Quantum inventions before the patent offices of Europe and the US
The notion of what constitutes a patentable invention differs across patent offices around the world. It is not uncommon for the same invention to be patented with different scopes of protection or, indeed, for a patent to be granted by one office and yet refused by another patent office.
For quantum inventions, one would expect to see additional complexity due to the quantum nature of the inventions. The issue at hand is that abstract ideas, including mathematical models and scientific theories, are by many offices excluded from being patentable. Since quantum physics relies heavily on its mathematical formalism and is of an exceedingly abstract quality, this immediately raises the question whether obtaining patent protection for a quantum invention is more difficult or even impossible before some patent offices because of its quantum nature.
In order to assess the situation for quantum inventions, we look at two example quantum inventions, Microsoft and Alcatel, as captured in their respective patent applications before, the European patent office and the US patent office. Although this selection amounts to a small sample size, the points discussed below are generally relevant.
Microsoft (US16/286,337, EP19710257.7) - US v EPO
The first invention, Microsoft, is by Microsoft Technology Licensing, LLC and relates to a method of operating a quantum computing device for determining a solution to a combinatorial optimization problem.
Determining a solution is done by finding the ground state of a Hamiltonian through a process of estimating an energy level of a quantum state of the qubits in a quantum computer. The quantum computer prepares “trial” quantum states and iteratively refines those states for a better approximation of the solution to the combinatorial optimization problem.
Although an example of the quantum computer was presented in the application as a physical system having qubits embodied in physical form, the initial wording of the patent claims defined a patent scope arguably encompassing non-physical qubits – i.e., simulated, or virtual, qubits. This arguably broadened the scope of the invention from the physical towards the abstract in a manner consequential in Europe but, as we shall see, not in the USA.
The Microsoft invention was pursued in patent applications before the US patent and trademark office (abbreviated “USPTO”) and the European patent office (abbreviated “EPO”):
- the US patent application has application number US16/286,337;
- the European patent application has application number EP19710257.7.
Microsoft - the US position
US patent law used to be exceedingly favourable as regards patenting of abstract inventions, but this changed with the US Supreme Court’s decision in Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014), (abbreviated “Alice”). The Alice decision significantly expanded the definition of what constitutes an abstract idea and, consequently, severely restricted what constitutes a patentable invention.
Microsoft - the EPO position
The EPO is known to have a well-developed position towards abstract inventions, such as computer-implemented inventions and mathematical methods. As regards quantum inventions, this position does not appear to have been set out in decisions specifically related to quantum inventions, but it is understood that the same principles as used for classical counterparts are also applicable to quantum inventions. For example, the EPO will apply the same principles as used for assessing classical computer-implemented inventions to quantum computer-implemented inventions.
Alcatel (US13/912,876, EP14703453.2) - US v EPO
The second invention, Alcatel, is by Alcatel Lucent SAS and relates to an apparatus including a quantum circuit to process quantum states and detectors to measure the quantum states after being processed. This apparatus further utilises a parity check performed on one of the quantum states for purposes of error correction.
The Alcatel invention was prosecuted in respective patent applications before the “USPTO” and the EPO:
- the US patent application has application number US13/912,876.
- the European patent application has application number EP14703453.2.
Alcatel - the US position
The history of the Alcatel invention before the USPTO is illustrative of this a shift caused by the Alice decision. The USPTO objected that the Alcatel invention was unpatentable for relating to an abstract idea, arguing in 2015 that:
“The sole purpose of the machinery […] is to perform the abstract steps of transforming ‘the preset states based on the physical state received from the input register and to output the physical state to an output register’ […] Nowhere does the Applicant teach any ‘new and useful improvement’ as required […] but only teaches a closed system that has the sole purpose of performing abstract steps […]”.
Alcatel - the EPO position
The corresponding Alcatel patent application before the EPO did not encounter objections as raised by the USPTO. Indeed, prosecution of the European application proceeded largely independent of the fact that this is a quantum invention. Instead, the EPO discovered an earlier patent document and argued that this earlier document already discloses the same invention, and that therefore the Alcatel invention was not in fact new. The applicant was unable to overcome this objection, and so the application was refused.
© 2024 Mewburn Ellis
