Software patents under the European Patent Convention

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The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which inventions, or alleged inventions, in these fields are patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields (sometimes called "software patents") are regarded as valid by national courts.

Under the EPC, and in particular its Article 52, [1] "programs for computer" are not regarded as inventions for the purpose of granting European patents, [2] but this exclusion from patentability only applies to the extent to which a European patent application or European patent relates to a computer program as such. [3] As a result of this partial exclusion, and despite the fact that the EPO subjects patent applications in this field to a much stricter scrutiny [4] when compared to their American counterpart, that does not mean that all inventions including some software are de jure not patentable.

Contents

[edit] Article 52 of the European Patent Convention

The European Patent Convention (EPC), Article 52, paragraph 2, excludes from patentability, in particular

  1. discoveries, scientific theories and mathematical methods;
  2. aesthetic creations;
  3. schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (emphasis added)
  4. presentations of information.

Paragraph 3 then says:

(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such. (emphasis added)

The words "as such" have caused patent applicants, attorneys, examiners, and judges a great deal of difficulty since the EPC came into force in 1978. The Convention, as with all international conventions, should be construed using a purposive approach.[5][6] However, the purpose behind the words and the exclusions themselves is far from clear.[7][8]

An interpretation, which is followed by the Boards of Appeal of the EPO, is that an invention is patentable if it provides a new and non-obvious technical solution to a technical problem. The problem, and the solution, may be entirely resident within a computer such as a way of making a computer run faster or more efficiently in a novel and inventive way. Alternatively, the problem may be how to make the computer easier to use, such as in T928/03, Konami, Video Game System.

The position of the EPO can be contrasted with that of other patent offices with more liberal policies concerning the patenting of computer-implemented inventions such as the US Patent and Trademark Office and the Australian Patent Office. In these countries, the mere use of a computer is sufficient to make a business method patentable even if the computer is not being used in a novel or inventive way and only the underlying business method provides the patentable features. Such a position has been specifically rejected by the EPO in decisions such as the Hitachi/Auction method decision.

[edit] Patentability under European Patent Office case law

Like the other parts of the paragraph 2, computer programs are open to patenting to the extent that they provide a technical contribution to the prior art. In the case of computer programs and according to the case law of the Boards of Appeal, a technical contribution typically means a further technical effect that goes beyond the normal physical interaction between the program and the computer.

Though many argue that there is an inconsistency on how the EPO now applies Article 52, the practice of the EPO is fairly consistent regarding the treatment of the different elements of Article 52(2). A mathematical method is not patentable, but an electrical filter designed according to this method would not be excluded from patentability by Article 52(2) and (3).

According to the jurisprudence of the Boards of Appeal of the EPO, a technical effect provided by a computer program can be, for example, a reduced memory access time, a better control of a robotic arm or an improved reception and/or decoding of a radio signal. It does not have to be external to the computer on which the program is run; reduced hard disk access time[citation needed] or an enhanced user interface could also be a technical effect. [9]

[edit] Patentable subject-matter requirement

Some ten years ago, [10] a shift occurs in the case law. The "contribution approach" or "technical effect approach", used to assess what was regarded as an invention within the meaning of Art. 52(1) and (2), was abandoned. [10] According to the "contribution approach" (see for instance T 52/85), the claimed subject-matter did not concern an invention within the meaning of Article 52(1) EPC when no contribution was made in a field not excluded from patentability. The "contribution approach" was a disguised inventive step assessment.

Decisions, such as T 258/03 and T 154/04, [10] have made it clear that the contribution approach was no longer applicable. Indeed

"The structure of the EPC (...) suggests that it should be possible to determine whether subject-matter is excluded under Article 52(2) EPC without any knowledge of the state of the art (including common general knowledge)" (T 258/03, Reasons 3.1).

It now suffices that a physical entity or activity involves technical means to be considered as an invention within the meaning of Article 52(1) EPC. Having technical character is an implicit requisite of an "invention" within the meaning of Article 52(1) EPC (requirement of "technicality"). [11]

But the patentable subject matter test of Article 52(2) and (3) is only the first step towards patentability. Computer programs can also be refused and are often refused on the ground of lack of inventive step, which can be relatively easier to assess in certain cases. As a Board of appeal put it in T 258/03 (Reasons 4.6) in relation to the fact that the "contribution approach" was no longer applicable,

"[we are] aware that [our] comparatively broad interpretation of the term "invention" in Article 52(1) EPC will include activities which are so familiar that their technical character tends to be overlooked, such as the act of writing using pen and paper. Needless to say, however, this does not imply that all methods involving the use of technical means are patentable. They still have to be new, represent a non-obvious technical solution to a technical problem, and be susceptible of industrial application."

