Various members of the IPKat's human team were at the 2010 CLT IP Conference earlier today, and IPKat helper David Pearce gave a presentation on where we are now with patentable subject matter in Europe. This post is an edited version of the paper that accompanied the presentation, and is being reproduced here for the benefit of those who didn't attend, and also for those who did and want an easier way of getting to all the internet references.
The presentation concentrated on developments over the past few years in the law on patentable subject matter, in particular relating to so-called software patents (or, according to the EPO's more accurate general term, 'computer-implemented inventions'), with emphasis on how the UK Patent Office and courts have dealt with the issue, and how this compares with the approach taken by the EPO and their Boards of Appeal.
What subject-matter is patentable?
- inventions the commercial exploitation of which would be contrary to "ordre public" or morality;
- plant or animal varieties or essentially biological processes for the production of plants or animals; and
- methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.
- scientific theories;
- mathematical methods;
- aesthetic creations;
- programs for computers;
- presentations of information; and
- schemes, rules and methods for performing mental acts, playing games or doing business.
Although there are different issues and complications with many of the above exclusions, one that has stood out from all the others over the last 25 years or so is that of programs for computers. This is mainly because computer programs, which are now much more separable from the hardware on which they can be run than they were in the past, have become much more important commercially in themselves. It is often said by opponents of the current patent system that the rise of Microsoft in the 1980s and 1990s did not depend on patents being available for software, but it is certainly now the case that Microsoft, along with every other major commercial software provider, use the patent system as a matter of course in their businesses.
Many people think that the computer program exclusion means that there should be no patent protection available for computer programs at all. This was not necessarily what the framers of the EPC had in mind when the Convention was being drawn up, otherwise the words 'as such' would presumably not have been included. As a consequence, what has been considered to be a non-invention has subtly (and sometimes not so subtly) changed over time, as the law has been reinterpreted over the years. Particularly in the case of the EPO, these changes have perhaps not been as dramatic as some might like to make out, as there has in reality been quite little movement for over 20 years on the substantive issue of whether inventions implemented purely by means of software are patentable.
At the moment, the law across Europe about how to decide what is and is not patentable is not settled, even though the same law should effectively apply in all member states of the EPC (comprising all 27 EU states together with a few other non-EU states). The relevant Articles of the EPC are intended to have the same effect as the corresponding Sections of the Patents Act 1977 in the UK. Section 130(7) of the UK Patents Act 1977 states that the relevant sections of the Act "are so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention". Nevertheless, how the law has been interpreted has led to different reasoning being used. The UK Patent Office, following the lead given by several (equally binding) Court of Appeal judgments, deals with patentable subject matter in one way, whereas the EPO, following the developing lines of reason in the case law of the (non-binding but usually persuasive) Technical Boards of Appeal, deals with patentable subject matter in quite a different way.
The fact that the UK and EPO approaches to patentable subject-matter are different should not in practice matter, since the law is the same and the same result should be (and usually is) arrived at regardless of the reasoning. Each case will however rely on its own facts and circumstances and, at the borderline, there is always an element of subjectivity involved that could, in some cases, swing a decision either way. At the borderline of what is and is not patentable (which will of course always exist for as long as there are patent applications to be prosecuted), there are current strong disagreements between how the law is applied in the UK according to the Court of Appeal, and how it is applied at the EPO according to the EPO Technical Boards of Appeal. Although some may view these differences as being like arguments over how many angels could dance on the head of a pin, the issues are quite serious at least to those directly involved and can cause much annoyance and confusion to the rest of us.
The EPO Approach
With this definition as a basis, the patenting process for CIIs at the EPO is very restrictive as it puts emphasis on new technical solutions. The most striking consequence of this definition is that computer programs, which do not solve a technical problem, are not patentable in Europe".
Examples of clearly patentable CIIs include anti-lock braking systems, encryption/decryption methods and audiovisual processing techniques (e.g. MPEG audio/video technology). An early EPO case relating to image processing was that of Vicom (T 208/84), which was decided in 1986. The invention related to a new mathematical technique applied to matrices of input data, which would typically represent digital image data. Provided the invention was claimed in the form of a method for processing images, rather than a purely mathematical method applied to data in general, the EPO considered that the method was patentable, because the technical effect of the invention was about processing images more efficiently.
