Software patents under the European Patent Convention
Encyclopedia
The patentability of software, computer program
s and computer-implemented invention
s under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable
under the Convention on the Grant of European Patents of October 5, 1973
. The subject also includes the question of whether European patent
s granted by the European Patent Office
(EPO) in these fields (sometimes called "software patent
s") are regarded as valid by national courts.
Under the EPC, and in particular its Article 52, "programs for computers" are not regarded as inventions for the purpose of granting European patents, 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. 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 when compared to their American counterpart, that does not mean that all invention
s including some software are de jure
not patentable
.
Paragraph 3 then says:
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. However, the purpose behind the words and the exclusions themselves is far from clear.
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 T258/03 (Hitachi/Auction method).
, 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 or an enhanced user interface could also be a technical effect.
ed 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 have made it clear that the contribution approach was no longer applicable. Indeed
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").
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,
.
Any non-technical feature, i.e. a feature from a field excluded from patentability under , cannot be taken into account for the assessment of inventive step, unless they (the non-technical features) do interact with the technical subject-matter to solve a technical problem. Assessing whether or not a feature contributes to the technical character of a claim has been viewed as difficult.
Furthermore, the "state of the art" (used as the starting point for the inventive step assessment) should be construed as meaning the "state of technology", the person skilled in the art is the person skilled in the relevant field of technology, 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". 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.
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.
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.
, 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 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.
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.
In Research In Motion UK Ltd. v Inpro Licensing SARL, 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. The EPO Boards of Appeal 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.
, in the case Logikverifikation (13 December 1999), the German Federal Court (German: Bundesgerichtshof or BGH) ruled on a case involving a national patent application 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, can not be excluded from patentability for that reason and that the court has to go into substantial examination. The question about the exclusion of "computer programs as such"[sic] was mentioned the first time, but set aside as the court did not see the need to determine that question.
BPatG objections were also overruled in the decisions Sprachanalyseeinrichtung (German BGH, 11 May 2000) and Suche fehlerhafter Zeichenketten (German BGH, 17 October 2001). In the civil law
tradition of mainland Europe however, 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 patent claims to computers and programs operating thereon, as in Rentabilitätsermittlung as well as in Informationsübermittlungsverfahren.
where two Boards of Appeal have given different decisions on that question.
On 27 October 2006, in its judgment 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
, then president of the EPO, is reported to have said 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 dated 22 February 2007 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" to the Enlarged Board of Appeal.
Eventually, on October 22, 2008, the current President of the EPO, Alison Brimelow
, referred a point of law to the Enlarged Board of Appeal. The questions which were the subject of the referral related to the patentability of programs for computers under the European Patent Convention (EPC) and were, according to the President of the EPO, of fundamental importance as they related to the definition of "the limits of patentability
in the field of computing
." The referral had been quoted as relating to the "deeply contentious question about how to assess the patentability of software-related inventions". In May 2010 however, the Enlarged Board of Appeal considered the referral to be inadmissible because, in their opinion, no divergent decisions had been identified in the referral.
. 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.
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]".
organizations, see Software patent debate
., the central legal provision on patentability under the European Patent Convention
Computer program
A computer program is a sequence of instructions written to perform a specified task with a computer. A computer requires programs to function, typically executing the program's instructions in a central processor. The program has an executable form that the computer can use directly to execute...
s and computer-implemented invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
s under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable
Patentable subject matter
Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries suggest that certain subject matter is or is not something for which a patent should be granted.Together with novelty, inventive step...
under the Convention on the Grant of European Patents of October 5, 1973
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
. The subject also includes the question of whether European patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
s granted by the European Patent Office
European Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
(EPO) in these fields (sometimes called "software patent
Software patent
Software patent does not have a universally accepted definition. One definition suggested by the Foundation for a Free Information Infrastructure is that a software patent is a "patent on any performance of a computer realised by means of a computer program".In 2005, the European Patent Office...
s") are regarded as valid by national courts.
