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The Current Status of Software Patents in Europe

Photo by k0a1a.net

by Charl Goussard, NAIP Legal Research

Computer Implemented Inventions (CII's), or software, is a highly debated issue in the field of Intellectual Property. In some countries, such as Korea and Japan, software inventions are easily patentable. In Europe, however, applicants have to prove that their inventions make a contribution in a technical field before being granted a patent.

With computers being part of nearly every facet of modern life, the number of applicants seeking patent protection for CII's is ever increasing. According to the European Patent Office (EPO), the CII application category has had the steepest growth rate among all patent categories in the past few years.

As a result of this steep growth, CII's presented to the EPO undergo a thorough examination process aimed at distinguishing true technological innovations from mere variations of existing methods. In terms of patentability this means that the novelty and inventiveness of CII's, just as with other patents, are examined before being awarded EPO-patent status.

Defining CII's

CII's can be described as inventions that require a computer, a computer network or other programmable apparatus to be realised. To qualify as a CII, "...the invention also needs to have one or more features which are realised wholly or partly by means of a computer program..." – EPC.

In order to receive patent status from the EPO, the CII needs to fulfill the usual requirements of patentability applicable to all patent applications. Consequently, CII's will be considered by the EPO if they:
1. Have a technical character and solve a technical problem
2. Are new
3. Involve an inventive technical contribution to the prior art

Patentability of CII's at the EPO

The EPO emphasizes that CII's should create new technical solutions; thus, if a computer program fails to succeed in solving a technical problem, such invention will not be awarded a patent.

A Closer Look at the Law: Patentable inventions – EPC Art. 52

(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

(2) The following in particular shall not be regarded
as inventions within the meaning of paragraph 1:
    (a) discoveries, scientific theories and mathematical
    (b) aesthetic creations;
    (c) schemes, rules and methods for performing mental acts, playing games or doing business, and
    programs for computers;
    (d) presentations of information.
In particular, the EPO will not grant a patent if the invention is nothing more than a computer-implemented business method.

Art 52(2) (c) of the European Patent Convention (EPC) makes it clear that a program for a computer cannot be granted patent status. The exception is if such a program causes a further technical effect that is more than the normal technical interactions between hardware and software.

How does this affect the real-life scenario?

In short: inventions that fail to create a technical process, but merely use a computer program to create a business process, will not be granted patent status.

Using conventional computer technology and computer networks to solve business problems or to create novel business data will fail to make a technical contribution to the existing technology. Despite the business advancement such an invention may create, the EPO will refuse the grant of a patent based on its lack of technical contribution.

The Current Situation at the EPO

Interpretation of the law regarding the patentability of CII's has not been without controversy and uncertainty. As a result of the numerous divergent decisions of the EPO's Boards of Appeal, current EPO President, Alison Brimelow, has recently referred four questions regarding CII's patentability to the Enlarged Board of Appeal of the EPO.

The questions aim at ensuring certainty on when a claim as a whole falls under the exclusion of Art 52 EPC. While the Board has yet to respond to the questions, below each question is a short discussion of the current case law related to the question.

Mrs. Brimelow's Questions:
1) Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?
A potential answer lies in the decision of the IBM case (T1173/97), that "...technical character for the claimed program is needed".
Thus, whether claiming a "computer program" as such or not, the threshold for granting a "software" patent lies with its technical character.

However, in contrast to the IBM decision, T424/03 stated that a computer program should be claimed as a "computer implemented method".

Despite these apparent contradictions, the Board of Appeals will likely stick to the technical requirements as explained in the IBM-case (in the light of the inventive step requirement of Art 56 EPC) rather than a pure semantic interpretation of EPC Article 52, as seen in T424/93.

2(A): Can a claim in the area of computer programs avoid exclusion under Article 52(2)(C) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

2(B): If question 2(A) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?
Once again, the leading IBM decision (T1173/97) seems to provide guidance in stating that: "...computer program is patentable when it has technical character".

