- Email: [email protected]
Recent developments in the patentability of software in the UK
computer law & security report 24 (2008) 461–464
available at www.sciencedirect.com
www.compseconline.com/publications/prodclaw.htm
Software law – UK
Recent developments in the patentability of software in the UK Marcus Turle, David Knight Field Fisher Waterhouse LLP, London, UK
abstract Over the past few months there has been renewed debate at the UK Intellectual Property Office (‘‘UK IPO’’) and in the UK courts over whether computer programs can be considered patentable inventions. In particular, concern persists that the UK authorities and the European Patent Office (‘‘EPO’’) are applying different tests for the patentability of computer software, even though they are applying the same legislation. This article reviews the positions taken by the UK and the EPO tribunals, and how these impact upon businesses wishing to patent inventions encompassed in software. ª 2008 Field Fisher Waterhouse LLP. Published by Elsevier Ltd. All rights reserved.
1.
The law
The law governing the patentability of software is set out in section 1(2) of the Patents Act 1977, which enacts Articles 52(2) and (3) of the European Patent Convention (‘‘EPC’’). The EPC states (2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers. (3) Paragraph 2 shall exclude the patentability of the subjectmatter or activities referred to therein only to the extent to which a [European] patent application or [European] patent relates to such subject matter or activities as such (emphasis added).
In summary, computer programs are excluded from patentability, but only to the extent that a patent or application
1
relates to that thing as such. The critical test for the ambit of the exclusion, therefore, is what is meant by ‘‘as such’’ in Article 52(3) of the EPC. Since this test applies to both UK and European patents, there ought to be a uniform approach to its application. On the contrary, however, there have been varying interpretations over the years with little consistency between the UK and EPO tribunals.
2.
The UK approach
In the past couple of years, when considering whether patents fall within excluded subject matter under Article 52 EPC the UK IPO has applied a ruling of Lord Justice Jacob in the Court of Appeal in the joined cases known as Aerotel and Macrossan.1 The Aerotel case concerned an infringement action on a patent granted in the field of telecommunications in which the defendant, Telco, had counterclaimed for revocation of the Aerotel patent. The Macrossan case concerned an application relating to a computerised business method that had been refused by the UK IPO. At issue in both cases was whether the
Aerotel Ltd (a company incorporated under the laws of Israel) v (1) Telco Holdings Ltd, (2) Telco Global Distribution Ltd, (3) Telco Global Ltd: In the matter of Neal William Macrossan’s Application No. GB 0314464.9 [2007] RPC 7. 0267-3649/$ – see front matter ª 2008 Field Fisher Waterhouse LLP. Published by Elsevier Ltd. All rights reserved. doi:10.1016/j.clsr.2008.07.007
462
computer law & security report 24 (2008) 461–464
respective patents related to excluded subject matter under section 1(2) of the Patents Act 1977. When considering the correct approach for assessing whether an invention is patentable under UK law, Lord Justice Jacob in Aerotel and Macrossan set out the following four-stage test: (i) properly construe the claim; (ii) identify the actual contribution of the invention; (iii) ask whether the contribution falls solely within subject matter that the law excludes from patentability, such as computer programs; (iv) check whether the actual or alleged contribution is actually technical in nature. In devising this test Jacob LJ followed the traditional UK approach to excluded subject matter, namely, that the technical contribution of a claim is decisive in determining whether claimed subject matter is excluded from patentability. Applying this test, the Court of Appeal allowed the appeal in Aerotel, upholding the patent claims relating to a method of making telephone calls and a telephone system. Whereas the High Court had held the invention invalid as being merely a method of doing business, the Court of Appeal decided that the claimed invention amounted to a new combination or arrangement of hardware and so was not excluded subject matter. However, the Court of Appeal dismissed the Macrossan appeal and refused to allow patent claims relating to an automated method of acquiring documents necessary to incorporate a company. After this judgment the UK IPO issued a practice note2 stating that, whilst examiners would continue to assess each case on the merits, it was likely that few claims to computer programs in themselves would pass the third test. From that time, the UK IPO interpreted the Aerotel and Macrossan cases as meaning that it could not grant patents for computer programs at all. Five companies who had had their applications for patents for computer programs refused by the UK IPO joined together with a view to overturning the UK IPO’s practice. Their joint appeal to the High Court, concerning six patent applications in the name of the five different applicants in a case known as Astron Clinica,3 was heard by Kitchin J in January 2008. In each of the patent applications the examiner had found method and apparatus claims to be allowable. They were claims to ‘‘a method of doing X’’ performed by running a suitably programmed computer, and ‘‘a device for doing X’’ consisting of a computer programmed to carry out the method. The issue on appeal was whether the claims to the corresponding programs on suitable storage media were allowable. The patentability of claims to the programs themselves was an important issue for the applicants because they all exploited their inventions by selling software on a computer-readable medium or downloaded from the internet. If 2 Practice Note – Patents Act 1977: Patentable subject matter, 2 November 2006. 3 In the matter of Application No. GB0519497.2 & ORS sub nom Astron Clinica Ltd & ors v Comptroller General of Patents, Designs & Trade Marks (2008) 2 All ER 742.