Another key early case was that of Koch & Sterzel (T 26/86), which related to a software-implemented method of controlling an X-Ray apparatus for radiological imaging. Even though there was no new hardware required (the invention could work on existing known machinery), the EPO Board of Appeal considered that the invention was patentable because the invention resulted in a new and inventive technical effect. The fact that this was enabled by software on known hardware was, in the Board's view, irrelevant.
The decisions of Vicom and Koch & Sterzel are largely consistent with the case law that followed over the next 20 years. There is essentially not very much that has changed in the way that CIIs have been dealt with by the EPO. The problem areas have in the main been largely to do with where computer programs are used for implementing other excluded things, in particular business methods.
The EPO approach to patentable subject-matter is inseparable from the established problem-solution approach to assess inventive step. According to this approach, if a claimed invention is new, the proper way to assess whether there is an inventive step is to look at what technical problem the invention solves, in light of the known prior art. Firstly, the difference between the invention and the prior art is identified. Secondly, the technical effect of this difference (if any) is identified. Thirdly, the objective technical problem is identified, given this technical effect. Finally, an assessment is made of whether, given this objective technical problem, the skilled person would find it obvious to arrive at the claimed invention.
The UK Approach
There have been five Court of Appeal decisions over the past twenty years on the subject of the exclusions to patentability, being:
Gale's Application  RPC 305 - a new method of calculating square roots using software does not become patentable merely due to the medium on which the computer program is stored (in this case a ROM chip).
- Properly construe the claim;
- identify the actual contribution;
- ask whether it falls solely within the excluded subject matter; and
- check whether the actual or alleged contribution is actually technical in nature.
Another difficulty, which the later decision of Symbian tried to address, was whether step 4, which was included to conform the test with the previous case of Merrill Lynch (which introduced the 'technical effect' test), meant anything at all. The Patent Office had been effectively ignoring this step when deciding on patentability, because they considered that if the contribution was only in excluded subject matter it could not be technical. Symbian resolved this to some extent, but only by effectively fudging together the third and fourth steps.
The Controversy: October 2006 to present
(1) What is the correct approach to adopt in determining whether an invention relates to subject matter that is excluded under Article 52?
Shortly after Aerotel/Macrossan came out, an EPO Technical Board of Appeal responded in rather emphatic fashion to Jacob LJ's suggestion, the Board stating that the four-step test was "not consistent with a good-faith interpretation of the European Patent Convention" (T 154/04, point 12 of the reasons), and refusing to consider referring the questions to the Enlarged Board:
The then EPO President, Alain Pompidou also refused to refer the questions to the Enlarged Board, stating in a letter of reply to Jacob LJ in March 2007:
2.(a) Can a claim in the area of computer programs avoid exclusion under Art. 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?
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?
So Where Are We Now?
The way that patentable subject-matter is decided at the EPO is in fact largely the same (with a few modifications and refinements along the way) as it has been for the past 25 years. The referral to the Enlarged Board is therefore, in the view of this author as well as other more eminent commenters on the issue, unlikely to have any effect if, as seems likely to happen, the referral is judged to be inadmissible under Article 112(1)(b). Even if the Enlarged Board do decide to answer some or all of the questions, it seems likely that they will merely refer to the current line of reasoning being followed by the lower Boards of Appeal as being correct, and will refrain from making any definitive statements on where the boundary of patentability should lie.
In the UK, the situation remains more difficult to assess given the difficulty of reconciling five different, equally binding, Court of Appeal judgments. For now, examination at the Patent Office continues to follow the Aerotel/Macrossan four-step test, with the qualification applied by the later decision of Symbian. Perhaps once the Enlarged Board arrive at their decision, some clarity will return to the UK approach, but this might require a trip to the Supreme Court to sort out the issues properly.
Although there has been much discussion of the differences between how patentable subject-matter is dealt with in the UK and European Patent Offices, it should be remembered that, in the great majority of cases, the same result will nonetheless be achieved.