an app developer may be able to help recoup some of their investment is through obtaining patent protection on the new and inventive features of an app. This gives the developer the right to prevent third parties (who have typically not borne any of the development costs and who are therefore potentially able to undercut the developer when tendering to the government) from copying those new and inventive features in competitor apps without permission. Of course, the developer may give permission by way of licensing, for example. It is also important to note there are systems in place (such as the “Crown Use” provisions in the UK) which ensure governments are not prevented from using patented technology where necessary.

So, what aspects of a new app can be patented at the European Patent Office (EPO)?

Smartphone apps at the EPO typically fall under the category of “computer-implemented inventions (CII)”. Claims directed to CIIs typically include a mix of technical and non-technical features. Inventive step can only be acknowledged based on technical features, that is, those features which provide a technical contribution over the closest prior art (see the EPO Guidelines for Examination G-VII 5.4).

But what is a technical contribution? There is no hard and fast rule as to what constitutes a technical vs non-technical contribution. The very nature of new inventions (which, in essence, constitute a combination of features never seen before) means such a hard and fast rule isn’t really possible. Rather, it varies on a case by case basis. However, EPO case law (and the Guidelines which are based on EPO case law) give some pointers as to the sort of features which might be considered technical.

As a general principle, the fact that something is implemented on a computer (in the form of a smartphone in the case of an app) does not necessarily mean it makes a technical contribution. This reflects the fact that, although a computer is an inherently technical machine, the same computer is able to run programs for all sorts of non-technical purposes. This includes programs whose contribution is in a field excluded from patentability under Article 52(2) EPC such as business methods, mathematical methods and presentations of information.

The EPO’s view is that simply implementing, say, a new business method, mathematical method or presentation of information on a computer therefore should not suddenly render that concept patentable. Rather, the contribution made by that concept remains non-technical and therefore cannot contribute to an inventive step (and therefore to patentability). On the other hand, if the contribution does not fall within a field excluded from patentability and, instead, makes an improvement to, for example, the internal functioning of the computer, this is more likely to be seen as making a technical contribution. This technical contribution is then taken into account when assessing inventive step.

With this in mind, which features of a Covid-19 smartphone app are more likely to be seen by the EPO as making a technical contribution (and are therefore more likely to be patentable)? Some ideas are:

• A new way of implementing the app on the smartphone operating system in a way which reduces use of the smartphone’s computing resources. This is an important issue with any COVID-19 app since it will be most effective if it can constantly run in the background on a user’s smartphone as they travel around without excessively draining the battery, and reduced use of computing resources often results in lower power consumption. The contribution here is using less computing resources, which is more likely to be seen by the EPO as technical (see for example, the Guidelines G-VII 5.4.2.4).
• A new user interface (UI) which allows a user to interact with the app more easily (e.g. with fewer touch screen taps or gestures) to determine, say, their current risk of contracting COVID-19 and how this has changed compared to previous days or weeks. The contribution here is an easier mechanism for enabling user input, which is more likely to be seen by the EPO as technical (see for example, the Guidelines G-II 3.7.1).

On the other hand, the following example features are probably less likely to be seen by the EPO as making a technical contribution (and are therefore less likely to be patentable):

• Any mathematical method used to analyse data collected by the app for disease spread prediction. This is likely to fall foul of the exclusion from patentability of “mathematical methods” stated in Article 52(2) EPC and therefore is unlikely to be seen by the EPO as making a technical contribution even if implemented using a smartphone as a computer (see for example, the Guidelines G-II 3.3).
• Any purely aesthetic considerations of the UI (e.g. the colour scheme or how cognitive data is arranged on the screen – although do note that other types of protection such a trade mark or registered design may be available). These are likely to fall foul of the exclusion from patentability of “presentations of information” of Article 52(2) EPC and therefore are unlikely to be seen by the EPO as making a technical contribution even if implemented using a smartphone as a computer (see for example, the Guidelines G-II 3.7.1).

Sometimes, however, the situation is less clear cut. For example, as well as power consumption, another important issue with any COVID-19 app is data security. This relates not only to where records of user interactions are kept (with a centralised model being favoured by those who wish to use the generated data to track the spread of the virus and a decentralised model being advocated by those with privacy concerns) but also to ensuring the connection established between users’ smartphones by the app cannot be used to gain unauthorised access to a particular user’s smartphone.

Improved data security as a broad concept may not necessarily be seen by the EPO as being a technical contribution. This is because the improved data security may be a result of “administrative” rather than “technical” features. The term “administrative”, though not mentioned in the exclusions of Article 52(2) EPC, is discussed in the Guidelines G-II 3.5.3 as being subsumed under the term “business method” (with “schemes, rules and methods … for doing business” being excluded from patentability under Article 52(2)(c) EPC).

Broadly speaking, a CII is seen as providing only an administrative rather than technical contribution if it merely circumvents a technical problem rather than solving it with technical means (see for example, the Guidelines G-II 3.5.3). In the context of Covid-19 app data security, the question is therefore whether the improved data security is truly the result of a technical contribution or merely the result of such a circumvention.

The boundary between circumventing and solving a technical problem is not always apparent.

For example, does a new decentralised model of storing records of different users’ smartphone interactions provide improved data security because of technical considerations? Or is the improved data security merely a result of the fact that not storing information in a single, central place (whether this data is digital, written on paper or etched on stone tablets) is always better for data security and therefore no technical considerations are relevant? Without further technical details about exactly how the decentralised model works and why it is technically superior to what has come before, one can see how the EPO might be inclined to come to the latter conclusion that the contribution is non-technical.

As another example, what about a new encryption method which helps prevent unauthorised access to a user’s smartphone through interaction with other smartphones through the app? The idea of an “always on” Bluetooth® (or similar) connection which allows exchange of data between users who may be strangers and which is then used for a very sensitive purpose (that is, determining if someone is at risk of contracting Covid-19 because of someone they met) throws up a lot of potential security challenges which clever new techniques involving encryption could help address. Are such techniques more likely to be seen by the EPO as providing a technical solution rather than simply circumventing the problem? The fact that the Guidelines G-II 3.3 indicate encryption techniques as an example technical purpose of a mathematical method suggests this might be the case.

In summary, smartphone apps are a potentially very valuable tool in fighting the Covid-19 pandemic. However, there are several issues which must be addressed (power consumption and data security amongst them) and it is important app developers are able to invest the time and money needed to overcome these issues and to ensure the finished product is as easy to use and robust as possible. One thing which may improve their confidence in the viability of such a project is obtaining patent protection for any new and inventive features of their app. At the EPO, this is possible for any features of an app which make a technical contribution over what is already known.

If you interested in obtaining patent protection for a smartphone app (for Covid-19 or any other purpose), please get in touch with your D Young & Co advisor who will be able to assist you.

The above article has been prepared based on the current EPO Guidelines for Examination and the author’s extensive experience of drafting and prosecuting patent applications for CIIs at the EPO.