they had to rely solely on the method and apparatus claims that had been allowed by the UK IPO, they could only protect their inventions by invoking contributory infringement provisions4 which, unlike direct infringement, is not strict liability as it requires some proof of knowledge, and there would be no protection against the production and sale of programs intended for use abroad. Following a review and comparison of the approach of the UK court and the EPO to the patentability of software, Mr. Justice Kitchin concluded that the UK IPO’s practice of flatly rejecting claims to computer programs was wrong. In ruling that claims to computer programs are not necessarily excluded, Kitchin J stated that ‘‘in a case where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable, then, in principle, a claim to the program itself should also be allowable.’’ Applying this test, the Judge allowed the appeals and returned the applications to the UK IPO, which has now granted the originally refused claims intact. The UK IPO chose not to appeal the Astron Clinica judgment and instead issued a revised practice note on patentable subject matter5 confirming that it would follow this ruling and allow patents to protect a computer program if the program implements a patentable invention. Following the production of the revised practice note on 7 February 2008, the High Court in Symbian v Comptroller General of Patents6 allowed an appeal against a UK IPO decision not to grant patent protection for a method of accessing data in a computing device and, in particular, to a method of accessing data held in a dynamic link library in the computing device. The Judge commented that care needed to be taken not to pre-judge the issue of technical contribution or even to exclude it by concentrating too much on the fact that the invention was program based. The end result of the invention claimed was that it solved a technical problem lying within the computer and was thus patentable. It was thought that the Symbian case would mark a liberalisation in the test applied for patentability of software patents. However, the UK IPO has announced7 that it will appeal on the basis that Mr. Justice Patten did not apply the four-stage test set out in Aerotel/Macrossan correctly, thus creating uncertainty about how the Aerotel/Macrossan test should be applied for inventions of this type.
3.
The Rajesh Kapur case
The ambit of patent protection was again considered by the High Court in April 2008 in the case of Rajesh Kapur.8 In this case Mr. Kapur sought to patent his invention for a document management system permitting the recovery both of 4
Section 60(2) of the Patents Act 1977. Practice Note – Patents Act 1977: Patentable subject matter, 7 February 2008. 6 [2008] EWHC 518 (Pat). 7 UK IPO Press release dated 18 March 2008 entitled ‘‘Patentability of computer programs – recent High Court judgment’’. 8 In the matter of Application No. GB05319365.1 & Ors sub nom Rajesh Kapur v Comptroller General of Patents, Designs & Trade Marks [2008] EWHC 649 (Pat). 5
computer law & security report 24 (2008) 461–464
documents that had been deleted or overwritten and in which deleted and overwritten documents were stored separately. The UK IPO had rejected the application as being for computer programs as such and, to the extent the applications were not so limited, as being methods of performing mental acts, both of which are excluded from patentability under Article 52 EPC. On appeal, Mr. Justice Floyd upheld the ruling that the claim fell within the exclusion for computer programs as such. The Judge applied the four-stage test in Aerotel/Macrossan and ruled that the claimed method was not an improved computer, but an entirely standard computer programmed to handle document storage in a particular way. Therefore, in the Judge’s view, in so far as the claim covered a computer implementation of the method, the contribution was correctly characterised as a computer program as such. However, Mr. Justice Floyd upheld Mr. Kapur’s appeal on the other ground relating to the performance of mental acts. The Judge ruled that, although he had considerable doubts as to whether Mr. Kapur really wished to obtain protection for implementations of his inventions which do not use a computer, the UK IPO had erred in applying a broad interpretation of the mental act exclusion. He held that the mental act exclusion should be viewed narrowly, so as to consider whether the claim actually covers a purely mental implementation of the claimed invention. Therefore, the Judge referred the application back to the UK IPO to decide whether, after the exclusion of the computer implementation, the application could proceed. Although Mr. Kapur’s appeal succeeded in part, in practice it is unlikely that Mr. Kapur will wish to proceed with his application excluding the computer implementation of his invention as it would appear that the value of his invention lies in its use on computers.
