Software patents under the European Patent Convention

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.

Contents

1 Article 52 EPC 2 Patentability under European Patent Office case law 2.1 Landmark decisions 3 Enforceability before national courts 4 Directive on the patentability of computer-implemented inventions 5 References 6 See also 7 External links

Article 52 EPC

The European Patent Convention (EPC), 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 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 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 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 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 Article 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] (http://legal.european-patent-office.org/dg3/biblio/t840208ep1.htm)
• T 52/85, IBM [2] (http://legal.european-patent-office.org/dg3/biblio/t850052eu1.htm)
• T 26/86, Koch and Sterzel, X-Ray apparatus [3] (http://legal.european-patent-office.org/dg3/biblio/t860026dx1.htm)
• T 38/86, IBM, Text processing [4] (http://legal.european-patent-office.org/dg3/biblio/t860038ep1.htm)
• T 769/92, Sohei [5] (http://legal.european-patent-office.org/dg3/biblio/t920769ex1.htm)
• T 931/95, Pension Benefit System [6] (http://legal.european-patent-office.org/dg3/biblio/t950931eu1.htm)
• T 1173/97, IBM [7] (http://legal.european-patent-office.org/dg3/biblio/t971173ep1.htm) (on the "further technical effect")
• T 641/00, Comvik, Two identities [8] (http://legal.european-patent-office.org/dg3/biblio/t000641ex1.htm)
• T 258/03, Hitachi, Auction Method [9] (http://legal.european-patent-office.org/dg3/biblio/t030258ex1.htm)

Enforceability before national courts

The case law of the EPO Boards of Appeal is 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.

So far there does not appear to have been any case before a national court in Europe where infringement of a software patent has been proved and damages have been awarded. This is in stark contrast to the United States.

However, there have been a few court cases where the validity or not of a patent involving software has been the question, where in some European countries a national court has ruled either that a particular patent is valid (e.g. Germany); or that other patents involving software could be (e.g. UK).

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) [10] (http://www.jenkins-ip.com/serv/serv_10.htm); 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.

Directive on the patentability of computer-implemented inventions

Main article: EU Directive on the Patentability of Computer-Implemented Inventions.

One motivation for the controversial draft EU Directive on the Patentability of Computer-Implemented Inventions is 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, even if Switzerland for instance is not a member of the European Union but a member of the European Patent Organisation.

This move by the European Union Council of (national competitiveness) Ministers aims to "clarify" the meaning of Article 52 by making software patentable if and only if it has "technical effect". It is unclear what this means, but many argue that it would make all software patentable. This directive has become very controversial with the national governments are generally for it and the parliament generally against it.

After extensive debates and what some would describe as "wrecking amendments", the Parliament sent it back for a complete rewrite (BBC 3-Feb-05 [11] (http://news.bbc.co.uk/1/hi/technology/4232971.stm)). Nonetheless, the Council largely reinstated the original draft and approved it on 7 March 2005 [12] (http://news.bbc.co.uk/1/hi/technology/4325215.stm). The revised proposal will be resubmitted to the Parliament, which will only be able to overturn it by an absolute majority.

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 (http://db1.european-patent-office.org/dwl/legal/case_law/clr_all_en.pdf)- pdf pages 31 to 38)

See also

• Software patent
• Software patent debate
• Software patents under TRIPs Agreement
• Software patents under the Patent Cooperation Treaty

External links

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

• Article 52 European Patent Convention (http://www.european-patent-office.org/legal/epc/e/ar52.html#A52) (defining the patentability of Software in Europe)
• "Computer-implemented Inventions and Patents, Law and Practice at the European Patent Office", EPO brochure (http://www.european-patent-office.org/epo/pubs/brochure/cii/cii_brochure.pdf) (pdf document, 400KB)
• EPO examination guidelines: Computer programs (http://www.european-patent-office.org/legal/gui_lines/e/c_iv_2_3_6.htm)
• Patent lawyer about patenting of software under the EPO ideas (http://www.iusmentis.com/patents/software/epc/)
• Prof. Lenz: Interpretation of Art 52 of the European Patent Convention regarding the question to what extent software is patentable (translation from German) (http://swpat.ffii.org/analysis/epc52/exeg/index.en.html)

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