Under the EPC, and in particular its Article 52, "programs for computers" are not regarded as inventions for the purpose of granting European patents, 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. 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 when compared to their American counterpart, that does not mean that all invention
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
s including some software are de jure
De jure
De jure is an expression that means "concerning law", as contrasted with de facto, which means "concerning fact".De jure = 'Legally', De facto = 'In fact'....
not patentable
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
.
Article 52 of the European Patent Convention
The European Patent Convention (EPC), Article 52, paragraph 2, excludes from patentability, "in particular- discoveries, scientific theories and mathematical methods;
- aesthetic creations;
- schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; [emphasis added]
- 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. However, the purpose behind the words and the exclusions themselves is far from clear.
An interpretation, which is followed by the Boards of Appeal of the EPO
Appeal procedure before the European Patent Office
Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...
, 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
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
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 T258/03 (Hitachi/Auction method).
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 AppealAppeal procedure before the European Patent Office
Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...
, 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 or an enhanced user interface could also be a technical effect.
Patentable subject-matter requirement
Some ten years before 2006, 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. According to the "contribution approach" (see for instance T 52/85), the claimClaims under the European Patent Convention
Article 84 of the European Patent Convention defines the function of the claims under the European Patent Convention, the function being to define the matter, i.e. the invention, for which patent protection is sought. This legal provision also imposes that the claims must be clear, concise as well...
ed 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
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive — i.e., non-obvious — in order to be patented....
assessment.
Decisions such as T 258/03
T 258/03
T 258/03, also known as Auction Method/Hitachi, is a decision of a Technical Board of Appeal of the European Patent Office , issued on April 21, 2004. It is a landmark decision for interpreting Article 52 and of the European Patent Convention which built on the principles suggested by the same...
and T 154/04 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 artState of the artThe state of the art is the highest level of development, as of a device, technique, or scientific field, achieved at a particular time. It also refers to the level of development reached at any particular time as a result of the latest methodologies employed.- Origin :The earliest use of the term...
(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").
But the patentable subject matter test
Patentable subject matter
Patentable, statutory or patent-eligible subject matter is subject matter which is susceptible of patent protection. The laws or patent practices of many countries suggest that certain subject matter is or is not something for which a patent should be granted.Together with novelty, inventive step...
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 writingWritingWriting is the representation of language in a textual medium through the use of a set of signs or symbols . It is distinguished from illustration, such as cave drawing and painting, and non-symbolic preservation of language via non-textual media, such as magnetic tape audio.Writing most likely...
using penPenA pen is a device used to apply ink to a surface, usually paper, for writing or drawing. Historically, reed pens, quill pens, and dip pens were used, with a nib of some sort to be dipped in the ink. Ruling pens allow precise adjustment of line width, and still find a few specialized uses, but...
and paperPaperPaper is a thin material mainly used for writing upon, printing upon, drawing or for packaging. It is produced by pressing together moist fibers, typically cellulose pulp derived from wood, rags or grasses, and drying them into flexible sheets....
. 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.
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 requirementInventive step under the European Patent Convention
Under the European Patent Convention , European patents shall be granted for inventions which inter alia involve an inventive step. The central legal provision explaining what this means, i.e. the central legal provision relating to the inventive step under the EPC, is...
.
Any non-technical feature, i.e. a feature from a field excluded from patentability under , cannot be taken into account for the assessment of inventive step, unless they (the non-technical features) do interact with the technical subject-matter to solve a technical problem. Assessing whether or not a feature contributes to the technical character of a claim has been viewed as difficult.
Furthermore, the "state of the art" (used as the starting point for the inventive step assessment) should be construed as meaning the "state of technology", the person skilled in the art is the person skilled in the relevant field of technology, 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". Fields excluded under Art. 52(2) are not considered part of the technology for the assessment of inventive step.