4.
EPO approach
Since the late 1980s the EPO has approached the patentability of computer implemented inventions on the basis that, while programs for computers are included in the items listed in Article 52(2), if the claimed subject matter has a technical character it is not excluded from patentability. For example, in Vicom,9 the EPO Technical Board of Appeal allowed a claim to a method of digitally processing an image, even though the processing was essentially carrying out the steps of an algorithm. The processing was considered to be technical and therefore the claim was not excluded because it related to a computer program or mathematical method as such. The first time an EPO Board of Appeal considered whether a computer program could be the subject of a patent per se was in the 1997 IBM/Computer Program Product cases.10 The Board considered the wording of Articles 52(2) and (3) and concluded that the legislators did not intend to exclude all computer programs from patentability, but only those which were programs for computers as such. Although all programs cause some modification in the behaviour of the hardware, the EPO decided that the necessary further technical character 9
Vicom/Computer-related invention (1986) T208/84, [1987] OJ EPO
10
might nevertheless be derived from the execution by the hardware of the instructions given by the software. In allowing patents for ‘‘a computer-readable medium having a program recorded thereon’’ and ‘‘a computer program product’’, the EPO concluded that a program was not excluded from patentability if, when run on a computer, it produced a further technical effect which went beyond the normal physical interactions between a program and a computer. Following the IBM decisions, the EPO therefore allowed claims to a computer program if, when running on a computer, the program was capable of bringing about a technical effect which went beyond the normal physical effects which resulted from the running of any program. Furthermore such claims were allowed whether the program was claimed by itself or as a record on a carrier. The Pension Benefits System Partnership case11 in 2000 marked another significant change to the EPO’s approach in assessing patentability. The application concerned a method claim and a product claim to a suitably programmed computer for a new method of controlling pension benefits using a computer system. The Board refused the method claim as being excluded matter as a method of doing business. As for the product claim, the Board of Appeal held that the computer system did define technical features and thus was not excluded from patentability by Article 52. However, the product claim was refused on the grounds of obviousness because the improvement was essentially an economic one which could not contribute an inventive step. This was the first time the EPO had regarded the form of claim (as opposed to its substance) as being of significance. A different Board of Appeal expressly disagreed with this new approach in Hitachi/Auction method.12 This case concerned a computerised method of carrying out a Dutch auction, in other words an auction in which the seller starts at a high price which is lowered until a bid is received. Once again the application included a product and a method claim. The Board of Appeal held that the presence in the claim of technical features such as a server, client computers and a network was sufficient to prevent the claims being excluded by Article 52. The Board treated method and apparatus claims identically but ruled that the issue of patentability of subject matter should only be addressed at the stage of considering inventive step, by considering features which contribute to a technical character. Applying this approach the Board concluded the application must be refused. There was no invention in automating the described way of carrying out a Dutch auction. In the subsequent Microsoft/Data Transfer13 case, the Board of Appeal reiterated the approach that any physical apparatus could form a claim which was capable of being patented. The Microsoft/Data Transfer application described a way of facilitating data exchange across different formats and it included method claims and a claim to a program on a computer-readable medium. The Board held that the method was implemented in a computer and this amounted to technical means sufficient to escape the prohibition in Article 52, following Hitachi. 11 12
14. T0935/97 and T1173/97.
463
13
(2000) T931/95. (2004) T258/03. (2006) T424/03.