[edit] Inventive step requirement

The interpretation of the term "invention" in the patentable subject-matter test, as used by the Boards of Appeal, has come with an adjustment of the case law relating to the inventive step requirement.

Any non-technical feature, i.e. a feature from a field excluded from patentability under Article 52(2) and (3) EPC, cannot be taken into account for the assessment of inventive step, unless they (the non-technical features) do interact with the technical subject-matter for solving a technical feature. [12] Likewise, the "state of the art" (used as the starting point from the inventive step assessment) should be construed as meaning the "state of technology", [13] the person skilled in the art is the person skilled in the relevant field of technology, [14] and "for the purpose of the problem-and-solution approach, the problem must be a technical problem which the skilled person in the particular technical field might be asked to solve at the relevant priority date". [15] Fields excluded under Art. 52(2) are not considered part of the technology for the assessment of inventive step.

Thus an expert in marketing or insurance policies for instance cannot be chosen as the fictional person skilled in the art, while a computer hardware or memory management expert may be chosen as the reference fictional person. This means that the mere implementation of a business method on a computer or computer network rarely involves an inventive step, while improving a computer-assisted industrial process or providing a more efficient memory management within a computer may involve an inventive step.[citation needed]

The case law of the EPO Boards of Appeal is not binding on the first instance departments of the EPO (i.e. the Examining Divisions), and different Examining Divisions of the EPO may assess patentability differently. Likewise, during an opposition procedure before the EPO, where the grant of a recently granted European patent may be opposed by a third party (opponent), the patent may be revoked if the Opposition Division form a different view on whether or not the invention in question was patentable.

[edit] Relevant decisions

Main article: List of decisions of the EPO Boards of Appeal relating to Article 52(2) and (3) EPC

[edit] Enforceability before national courts

The case law of the EPO Boards of Appeal is not binding on the EPO member states and different national courts acting on different cases may take a different view of patentability under Art. 52(2) EPC. Any European patent issued by the EPO may be revoked in a patent infringement lawsuit or revocation proceedings before a national court if for instance the court judges the invention as non-patentable in view of new prior art evidence or in view of a reconsideration of the available prior art. [16]

Peter Prescott QC, while sitting as a Deputy Judge in the UK High Court, and in consideration of CFPH's applications noted that the EPO decisions are prescriptive, but not binding on the UK courts, but also recalled the judgement of the Court of Appeal in Fujitsu's application which stated that it would be disastrous if there was any substantial divergence between the interpretations given by the UK courts and the EPO to Article 52(2) EPC.

The judgement in CFPH's applications was the first in a flurry[17] of UK court cases since 2005 involving re-consideration by the High Court of patent applications refused by the UK Patent Office.

The two patent applications in question both involved networked interactive wagering on the outcomes of events. Each application was refused as relating to a method of doing business as such. The applications were not refused as relating to a computer program as such, because the computer program was simply a tool that was being used to implement a new set of business rules and the invention was not really about the computer program. Although the judgement stressed that the reasoning used was quite different from the type that would have been applied by the EPO, the judge was satisfied that the EPO would have come to the same conclusion using their own reasoning.[18]

The decision criticises the EPO's reliance on insisting that an invention must provide a technical contribution, and not merely a business based contribution. As evidenced by the judgment in Dyson v Hoover the commercial background to an invention may help to show that a certain technical advance was or was not obvious.[19]

In Research In Motion UK Ltd. v Inpro Licensing SARL,[20] the UK High Court had the opportunity to consider a patent that had been granted by the EPO. The patent involved the 'pretreating' of web pages before they were downloaded to machines of modest processing capacity. Mr Justice Pumfrey came to the conclusion that the claimed invention was obvious, but specifically rejected the allegation that it was excluded from patent protection as a computer program as such. He noted that "all modern industry depends upon programmed computers, and one must be astute not to defeat patents on the ground that the subject matter is excluded under Article 52 unless the invention lies in excluded subject matter as such" (emphasis added).

