Software patents under the European Patent Convention

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Even though the European Patent Convention and its Article 52 excludes the patentability of programs for computers as such, that does not mean that all inventions including some software are de jure not patentable. Patents which qualify as software patents according to some definitions of the expression "software patent" have been granted by the European Patent Office (EPO) since the '80s.

Article 52 EPC

The European Patent Convention, Article 52, paragraph 2 excludes

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;
4. presentations of information.

from patentability. 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)

Many believe that, for decades, this "as such" has been interpreted as meaning "as long as an idea in the program (and anything in paragraph 2) is claimed", but this interpretation has not been followed by the Boards of Appeal of the European Patent Office, and the EPO has granted many patents, which qualify as software patents under certain definitions of the expression, since the '80s. The expression "software patent" is however not used by the European Patent Office and its Boards of Appeal.

Patentability

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 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 Art. 52, the practice of the EPO is fairly consistent regarding the treatment of the different elements of Art. 52(2). A mathematical method is not patentable, but an electrical filter designed according this method would not be excluded from patentability by Art. 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 doesn't 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.

But art. 52(2) and (3) are 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.

Landmark decisions

• T 208/84, VICOM [1]
• T 52/85, IBM [2]
• T 26/86, Koch and Sterzel, X-Ray apparatus [3]
• T 769/92, Sohei [4]
• T 931/95, Pension Benefit System [5]
• T 1173/97, IBM [6] (on the "further technical effect")
• T 641/00, Comvik, Two identities [7]
• T 258/03, Hitachi, Auction Method [8]

The case law of the EPO Boards of Appeal are not binding on the member states, but binding on the first instance organs of the EPO, which grants European patents. National courts may take a different view of patentability, especially under Art. 52(2) EPC. A European patent on a computer-implemented invention, like each and every European patent no matter what it relates to, may therefore be issued by the European Patent Office, but subsequently it may potentially be not upheld in a patent infringement lawsuit or a revocation proceeding before a national court.

This is one motivation for the controversial EU Directive on the Patentability of Computer-Implemented Inventions, which seeks to establish common practice for the national courts; and which, in cases of doubt as to its interpretation, would create a requirement for national courts of last instance to seek a ruling from the European Court of Justice. The EPO is likely to adjust its practice, if necessary, to conform with whatever text finally emerges from the EU legislative procedure.

References

• Keith Beresford, Patenting Software Under the European Patent Convention, Sweet & Maxwell, 2000. ISBN 0-752-006339.
• European Patent Office, Case Law of the Boards of Appeal of the European Patent Office, Fourth Edition, 2002, European Patent Office DG3 - especially sections I.A.1, I.A.1.1 and I.A.1.2 on pages 1 to 8, (2.4 Mb pdf document- pdf pages 31 to 38)

See also

• Software patent
• Software patents under TRIPs Agreement

External links

• Article 52 European Patent Convention (defining the patentability of Software in Europe)
• Patent lawyer about patenting of software under the EPO ideas

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