464
computer law & security report 24 (2008) 461–464
The current practice of the EPO is contained in the EPO’s Guidelines14 for Examination. In particular, these underline the fact that, while ‘‘programs for computers’’ are included among the list of excluded items in Article 52(2), if the claimed subject matter has a technical character it is not excluded from patentability. The Guidelines summarise the test by stating Any claimed subject matter defining or using technical means is an invention within the meaning of Article 52(1). If the claimed subject matter does not have a prima facie technical character, it should be rejected under Articles 52(2) and (3). If the subject matter passes this prima facie test for technicality, the examiner should then proceed to the questions of novelty and inventive step. In assessing whether there is an inventive step, the examiner must establish an objective technical problem which has been overcome. The presence of such a technical contribution establishes that the claimed subject matter has a technical character and therefore is indeed an invention within the meaning of Article 52(1). If no such objective technical problem is found, the claimed subject matter does not satisfy at least the requirement for an inventive step because there can be no technical contribution to the art, and the claim is to be rejected on this ground.
5.
Conclusions
At the risk of exposing the author’s age, he recalls programming computers in the 1970s, at a time when memory was expensive and processing was slow. This gave rise to a need for a program that could efficiently sort data into, for example,
14
Guidelines for Examination in the European Patent Office, applicable as of 13 December 2007.
numerical or alphabetical order. If one accepts that developments in, for example, the pharmaceutical field can be worthy of patent protection, it is difficult to understand why someone who solves the data sorting problem should be treated any differently just because it is a computer program. Provided that the development meets the requirements applicable to all patents of newness and inventiveness, in the authors’ opinions developments in the computer software field should not be treated any differently, especially given the difficulties of relying on copyright to protect computer programs. Nevertheless the exclusions from patentability of Article 52(2) of the EPC are there, and must be addressed. While the EPO and UK tribunals both highlight the requirement for technicality for a claim relating to a computer program to be patentable, both systems interpret this condition in different ways. It is apparent from the Astron Clinica case that certain members of the judiciary are aware of the divergence in approaching the computer program exclusion in the UK and the EPO. This has been highlighted recently in the Symbian case where the UK IPO is appealing the High Court’s decision to grant a patent relating to the indexing of library functions to ensure operating stability even though the EPO has already granted Symbian a patent for the same invention with the same claims, subject to a single amendment to one of the claims. Given the current uncertainty in the UK tribunals over the patentability of computer software, inventors whose inventions include any software may be prudent to file directly with the EPO. Although this strategy may cost more initially, it should provide the inventor with a better opportunity of obtaining patent protection. Marcus Turle ([email protected]) and David Knight (David. [email protected]), Partners, Field Fisher Waterhouse LLP, London.
available at www.sciencedirect.com
www.compseconline.com/publications/prodclaw.htm
Software law – UK
Recent developments in the patentability of software in the UK Marcus Turle, David Knight Field Fisher Waterhouse LLP, London, UK
abstract Over the past few months there has been renewed debate at the UK Intellectual Property Office (‘‘UK IPO’’) and in the UK courts over whether computer programs can be considered patentable inventions. In particular, concern persists that the UK authorities and the European Patent Office (‘‘EPO’’) are applying different tests for the patentability of computer software, even though they are applying the same legislation. This article reviews the positions taken by the UK and the EPO tribunals, and how these impact upon businesses wishing to patent inventions encompassed in software. ª 2008 Field Fisher Waterhouse LLP. Published by Elsevier Ltd. All rights reserved.
1.
The law
The law governing the patentability of software is set out in section 1(2) of the Patents Act 1977, which enacts Articles 52(2) and (3) of the European Patent Convention (‘‘EPC’’). The EPC states (2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers. (3) Paragraph 2 shall exclude the patentability of the subjectmatter or activities referred to therein only to the extent to which a [European] patent application or [European] patent relates to such subject matter or activities as such (emphasis added).
In summary, computer programs are excluded from patentability, but only to the extent that a patent or application
1
relates to that thing as such. The critical test for the ambit of the exclusion, therefore, is what is meant by ‘‘as such’’ in Article 52(3) of the EPC. Since this test applies to both UK and European patents, there ought to be a uniform approach to its application. On the contrary, however, there have been varying interpretations over the years with little consistency between the UK and EPO tribunals.
2.