The UK Court of Appeal judgment in Aerotel v Telco and Macrossan's Application criticised EPO practice to deem non-technical subject matter, such as new music or a story, as part of the prior art as not being intellectually honest.[21] The EPO have since responded by saying that the technical effect approach (with the rider) applied in the Aerotel/Macrossan judgement is irreconcilable with the European Patent Convention.[22]

In Germany in the case Logikverifikation (13 December 1999), the German Federal Court (German: Bundesgerichtshof or BGH) ruled on a case involving a European patent claiming a computer-implemented invention, namely a "method for hierarchical logic verification of highly-integrated circuits". Going against the run of previous case law, it overruled the German Federal Patent Court (German: Bundespatentgericht or BPatG), and came to the conclusion that the claimed subject-matter did properly meet the 'technical' requirement, was not excluded from patentability and therefore the patent should be allowed.

BPatG objections were also overruled in the decisions Sprachanalyseeinrichtung (German BGH, 11 May 2000) and Suche fehlerhafter Zeichenketten (German BGH, 17 October 2001) [1]; but it should be remembered that in the civil law tradition of mainland Europe legal precedent does not necessarily acquire the same formally binding character that it assumes in the common law traditions typical of most English-speaking countries.

In fact, more recently the same court has repeatedly upheld the rejection of monopoly claims to computers and programs operating theron, as in Erfassung und Übertragung von Betriebsdaten eines ersten medizintechnischen Geräts an eine zentrale Datenbank [2] as well as in Verfahren zum Betrieb eines Kommunikationssystems [3].

[edit] No referral to the Enlarged Board of Appeal

Under Article 112(1)(b) EPC, the President of the EPO has the power to refer a point of law to an Enlarged Board where two Boards of Appeal have given different decisions on that question.

On 27 October 2006, in its judgment [23] in Aerotel v Telco and Macrossan's Application, the Court of Appeal of England and Wales said (at para. 25) that "The decisions of the EPO Boards of Appeal [in this software patentability area] are mutually contradictory" and (also at para. 25) that "surely the time has come for matters to be clarified by an Enlarged Board of Appeal". And even though the English Court of Appeal went on to say (at para. 25) that it "is formally no business of ours to define questions to be asked of an Enlarged Board of Appeal", it went on to suggest (at para. 76) questions which it thought that the President of the EPO may refer to an EPO Enlarged Board of Appeal.

In response, Alain Pompidou, president of the EPO, is reported to have said [24] that the EPO was very interested in developments in the case law of national courts and that he had "taken note of the UK decision, but a decision on whether or not it would be opportune to follow the suggestions for a referral has not yet been taken."

Subsequently, however, it appears that Alain Pompidou has written a letter[25] dated 22 February 2007[26] to Lord Justice Jacob of the Court of Appeal of England and Wales (with a copy to the United Kingdom Patent Office) advising that he has "decided that at the moment there is an insufficient legal basis for a referral under Article 112(1)(b)", and that "the appropriate moment for a referral would be where the approach taken by one Board of Appeal would lead to the grant of a patent whereas the approach taken by another Board would not".

Subsequently, the Board in decision T 154/04 refused to refer questions "explicitly taken from the questions proposed for referral to the Enlarged Board of Appeal in the "Aerotel/Macrossan" judgement" [27] to the Enlarged Board of Appeal. [28]

[edit] Directive on the patentability of computer-implemented inventions

Main article: Directive on the patentability of computer-implemented inventions

Proposed in 2002, one motivation at least for the controversial draft EU Directive on the Patentability of Computer-Implemented Inventions was to have been to establish common practice for the national courts; and, in cases of doubt as to its interpretation, to have created a requirement for national courts of last instance to seek a ruling from the European Court of Justice. Even though Switzerland for instance is a member of the European Patent Organisation but not a member of the European Union, the EPO also signalled that it would have been likely to adjust its practice, if necessary, to conform with whatever text had finally emerged from the EU legislative procedure,

However, the directive became highly controversial, drawing increasing legislative notoriety to this area of European law. Proponents of the Directive claimed its purpose was to clarify the meaning of Article 52, by consolidating existing EPO practice. Opponents claimed the Directive would dismantle perceived more stringent restrictions against software patenting employed or employable by national courts, and lead to an increased assertion of patents on software Union-wide across the EU. After a history of procedural wrangling, and sustained lobbying and publicity efforts from both sides, the Directive, which had largely been supported by the European Commission and most member-state governments in contrast with their national parliaments, was overwhelmingly rejected by the European Parliament on 6 July 2005, terminating the legislative procedure.

This failure to reform the exclusion of software followed the failed attempt to delete programs for computers from Art. 52(2)(c) of the convention in 2000 at the diplomatic conference in Munich. At the time the reform was explicitly derogated in order to await the outcome of the consultation process for this EU Directive.