Thus, it seems that the mere mentioning of "the use of a computer or a computer-readable data storage medium" will not be sufficient to avoid exclusion. Proof of the invention's technical character will have to be examined.

3(A): Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

3(B): If question 3(A) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

3(C): If question 3(A) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?
With regards to the third question, current decisions in T163/85 & T190/94, which state that "...a technical effect on a physical entity in the real world is required" seem to answer 3(a) in the positive.

The positive answer in 3(a) then leads us to 3(b), where T424/03 guides us in stating that, "...a technical effect confined to a respective computer program is sufficient". Note that T424/03 states the word "sufficient" and not "necessary". As a result, the use of some other criteria to obtain patentability might be admitted.

4(A): Does the activity of programming a computer necessarily involve technical considerations?

4(B): If Question 4(A) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

4(C): If Question 4(A) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?
Currently, T1177/97 and T172/03 state that "...programming is along the same line as the configuration of a technical apparatus", whereas T1173/97 and T833/91 specifically state that "...(a) programmer's activity falls within the exclusion in Art 52(2) EPC. Programming is only a mental act."
According to T1173/97 and T833/91, more than a mental act is required – a further technical step is required.

The fourth question assumes a distinct parting between the tasks of engineering and programming – the reality is that these tasks are often simultaneously conducted. It will be interesting to see which line of thought the Board of Appeals follow in their answer.


As to the interpretation of the law and the answering of these questions, we can only speculate what the Enlarged Board of Appeal will decide and consider in their answer. Until then, we'll have to hover in the cloud of uncertainty which covers the software patentability at the EPO.

Related Links:

EPC Article 52









02/13/2009 IP News & Blog Round-Up

  • When push comes to patent pending. - Now that patent reform in the US is again gaining momentum, its time to catch up on current events. This comprehensive article takes a look at the critical issues, potential solutions and potential problems. (from EETimes)
  • The Top 10 Trademark Mistakes In Advertising Campaigns. - Asian companies looking to break into the US market often lack the resources or help on trademark and copyright issues. Fortunately, this list of ten trademark mistakes or assumptions, while intended for US companies, is not useful only to them. (from Mondaq)
  • Yet another link to Why buying patents makes sense during recession. - When the decision comes to laying off employees or continuing to build up an IP portfolio, which would you choose? This article chooses the latter, and briefly makes its argument. What would you do? (from IPEG)
  • Why Patent Defendants Aren't Copycats. - Common belief is that a defendant in a patent infringement trial has somehow copied, reverse engineered or stolen a company's technology. These preconceptions, in turn, have been leveraged by savvy lawyers to influence jurors in patent trials. But sift through the data and you'll find that only 10% or so of cases actually involve copying. (from the Prior Art.)


02/06/2009 IP News & Blog Round-Up

  • WTO Dispute: US: 1, China: 0 - The results of the WTO dispute between the US and China were released last week and now some analysis are seeping out. This one (of three planned) goes over the Copyright claims in some good, easy to understand detail. Download the official decision here. (from China Hearsay)
  • Predictably, China continues its rise up the patent charts. - China's Huawei ranks number one on the list of top PCT filers, leading many media outlets to claim that China's takeover as world technology leader is imminent. But ZTE, the second Chinese company on the list, only ranks 38th. Click on the link for a second look at the details, or peruse the data yourself here. (from IP Dragon)
  • WIPO Newsflash: IP can be a Financing Tool. - Businesses are increasingly viewing IP as a financial instrument, but many in the industry is still racing to catch up. As a result, in March, WIPO will hold an open and free meeting for interested parties to learn more and discuss the phenomenon. Registration can be completed here.
  • Media: Is Asia Winning a Race to Patent Ideas in the U.S.?. - According to the numbers, yes. But does quantity equate to quality? Japan, for example, spurs patent filings by rewarding engineers per patent filed, leading to more filings. But that may actually be detrimental to efforts at effectively monetizing ideas. But then again, Canon has followed this model to become a major force in both copiers and cameras. The debate continues. (from BusinessWeek)


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