The patentability of software, computer programs and computer-implemented inventions 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 patents granted by the European Patent Office (EPO) in these fields (sometimes called "software patents") 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 scrutinyChristoph Laub, International Software Patent Filing: The Problem of Statutory Subject Matter in view of Legal Standards at the EPO-USPTO and Economic Implications , Academic Year 2004/2005, Master's Thesis (Munich Intellectual Property Law Center (MIPLC)), Retrieved 21 March 2006. when compared to their American counterpart, that does not mean that all inventions including some software are de jure not patentable.
Article 52 of the European Patent Convention The European Patent Convention (EPC), Article 52, paragraph 2, excludes from patentability, in particular
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.Vienna Convention on the Law of Treaties, Article 31 However, the purpose behind the words and the exclusions themselves is far from clear.Article 52(2) of the Convention on the Grant of European Patents: What Did the Framers Intend? A Study of the Travaux Preparatoires, Justine Pila (University of Oxford - Faculty of Law), International Review of Intellectual Property and Competition Law, Vol. 36, 2005
One 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 T 928/03.T 928/03, Konami, Video Game System.
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 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.For the enhanced user interface, see for instance decisions:
T 115/85 (OJ EPO 1990, 30), headnote 1: "Giving visual indications automatically about conditions prevailing in an apparatus or system is basically a technical problem." T 877/92, page 11, Reasons 4, to page 13, Reasons 5. T 928/03, catchword 1, "I. Making a possibly concealed indicator clearly visible on a display screen to the user of an interactive video game does not exclusively address a human mental process but contributes an objective technical function to the display. The functional quality is not cancelled by the fact that the visualised information will also enter into a decision of the user interacting with the video game displayed on the screen (point 4.1.1 of the reasons)."
First hurdle: patentable subject-matter requirement As of 2013, the criterion used for distinguishing "inventions" from "non-inventions" at the EPO, i.e. the patent eligibility requirement at the EPO, is that the subject-matter must have a technical character. Whether the subject-matter has a technical character is assessed without reference to the prior art. According to Stefan Steinbrener, former chairman of an EPO Technical Board of Appeal, this means that: Any of the subject-matter listed in Article 52(2) EPC may comprise an invention if it has technical character or contributes to it (in particular because a technical problem is solved by using technical means or a technical effect is achieved, technical interactions occur or technical adaptations are effected, in other words: if such subject-matter lends itself to a technical application)."
Some ten years before 2006,Decision T 154/04 of 15 November 2006, Reasons 12, published in the Official Journal of the European Patent Office 2008, 46. 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 claimed 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 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 art (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"). Decision T 154/04, Reasons 5 (B).
But the patentable subject matter test of Article 52(2) and (3) is only the first step towards patentability, the first hurdle. Computer programs can also be refused and are often refused on the ground of lack of inventive step. This is the second hurdle, which should not mixed up with the first hurdle. 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 writing using pen and paper. 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.
The technical character requirements relating to the first hurdle is now a formal requirement. In other words, it is a simple test that is related to the language used in the patent claim. Acceptable software patent claims can meet the first hurdle by starting with "computer-implemented method for..." or "system configured to...".
Second hurdle: 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 requirement.
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. Decision T 154/04, Reasons 5 (F). Assessing whether or not a feature contributes to the technical character of a claim has been viewed as difficult.Decision T 1749/06 of the Technical Board of Appeal 3.4.03 of 24 February 2010, Reasons for the Decision 4.2.2. Discussed in Special edition OJ EPO 2/2011, EPO Board of Appeal Case Law, p. 15: "The board noted the difficulty of assessing whether or not a feature contributed to the technical character of a claim."
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,T 641/00 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". Decision T 154/04, Reasons 5 (G). 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.
The practice for assessing the technical character for the second hurdle in the EPO is described in the Guidelines for Examination, which provides specific examples in the field of artificial intelligence and machine learning. To meet the second hurdle, a software invention needs to present a "technical application". This application is the purpose of the invention as defined in the patent claim, establishing a connection between a technical limitation of the patent claim and the technical purpose of the invention.
Enforceability before national courts