Cabinet Beau de Loménie
Patentability of Software: The European Patent Office upholds its case law in an opinion of the Enlarged Board of Appeals
On October 23, 2008, the President of the European Patent Office referred several questions regarding the patentability of computer programs to the Enlarged Board of Appeals, ostensibly to resolve a divergence in decisions between two Boards of Appeal below. The Enlarged Board of Appeals decided on May 12, 2010 that the referral, identified as G 3/08, is inadmissible and thus declined to take action. While recognizing the importance of the issues raised, the Enlarged Board considered that the decisions of the Boards of Appeal below are not divergent in the sense of Article 112(1)(b) EPC so as to justify a referral to the Enlarged Board.
Despite the fact that the opinion of the Enlarged Board does not respond directly to the questions raised in the referral, it is notable for its review of the case law in Europe up to this point regarding the exclusion of computer programs from patentability, its recognition of the novelty and inventiveness of computer implemented inventions, and its discussion as to form of claims directed to inventions in this field.
According to Article 52(1) EPC, patents shall be granted for any invention in all fields of technology, provided that they are new, involve an inventive step, and are susceptible of industrial application.
However, Article 52(2) EPC identifies exceptions to “inventions” in the sense of Article 52(1) EPC. Whether or not claimed subject matter is excluded under Article 52(2) EPC is a prerequisite for examination as to the other criteria for patentability (novelty, inventive activity, and industrial application).
1. Exclusion of computer programs under Articles 52(2)(c) and 52(3) EPC:
1.1 The IBM decision (T 1173/97) is still fundamental in two respects:
a. Supplemental technical effect:According to the IBM decision, computer programs must be considered patentable provided that they have a technical character, namely, a supplemental technical effect going beyond the simple technical effect resulting from the normal physical interactions between the hardware and software, such as those occurring via the execution of a computer program (generation of electrical currents, for example).
b. Abandonment of the “contribution approach”:According to the “contribution approach” applied in certain Boards of Appeal case law (T 38/86), only inventions having a “contribution” to the state of the art in a field not excluded from patentability were patentable.
The IBM decision and, inter alia, the Pension Benefits decision (T 931/95) reject this approach. According to these decisions it is not appropriate to compare the claimed subject matter with the state of the art to determine if the subject matter is an invention in the sense of Article 52(1) EPC. As a result, the supplemental technical effect discussed in the IBM decision, taken into account to determine if a computer program is or is not an invention, need not be new.
1.2. The Hitachi decision (T 258/03) stands for the proposition that subject matter implementing technical means is not to be excluded from patentability under Article 52(2) EPC. According to this decision, a method involving the use of technical means thus escapes the exclusion from patentability. Such a method need only be new, present a non-obvious technical solution to a technical problem, and be susceptible of industrial application. These issues are discussed hereinbelow.
2. Recognition of novelty and inventive activity:
It is well established case law that for an invention to be patentable it must be new, inventive, and industrially applicable. It must also present a technical character, a condition that is implicitly required by the notion of “invention” in the sense of Article 52(1) EPC.
The manner in which inventive activity is considered by the EPO is set forth in the Duns decision (T 154/04). Consideration of novelty and inventive activity must be based only on the technical characteristics in the claim. Non-technical characteristics are ignored if they do not interact with the technical characteristics in the resolution of the technical problem addressed by the invention. A claimed invention can of course include both technical and non-technical characteristics.
According to the Comvik decision (T 641/00), the problem solved by an invention (in the problem-solution approach under European practice) must have a technical nature. The problem can be however formulated as a goal to be achieved in a non-technical field.
In general, the presence of only customary technical means alone (computer, network, etc.) will not be sufficient to establish inventive activity. The implementation of a non-technical method by such “typical” technical means is considered to be within the knowledge of a skilled person in the art.
3. Forms of claims:
The referral also raised a question as to the form of claims directed to computer-implemented inventions. More specifically, the referral inquired whether:
a) in view of the IBM decision (T 1173/97), claiming a computer program itself or a computer-readable medium makes any difference in view of the exclusion from patentability under Article 52(2) EPC; or
b) in view of the Microsoft decision (T 424/03),only a claim reciting “computer program for the implementation of a method X” could be excluded from patentability as a computer program as such; but a claim reciting “method X implemented by computer” or “computer program product storing an executable code for the implementation of method X” could not be excluded from patentability, whatever the nature of method X.
According to the opinion of the Enlarged Board, this difference between the Microsoft and IBM decisions does not constitute a divergence of decisions in the sense of Article 112(1)(b) EPC, and the referral is not admissible on this point.
The Enlarged Board also noted that the position expressed in the IBM decision was isolated, whereas the later Microsoft decision has been cited in numerous decisions. The latter is therefore precedential.
In conclusion, a claim falls outside of the exclusions of Article 52(2)(c) and 52(3) EPC provided that it implements technical characteristics. The claim is considered as a whole and without taking into account the state of the art, so it is relatively easy to escape the exclusions from patentability.
Thereafter, consideration of novelty and inventiveness is taken up solely on the basis of technical aspects of the claim, in accordance with the problem solution approach under European practice. (See, Guidelines for Examination, C-IV, 11.5.)
For a computer-implemented invention, the characteristics of the claim producing a supplemental technical effect (namely, a technical effect going beyond the normal physical interactions between the software and hardware) are taken into account.
It can be thus understood that examination of inventions related to computer programs is not fundamentally different in Europe than examination of other types of inventions.
©Cabinet Beau de Loménie - June 2010