• Is Saga of software Patentability in Europe Coming to a Conclusion?

    The President of the European Patent Office has referred four questions to the EPO Enlarged Board of Appeal relating to the patentability of computer programs (see box on page 9 ). It is hoped that this referral will introduce greater certainty and harmony to the way this issue is handled throughout Europe. But is this a realistic hope? The patenting of computer programs has long been a controversial issue. Part of the controversy has arisen because at the time the European Patent Convention was drafted, in the late 1960s and early 1970s, computer programs were seen to be predominantly abstract mathematical methods and to that extent were excluded from patentability. However, this exclusion was limited to computer programs ‘as such’, which has in general been interpreted in both the UK and the EPO to allow an invention involving a computer program to escape the exclusion if the invention provides a technical contribution.

    Both in the UK and the EPO, the way of determining whether a computerimplemented invention provides a technical contribution has developed over the years. In particular, practice in the UK has changed to take account of decisions by the Patents Court and the Court of Appeal, whereas practice in the EPO has followed decisions by the Technical Boards of Appeal. This has resulted in the approach employed in the UK Patent Office (now called the UK Intellectual Property Office or UKIPO) and the EPO varying to differing degrees at different times.

    At present, the approach adopted by the UKIPO to determine if a claim is excluded from patentability follows a four stage test:

    • properly construe the claim
    • identify the actual contribution
    • ask whether it falls solely within any of the subject matter exclusions
    • check whether the actual or alleged contribution is actually technical in nature

    It will be appreciated that determining the actual contribution must have some overlap with the analysis performed when assessing inventive step. But in the UK the test for patentable subject matter is quite distinct from that for inventive step. This is at least in part because the UK Courts take the view that the exclusion was introduced to exclude some inventions from patentability, and therefore it is important to determine as a question of law whether an invention was excluded, whereas assessing whether an invention involves an inventive step concerns a question of fact (i.e. “would it be obvious to a person of ordinary skill in the art?”).

    In contrast, the EPO has progressively merged the examination of patentable subject matter and inventive step. This has culminated in recent Appeal Board decisions which state that the computer program exclusion may be avoided by simply claiming the computer program running on a computer or stored on a storage medium (see particularly T 0424/03 MICROSOFT/clipboard formats I), but also state that inventive step must be assessed on purely the technical features of the claim (see for example T 0154/04 DUNS LICENSING ASSOCIATES/estimating sales activity). This could be viewed as saying the test for patentable subject matter is a formal test relating to the manner in which an invention is claimed, whereas the test for inventiveness is a substantive test.

    In the recent Symbian decision by the UK Court of Appeal (8th October 2008), the current EPO approach was rejected because any computer program could avoid the exclusion simply by being claimed on a carrier. This reflects the view by the UK Courts that the exclusion was intended to be a substantial hurdle, not a formal one.

    Turning to the questions referred by the President of the EPO to the Enlarged Board of Appeal, in our view they do not call into question the fundamental point that a computer program involving a technical contribution may be patentable. Rather, the questions address the relevance of the form of the claim (questions 1 and 2(A)) and how to determine whether a computer program provides a technical contribution (questions 2(B), 3 and 4). It is hoped that the answers to the referred questions will clarify:

    1. The type of technical contribution which results in a computer program having patentable subject matter. 2. The extent to which patentability of subject matter should be treated separately from inventive step.

    Ideally, what is wanted is an approach to assessing whether a computer program involves patentable subject matter which is reasonably straightforward to apply and which the Courts throughout Europe are prepared to adopt. In practice, this is going to be difficult to achieve unless the Enlarged Board is prepared to address the concerns of the Courts of the national jurisdictions.

    Comment

    It may appear that the odds are stacked against the Enlarged Board decision harmonising the approach to the computer program exclusion throughout Europe. Nevertheless, the fact that the EPO and the UK Courts both consider that the key question is whether the computer program provides a technical contribution does offer some hope that an approach may be found which allows harmony at least between the UK and the EPO. Further, even if the approaches to assessing validity remain different, there is some hope that patents relating to computer programs granted by the EPO will be upheld by the UK Courts