The UK approach
In the past couple of years, when considering whether patents fall within excluded subject matter under Article 52 EPC the UK IPO has applied a ruling of Lord Justice Jacob in the Court of Appeal in the joined cases known as Aerotel and Macrossan.1 The Aerotel case concerned an infringement action on a patent granted in the field of telecommunications in which the defendant, Telco, had counterclaimed for revocation of the Aerotel patent. The Macrossan case concerned an application relating to a computerised business method that had been refused by the UK IPO. At issue in both cases was whether the
Aerotel Ltd (a company incorporated under the laws of Israel) v (1) Telco Holdings Ltd, (2) Telco Global Distribution Ltd, (3) Telco Global Ltd: In the matter of Neal William Macrossan’s Application No. GB 0314464.9 [2007] RPC 7. 0267-3649/$ – see front matter ª 2008 Field Fisher Waterhouse LLP. Published by Elsevier Ltd. All rights reserved. doi:10.1016/j.clsr.2008.07.007
462
computer law & security report 24 (2008) 461–464
respective patents related to excluded subject matter under section 1(2) of the Patents Act 1977. When considering the correct approach for assessing whether an invention is patentable under UK law, Lord Justice Jacob in Aerotel and Macrossan set out the following four-stage test: (i) properly construe the claim; (ii) identify the actual contribution of the invention; (iii) ask whether the contribution falls solely within subject matter that the law excludes from patentability, such as computer programs; (iv) check whether the actual or alleged contribution is actually technical in nature. In devising this test Jacob LJ followed the traditional UK approach to excluded subject matter, namely, that the technical contribution of a claim is decisive in determining whether claimed subject matter is excluded from patentability. Applying this test, the Court of Appeal allowed the appeal in Aerotel, upholding the patent claims relating to a method of making telephone calls and a telephone system. Whereas the High Court had held the invention invalid as being merely a method of doing business, the Court of Appeal decided that the claimed invention amounted to a new combination or arrangement of hardware and so was not excluded subject matter. However, the Court of Appeal dismissed the Macrossan appeal and refused to allow patent claims relating to an automated method of acquiring documents necessary to incorporate a company. After this judgment the UK IPO issued a practice note2 stating that, whilst examiners would continue to assess each case on the merits, it was likely that few claims to computer programs in themselves would pass the third test. From that time, the UK IPO interpreted the Aerotel and Macrossan cases as meaning that it could not grant patents for computer programs at all. Five companies who had had their applications for patents for computer programs refused by the UK IPO joined together with a view to overturning the UK IPO’s practice. Their joint appeal to the High Court, concerning six patent applications in the name of the five different applicants in a case known as Astron Clinica,3 was heard by Kitchin J in January 2008. In each of the patent applications the examiner had found method and apparatus claims to be allowable. They were claims to ‘‘a method of doing X’’ performed by running a suitably programmed computer, and ‘‘a device for doing X’’ consisting of a computer programmed to carry out the method. The issue on appeal was whether the claims to the corresponding programs on suitable storage media were allowable. The patentability of claims to the programs themselves was an important issue for the applicants because they all exploited their inventions by selling software on a computer-readable medium or downloaded from the internet. If 2 Practice Note – Patents Act 1977: Patentable subject matter, 2 November 2006. 3 In the matter of Application No. GB0519497.2 & ORS sub nom Astron Clinica Ltd & ors v Comptroller General of Patents, Designs & Trade Marks (2008) 2 All ER 742.
they had to rely solely on the method and apparatus claims that had been allowed by the UK IPO, they could only protect their inventions by invoking contributory infringement provisions4 which, unlike direct infringement, is not strict liability as it requires some proof of knowledge, and there would be no protection against the production and sale of programs intended for use abroad. Following a review and comparison of the approach of the UK court and the EPO to the patentability of software, Mr. Justice Kitchin concluded that the UK IPO’s practice of flatly rejecting claims to computer programs was wrong. In ruling that claims to computer programs are not necessarily excluded, Kitchin J stated that ‘‘in a case where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable, then, in principle, a claim to the program itself should also be allowable.’’ Applying this test, the Judge allowed the appeals and returned the applications to the UK IPO, which has now granted the originally refused claims intact. The UK IPO chose not to appeal the Astron Clinica judgment and instead issued a revised practice note on patentable subject matter5 confirming that it would follow this ruling and allow patents to protect a computer program if the program implements a patentable invention. Following the production of the revised practice note on 7 February 2008, the High Court in Symbian v Comptroller General of Patents6 allowed an appeal against a UK IPO decision not to grant patent protection for a method of accessing data in a computing device and, in particular, to a method of accessing data held in a dynamic link library in the computing device. The Judge commented that care needed to be taken not to pre-judge the issue of technical contribution or even to exclude it by concentrating too much on the fact that the invention was program based. The end result of the invention claimed was that it solved a technical problem lying within the computer and was thus patentable. It was thought that the Symbian case would mark a liberalisation in the test applied for patentability of software patents. However, the UK IPO has announced7 that it will appeal on the basis that Mr. Justice Patten did not apply the four-stage test set out in Aerotel/Macrossan correctly, thus creating uncertainty about how the Aerotel/Macrossan test should be applied for inventions of this type.