Final interpretation of the law in this area thus continues to be the responsibility of national courts, following national case-law (except when a European patent application is refused or when a European patent is revoked in opposition proceedings before the EPO, in which case the EPO has the final say regarding the interpretation of the EPC). A decisive supra-national authority for European patent law cases could be created under either proposals for the Community patent or the European Patent Litigation Agreement. As of early 2006 these are the subject of a public consultation by the EU Commission, preparatory to new expected legislative activity.

[edit] Statistics

According to a European Commission press release of 2002, "since the EPC came into force in 1978, at least 30,000 patents for computer-implemented inventions have already been issued [by the EPO]". [29]

[edit] Further reading

[edit] See also

[edit] References

  1. ^ Article 52 EPC
  2. ^ Article 52(1) EPC
  3. ^ Article 52(3) EPC
  4. ^ Christoph Laub, International Software Patent Filing: The Problem of Statutory Subject Matter in view of Legal Standards at the EPO-USPTO and Economic Implications, Academic Year 2004/2005, Master’s Thesis (Munich Intellectual Property Law Center (MIPLC)), Retrieved March 21, 2006.
  5. ^ Vienna Convention on the Law of Treaties, Article 31
  6. ^ CFPH's applications [2005] EWHC 1589 (Patents), paragraph 25 (2005-07-21)
  7. ^ Article 52(2) of the Convention on the Grant of European Patents: What Did the Framers Intend? A Study of the Travaux Preparatoires, Justine Pila (University of Oxford - Faculty of Law), International Review of Intellectual Property and Competition Law, Vol. 36, 2005
  8. ^ Aerotel Ltd v Telco Holdings Ltd and others, and Neal William Macrossan's application [2006] EWCA 1371 (Civ), paragraph 9 (2006-10-27)
  9. ^ For the enhanced user interface, see for instance decisions
    • T 115/85 (OJ EPO 1990, 30), headnote 1: "Giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem."
    • T 877/92, page 11, Reasons 4, to page 13, Reasons 5,
    • T 928/03, catchword 1, "I. Making a possibly concealed indicator clearly visible on a display screen to the user of an interactive video game does not exclusively address a human mental process but contributes an objective technical function to the display. The functional quality is not cancelled by the fact that the visualised information will also enter into a decision of the user interacting with the video game displayed on the screen (point 4.1.1 of the reasons)."
  10. ^ a b c Decision T 154/04 of November 15, 2006, Reasons 12, to be published at the Official Journal of the European Patent Office.
  11. ^ Decision T 154/04, Reasons 5 (B).
  12. ^ Decision T 154/04, Reasons 5 (F).
  13. ^ T 172/03
  14. ^ T 641/00
  15. ^ Decision T 154/04, Reasons 5 (G).
  16. ^ Article 138(1) EPC recites on which grounds a European patent may be revoked under the law of a Contracting State.
  17. ^ RIM v Inpro, para 185
  18. ^ CFPH's applications, para 129
  19. ^ CFPH's applications, para 101
  20. ^ Research In Motion UK Ltd. v Inpro Licensing SARL [2006] EWHC 70 (Patents)
  21. ^ Aerotel Ltd v Telco Holding Ltd and others, and Neal William Macrossan's application [2006] EWCA 1371 (Civ), paragraph 27 (2006-10-27)
  22. ^ T 154/04, Reasons 13
  23. ^ http://www.patent.gov.uk/2006ewcaciv1371.pdf
  24. ^ Emma Barraclough, House of Lords: We won't hear Macrossan appeal, Managing Intellectual Property, Weekly News - February 9, 2007.
  25. ^ http://www.patent.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter/p-law-notice-subjectmatter-letter.htm, United Kingdom Patent Office, retrieved March 15 2007
  26. ^ Full copy (including date) of Professor Alain Pompidou's letter (President EPO) to Lord Justice Jacob (Court of Appeal of England and Wales) dated 22 February 2007 (PDF). UKcorporator. Retrieved on 8 May 2007.
  27. ^ Decision T 154/04, Summary of Facts and Submissions V.
  28. ^ Decision T 154/04, Reasons 1 to 17.
  29. ^ European Commission Press Release, Proposal for a Directive on the patentability of computer-implemented inventions - frequently asked questions, Reference: MEMO/02/32, Brussels, 20th February 2002, Retrieved March 21, 2006.

[edit] External links

For more external links, including links to lobbying organizations, see Software patent debate.

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