Thus an expert in marketing
Marketing
Marketing is the process used to determine what products or services may be of interest to customers, and the strategy to use in sales, communications and business development. It generates the strategy that underlies sales techniques, business communication, and business developments...
or insurance
Insurance
In law and economics, insurance is a form of risk management primarily used to hedge against the risk of a contingent, uncertain loss. Insurance is defined as the equitable transfer of the risk of a loss, from one entity to another, in exchange for payment. An insurer is a company selling the...
policies for instance cannot be chosen as the fictional person skilled in the art, while a computer hardware
Computer hardware
Personal computer hardware are component devices which are typically installed into or peripheral to a computer case to create a personal computer upon which system software is installed including a firmware interface such as a BIOS and an operating system which supports application software that...
or memory management
Memory management
Memory management is the act of managing computer memory. The essential requirement of memory management is to provide ways to dynamically allocate portions of memory to programs at their request, and freeing it for reuse when no longer needed. This is critical to the computer system.Several...
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
Industry
Industry refers to the production of an economic good or service within an economy.-Industrial sectors:There are four key industrial economic sectors: the primary sector, largely raw material extraction industries such as mining and farming; the secondary sector, involving refining, construction,...
or providing a more efficient memory management within a computer may involve an inventive step.
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
Opposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
, 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.
Relevant decisions
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 infringementPatent infringement
Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or...
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.
UK
Peter Prescott QCPeter Prescott QC
Peter Richard Kyle Prescott QC is a barrister and Deputy High Court Judge of England and Wales, and a specialist on the law of copyright....
, 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 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.
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.
In Research In Motion UK Ltd. v Inpro Licensing SARL, 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
Nicholas Pumfrey
Sir Nicholas Richard Pumfrey, styled The Rt Hon. Lord Justice Pumfrey, was a British barrister. He served as a High Court judge for 10 years, and was promoted to the Court of Appeal little more than a month before his sudden death.- Early life and education :The son of Peter and Maureen 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
Aerotel v Telco and Macrossan's Application
Aerotel v Telco and Macrossan's Application is a judgment by the Court of Appeal of England and Wales. The judgment was passed down on 27 October 2006 and relates to two different appeals from decisions of the High Court. The first case involved granted to Aerotel Ltd and their infringement action...
criticised EPO practice to deem non-technical subject matter, such as new music or a story, as part of the prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
as not being intellectually honest. The EPO Boards of Appeal 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.
Germany
In GermanyGermany
Germany , officially the Federal Republic of Germany , is a federal parliamentary republic in Europe. The country consists of 16 states while the capital and largest city is Berlin. Germany covers an area of 357,021 km2 and has a largely temperate seasonal climate...
, in the case Logikverifikation (13 December 1999), the German Federal Court (German: Bundesgerichtshof or BGH) ruled on a case involving a national patent application 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
Bundespatentgericht
The Bundespatentgericht , or German Federal Patent Court, is a German federal court competent for particular legal matters, such as patent and trademark cases. It has its seat in Munich, Germany.- External links :...
or BPatG), and came to the conclusion that the claimed subject-matter did properly meet the 'technical' requirement, can not be excluded from patentability for that reason and that the court has to go into substantial examination. The question about the exclusion of "computer programs as such"
BPatG objections were also overruled in the decisions Sprachanalyseeinrichtung (German BGH, 11 May 2000) and Suche fehlerhafter Zeichenketten (German BGH, 17 October 2001). In the civil law
Civil law (legal system)
Civil law is a legal system inspired by Roman law and whose primary feature is that laws are codified into collections, as compared to common law systems that gives great precedential weight to common law on the principle that it is unfair to treat similar facts differently on different...
tradition of mainland Europe however, legal precedent does not necessarily acquire the same formally binding character that it assumes in the common law
Common law
Common law is law developed by judges through decisions of courts and similar tribunals rather than through legislative statutes or executive branch action...
traditions typical of most English-speaking countries.
In fact, more recently the same court has repeatedly upheld the rejection of patent claims to computers and programs operating thereon, as in Rentabilitätsermittlung as well as in Informationsübermittlungsverfahren.