3.
The Rajesh Kapur case
The ambit of patent protection was again considered by the High Court in April 2008 in the case of Rajesh Kapur.8 In this case Mr. Kapur sought to patent his invention for a document management system permitting the recovery both of 4
Section 60(2) of the Patents Act 1977. Practice Note – Patents Act 1977: Patentable subject matter, 7 February 2008. 6 [2008] EWHC 518 (Pat). 7 UK IPO Press release dated 18 March 2008 entitled ‘‘Patentability of computer programs – recent High Court judgment’’. 8 In the matter of Application No. GB05319365.1 & Ors sub nom Rajesh Kapur v Comptroller General of Patents, Designs & Trade Marks [2008] EWHC 649 (Pat). 5
computer law & security report 24 (2008) 461–464
documents that had been deleted or overwritten and in which deleted and overwritten documents were stored separately. The UK IPO had rejected the application as being for computer programs as such and, to the extent the applications were not so limited, as being methods of performing mental acts, both of which are excluded from patentability under Article 52 EPC. On appeal, Mr. Justice Floyd upheld the ruling that the claim fell within the exclusion for computer programs as such. The Judge applied the four-stage test in Aerotel/Macrossan and ruled that the claimed method was not an improved computer, but an entirely standard computer programmed to handle document storage in a particular way. Therefore, in the Judge’s view, in so far as the claim covered a computer implementation of the method, the contribution was correctly characterised as a computer program as such. However, Mr. Justice Floyd upheld Mr. Kapur’s appeal on the other ground relating to the performance of mental acts. The Judge ruled that, although he had considerable doubts as to whether Mr. Kapur really wished to obtain protection for implementations of his inventions which do not use a computer, the UK IPO had erred in applying a broad interpretation of the mental act exclusion. He held that the mental act exclusion should be viewed narrowly, so as to consider whether the claim actually covers a purely mental implementation of the claimed invention. Therefore, the Judge referred the application back to the UK IPO to decide whether, after the exclusion of the computer implementation, the application could proceed. Although Mr. Kapur’s appeal succeeded in part, in practice it is unlikely that Mr. Kapur will wish to proceed with his application excluding the computer implementation of his invention as it would appear that the value of his invention lies in its use on computers.
4.
EPO approach
Since the late 1980s the EPO has approached the patentability of computer implemented inventions on the basis that, while programs for computers are included in the items listed in Article 52(2), if the claimed subject matter has a technical character it is not excluded from patentability. For example, in Vicom,9 the EPO Technical Board of Appeal allowed a claim to a method of digitally processing an image, even though the processing was essentially carrying out the steps of an algorithm. The processing was considered to be technical and therefore the claim was not excluded because it related to a computer program or mathematical method as such. The first time an EPO Board of Appeal considered whether a computer program could be the subject of a patent per se was in the 1997 IBM/Computer Program Product cases.10 The Board considered the wording of Articles 52(2) and (3) and concluded that the legislators did not intend to exclude all computer programs from patentability, but only those which were programs for computers as such. Although all programs cause some modification in the behaviour of the hardware, the EPO decided that the necessary further technical character 9
Vicom/Computer-related invention (1986) T208/84, [1987] OJ EPO
10
might nevertheless be derived from the execution by the hardware of the instructions given by the software. In allowing patents for ‘‘a computer-readable medium having a program recorded thereon’’ and ‘‘a computer program product’’, the EPO concluded that a program was not excluded from patentability if, when run on a computer, it produced a further technical effect which went beyond the normal physical interactions between a program and a computer. Following the IBM decisions, the EPO therefore allowed claims to a computer program if, when running on a computer, the program was capable of bringing about a technical effect which went beyond the normal physical effects which resulted from the running of any program. Furthermore such claims were allowed whether the program was claimed by itself or as a record on a carrier. The Pension Benefits System Partnership case11 in 2000 marked another significant change to the EPO’s approach in assessing patentability. The application concerned a method claim and a product claim to a suitably programmed computer for a new method of controlling pension benefits using a computer system. The Board refused the method claim as being excluded matter as a method of doing business. As for the product claim, the Board of Appeal held that the computer system did define technical features and thus was not excluded from patentability by Article 52. However, the product claim was refused on the grounds of obviousness because the improvement was essentially an economic one