France
France was the first European nation that excluded «les programmes ou séries d'instructions pour le déroulement des opérations d'une machine calculatrice» ("programs or series of instructions for the procession of operations of a calculating machine", i.e. computer programs) from being an industrial invention in 1968 in Loi n°68-1 Article 7. Two relevant decisions, namely Mobil Oil Corp., and SA SAGEM, rejected the patentability for the reason of missing a technical character. In Schlumberger, it was decided that not any use of a computer program disallows patentability. In Infomil, the court declared that a claim for an information system always has technical character and is therefore protectible.Referral to the Enlarged Board of Appeal
Under , the President of the EPO has the power to refer a point of law to an Enlarged BoardAppeal procedure before the European Patent Office
Decisions of the first instances of the European Patent Office can be appealed, i.e. challenged, before the Boards of Appeal of the EPO, in a judicial procedure , as opposed to an administrative procedure. These boards act as the final instances in the granting and opposition procedures before the...
where two Boards of Appeal have given different decisions on that question.
On 27 October 2006, in its judgment in Aerotel v Telco and Macrossan's Application
Aerotel v Telco and Macrossan's Application
Aerotel v Telco and Macrossan's Application is a judgment by the Court of Appeal of England and Wales. The judgment was passed down on 27 October 2006 and relates to two different appeals from decisions of the High Court. The first case involved granted to Aerotel Ltd and their infringement action...
, the Court of Appeal of England and Wales
Court of Appeal of England and Wales
The Court of Appeal of England and Wales is the second most senior court in the English legal system, with only the Supreme Court of the United Kingdom above it...
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
Alain Pompidou
Alain Pompidou is a French scientist and politician. A former professor of histology, embryology and cytogenetics, he was the fourth president of the European Patent Office from July 1, 2004 to June 30, 2007...
, then president of the EPO, is reported to have said 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 dated 22 February 2007 to Lord Justice Jacob of the Court of Appeal of England and Wales
Court of Appeal of England and Wales
The Court of Appeal of England and Wales is the second most senior court in the English legal system, with only the Supreme Court of the United Kingdom above it...
(with a copy to the United Kingdom Patent Office
United Kingdom Patent Office
The Intellectual Property Office of the United Kingdom is, since 2 April 2007, the operating name of The Patent Office. It is the official government body responsible for intellectual property rights in the UK and is an executive agency of the Department for Business, Innovation and Skills...
) 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" to the Enlarged Board of Appeal.
Eventually, on October 22, 2008, the current President of the EPO, Alison Brimelow
Alison Brimelow
Alison Jane Brimelow CBE is a British civil servant and former Chief Executive and Comptroller General of the UK Patent Office, now known as the Intellectual Property Office...
, referred a point of law to the Enlarged Board of Appeal. The questions which were the subject of the referral related to the patentability of programs for computers under the European Patent Convention (EPC) and were, according to the President of the EPO, of fundamental importance as they related to the definition of "the limits of patentability
Patentability
Within the context of a national or multilateral body of law, an invention is patentable if it meets the relevant legal conditions to be granted a patent...
in the field of computing
Computing
Computing is usually defined as the activity of using and improving computer hardware and software. It is the computer-specific part of information technology...
." The referral had been quoted as relating to the "deeply contentious question about how to assess the patentability of software-related inventions". In May 2010 however, the Enlarged Board of Appeal considered the referral to be inadmissible because, in their opinion, no divergent decisions had been identified in the referral.
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 JusticeEuropean Court of Justice
The Court can sit in plenary session, as a Grand Chamber of 13 judges, or in chambers of three or five judges. Plenary sitting are now very rare, and the court mostly sits in chambers of three or five judges...
. 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
European Commission
The European Commission is the executive body of the European Union. The body is responsible for proposing legislation, implementing decisions, upholding the Union's treaties and the general day-to-day running of the Union....
and most member-state governments in contrast with their national parliaments, was overwhelmingly rejected by the European Parliament
European Parliament
The European Parliament is the directly elected parliamentary institution of the European Union . Together with the Council of the European Union and the Commission, it exercises the legislative function of the EU and it has been described as one of the most powerful legislatures in the world...
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
Community Patent
The EU patent or European Union patent, formerly known as the Community patent, European Community Patent, or EC patent and sometimes abbreviated as COMPAT, is a patent law measure being debated within the European Union, which would allow individuals and companies to obtain a unitary patent...
or the European Patent Litigation Agreement
European Patent Litigation Agreement
The draft European Patent Litigation Agreement , or formally the Draft Agreement on the establishment of a European patent litigation system, is a proposed patent law agreement aimed at creating an "optional protocol to the European Patent Convention which would commit its signatory states to an...
. As of early 2006 these are the subject of a public consultation by the EU Commission, preparatory to new expected legislative activity.
Statistics
According to a European CommissionEuropean Commission
The European Commission is the executive body of the European Union. The body is responsible for proposing legislation, implementing decisions, upholding the Union's treaties and the general day-to-day running of the Union....
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]".
Further reading
- Keith Beresford, Patenting Software Under the European Patent Convention, Sweet & MaxwellSweet & MaxwellSweet & Maxwell is a British publisher specialising in legal publications. It joined the Associated Book Publishers in 1969; ABP was purchased by the Thomson Organization in 1987, and is now part of Thomson Reuters. Its British group includes W. Green in Scotland and Round Hall in Ireland...
, 2000. ISBN 0-7520-0633-9.: Computer-implemented inventions - European Patent Office, Examination of computer-implemented inventions at the European Patent Office with particular attention to computer-implemented business methods, Official Journal EPO, 11/2007, pp 594–600.
See also
- Software patentSoftware patentSoftware patent does not have a universally accepted definition. One definition suggested by the Foundation for a Free Information Infrastructure is that a software patent is a "patent on any performance of a computer realised by means of a computer program".In 2005, the European Patent Office...
- Software patent debateSoftware patent debateThe software patent debate is the argument dealing with the extent to which it should be possible to patent software and computer-implemented inventions as a matter of public policy. Policy debate on software patents has been active for years. The opponents to software patents have gained more...
- Software patents under TRIPs AgreementSoftware patents under TRIPs AgreementThe WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights , particularly Article 27, is occasionally referenced in the political debate on the international legal framework for the patentability of software, and on whether software and computer-implemented inventions should be...
- Software patents under United Kingdom patent lawSoftware patents under United Kingdom patent lawThere are four over-riding requirements for a patent to be granted under United Kingdom patent law. Firstly, there must have been an invention. That invention must be novel, inventive and susceptible of industrial application...
- Computer programs and the Patent Cooperation Treaty
External links
For more external links, including links to lobbyingLobbying
Lobbying is the act of attempting to influence decisions made by officials in the government, most often legislators or members of regulatory agencies. Lobbying is done by various people or groups, from private-sector individuals or corporations, fellow legislators or government officials, or...
organizations, see Software patent debate
Software patent debate
The software patent debate is the argument dealing with the extent to which it should be possible to patent software and computer-implemented inventions as a matter of public policy. Policy debate on software patents has been active for years. The opponents to software patents have gained more...
., the central legal provision on patentability under the European Patent Convention
- Patents for software? European law and practice at the European Patent Office (EPO)
- Old brochure edited by the EPO: "Computer-implemented Inventions and Patents, Law and Practice at the European Patent Office" (on the Internet Archive, pdf document, 400KB)
- E-learning modules on the "Patentability of computer-implemented inventions at the EPO": Module 1 (15 min) and Module 2 (20 min) "Programs for computers"
- Explanation of the EPO case law in this field, written by European patent attorney Arnoud Engelfriet
- Prof. Lenz: Interpretation of Art 52 of the European Patent Convention regarding the question to what extent software is patentable (translation from German)