which could not contribute an inventive step. This was the first time the EPO had regarded the form of claim (as opposed to its substance) as being of significance. A different Board of Appeal expressly disagreed with this new approach in Hitachi/Auction method.12 This case concerned a computerised method of carrying out a Dutch auction, in other words an auction in which the seller starts at a high price which is lowered until a bid is received. Once again the application included a product and a method claim. The Board of Appeal held that the presence in the claim of technical features such as a server, client computers and a network was sufficient to prevent the claims being excluded by Article 52. The Board treated method and apparatus claims identically but ruled that the issue of patentability of subject matter should only be addressed at the stage of considering inventive step, by considering features which contribute to a technical character. Applying this approach the Board concluded the application must be refused. There was no invention in automating the described way of carrying out a Dutch auction. In the subsequent Microsoft/Data Transfer13 case, the Board of Appeal reiterated the approach that any physical apparatus could form a claim which was capable of being patented. The Microsoft/Data Transfer application described a way of facilitating data exchange across different formats and it included method claims and a claim to a program on a computer-readable medium. The Board held that the method was implemented in a computer and this amounted to technical means sufficient to escape the prohibition in Article 52, following Hitachi. 11 12
14. T0935/97 and T1173/97.
463
13
(2000) T931/95. (2004) T258/03. (2006) T424/03.
464
computer law & security report 24 (2008) 461–464
The current practice of the EPO is contained in the EPO’s Guidelines14 for Examination. In particular, these underline the fact that, while ‘‘programs for computers’’ are included among the list of excluded items in Article 52(2), if the claimed subject matter has a technical character it is not excluded from patentability. The Guidelines summarise the test by stating Any claimed subject matter defining or using technical means is an invention within the meaning of Article 52(1). If the claimed subject matter does not have a prima facie technical character, it should be rejected under Articles 52(2) and (3). If the subject matter passes this prima facie test for technicality, the examiner should then proceed to the questions of novelty and inventive step. In assessing whether there is an inventive step, the examiner must establish an objective technical problem which has been overcome. The presence of such a technical contribution establishes that the claimed subject matter has a technical character and therefore is indeed an invention within the meaning of Article 52(1). If no such objective technical problem is found, the claimed subject matter does not satisfy at least the requirement for an inventive step because there can be no technical contribution to the art, and the claim is to be rejected on this ground.
5.
Conclusions
At the risk of exposing the author’s age, he recalls programming computers in the 1970s, at a time when memory was expensive and processing was slow. This gave rise to a need for a program that could efficiently sort data into, for example,
14
Guidelines for Examination in the European Patent Office, applicable as of 13 December 2007.
numerical or alphabetical order. If one accepts that developments in, for example, the pharmaceutical field can be worthy of patent protection, it is difficult to understand why someone who solves the data sorting problem should be treated any differently just because it is a computer program. Provided that the development meets the requirements applicable to all patents of newness and inventiveness, in the authors’ opinions developments in the computer software field should not be treated any differently, especially given the difficulties of relying on copyright to protect computer programs. Nevertheless the exclusions from patentability of Article 52(2) of the EPC are there, and must be addressed. While the EPO and UK tribunals both highlight the requirement for technicality for a claim relating to a computer program to be patentable, both systems interpret this condition in different ways. It is apparent from the Astron Clinica case that certain members of the judiciary are aware of the divergence in approaching the computer program exclusion in the UK and the EPO. This has been highlighted recently in the Symbian case where the UK IPO is appealing the High Court’s decision to grant a patent relating to the indexing of library functions to ensure operating stability even though the EPO has already granted Symbian a patent for the same invention with the same claims, subject to a single amendment to one of the claims. Given the current uncertainty in the UK tribunals over the patentability of computer software, inventors whose inventions include any software may be prudent to file directly with the EPO. Although this strategy may cost more initially, it should provide the inventor with a better opportunity of obtaining patent protection. Marcus Turle ([email protected]) and David Knight (David. [email protected]), Partners, Field Fisher Waterhouse LLP, London.