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European Patent Office

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Patents for software?Law and practice at the European Patent Office

www.epo.org


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Contents

3 Computer-implemented inventions

4 Patents for computer-implemented inventions:

how does society benefit?

8 The European patent grant procedure:

ensuring high-quality and legally sound patents

12 Examination practice at the EPO

20 In a nutshell

Computer-implemented

inventions

The term "software patent", although frequently used, is

misleading. At the European Patent Office (EPO) we talk about

computer-implemented inventions rather than software pat-

ents. A computer-implemented invention is one which involves

the use of a computer, computer network or other program-

mable apparatus, where one or more features are realised wholly

or partly by means of a computer program.

Under the European Patent Convention (EPC), a computer pro-gram claimed "as such" is not a patentable invention (Article

52 (2) (c) and (3) EPC). Inventions involving computer programs

that implement business, mathematical or similar methods,

but which do not produce any "further technical effect" (e. g.

because they solve a business problem rather than a technical

one), are not patentable under the EPC. The fact that a com-

puter program is involved does not automatically mean that

such inventions are patentable.

On the other hand, patents may be granted for computer-

implemented inventions which solve a technical problem in

a non-obvious manner.

As with all inventions, computer-implemented inventions are

patentable only if they meet strict patentability criteria. They

must have a technical character, be new and make an inven-tive technical contribution to the knowledge available at

the date on which the application was first filed (= the priority

date). This last requirement is relevant for deciding on the

inventive step or non-obviousness of an invention according

to the EPC.


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Patents for computer-

implemented inventions:

how does society benefit?

The growing impact of computer technology

Computer-implemented inventions are increasingly being used

in all fields of technology. A very large number of the patent

applications filed with the EPO relate to areas in which they are

used. Some like smart phones, computer games and digital

rights management systems are very visible to the public. Butthere are many other technologies that have gained in func-

tionality and efficiency thanks to computer-implemented inven-

tions. These include:

engine control systems using fuel-injection and clean-burn

technology

driver aids and safety devices in cars

reduced water and electricity consumption in domesticgoods such as washing machines, refrigerators and vacuum

cleaners

drug development

increased accuracy and use of medical imaging technology

first-aid tools such as the automatic defibrillators now

commonly seen in public places

In many cases the innovative part of a new product or processmay well lie in a computer program. The impact of these in-

ventions on our daily lives is growing, as are the advantages

to individuals and to society as a whole.


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Patents for innovators, consumers and society

The patent system does not exist solely for the benefit of inno-

vators. All of us profit from technological advances, not only

as consumers, but also as individuals living in an industrialised

society. Technological developments, facilitated by the patent

system, help create employment and revenue and thus con-

tribute to economic growth.

Patents promote innovation in two ways. Firstly, they allow

innovators to recoup their investment in R & D activities. If an

invention satisfies the strict criteria on patentability, the ap-

plicant is rewarded with a temporary exclusive right prevent-ing others (including competitors) from using the patented

invention without his consent, in return for public disclosure

of the invention. Researchers innovate in the knowledge that

they may be able to acquire protection for their inventive ideas.

These days, it is hard to imagine a business even contemplat-

ing putting its products on the market without adequate patent

protection, especially where high development costs and

start-up investment levels are involved. Very often, therefore,a patent is a vital element for successful commercialisation. It

is an essential incentive to innovate, and countless important

innovations have reached the marketplace with the help of

the patent system.

Secondly, the fact that all patent applications have to be pub-

lished at an early stage in the patenting process ensures that

the public has access to information about the latest innova-

tions. The publication of this vast flow of new ideas adds enor-

mously to societys knowledge base. The EPOs patent data-

bases are the largest in the world. Containing over 70 million

documents, they are available to the public free of charge on

the internet. A major source of technical information, they act

as an incentive to inventors to develop new solutions in addi-

tion to those already patented.

Patents and small businesses

Under the EPC, anybody can apply for a patent. No distinction

is made between individuals, small and medium-sized enter-

prises (SMEs) and big corporations. While it is true that larger

firms generally have greater financial means to cover the costs

of filing for a patent, there is little evidence to suggest that

SMEs do not profit from patents too. For many innovative SMEs

and start-ups with fewer financial resources and a smaller

market share, patents are often the only chance to defend theirposition in competition with their rivals. The planned intro-

duction of a unitary patent in the European Union is expected

to significantly cut costs and red tape for businesses seeking

to protect their inventions in Europe, and it is SMEs that stand

to benefit the most.


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The European patent grant

procedure: ensuring high-quality

and legally sound patents

Before a European patent can be granted, each patent appli-

cation is subjected to a thorough search and rigorous examina-

tion process by a panel of three members of the EPOs highly

trained staff. This ensures that only applications which fulfil the

strict requirements of the EPC are granted, and only true in-

ventions that merit protection are patented. Together with the

various possibilities for third parties to intervene in the proce-dure, this ensures that European patents are of a high quality

and are legally sound.

The search special situations

If it is found that all the subject-matter in a patent application

is excluded from patentability, it will not be possible to carry out

a meaningful search and the applicant will be informed thatno search report will be produced. The vast majority of such cases

are either refused by the EPO or withdrawn by the applicant.

If the application contains some subject-matter not excluded

from patentability, i. e. a technical teaching, the examiner may

consider this teaching to be so well known (in other words,

part of the common general knowledge) that it is not necessary

to provide a document to prove it. In such cases, the searchreport will either not cite a document, or a generic document

will be cited which shows that it was known to use conven-

tional technology to carry out non-technical activities.


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Along with the European search report, the EPO also publishes

a European search opinion, in which the examiner sets out his

objections to the application. This means that, at a very early

stage in the procedure, the EPO has the opportunity to indicate

that the claims are clearly not patentable, and state the rea-

sons why (for example, that the invention has a complete lack

of technical character, or lacks an inventive step).

Are patents granted for trivial inventions?

The expression "trivial patent" is both ambiguous and subjec-

tive. If used to refer to patents which third parties believe

should not have been granted for lack of novelty or inventivestep, legal remedies enabling these parties to challenge such

grants may be applied. Another factor to consider is that many

patented inventions may appear to be trivial or obvious with

the benefit of hindsight, although they did not seem so on the

date of filing of the application. Applications not meeting the

EPCs legal standards are refused by the EPO. If, however, an

application is found to satisfy the patentability requirements

and a patent is granted, the resulting national patents do notfall under the jurisdiction of the EPO. Under the EPC, disputes

concerning the validity and infringement of European patents

are subject to national law, and the final decision rests with

the national courts.

Do patent applications need to include program source code?

There is no legal requirement under the EPC for applicants tofile the source code of a program, and the EPO does not ask

them to do so. Nor does it examine such codes or publish them

as annexes to the patent application documents (the request

for grant, claims, description, drawings and abstract). The source

code is not necessary for the sufficient disclosure of a com-

puter-implemented invention. For examination and publication

purposes, the inventive concept must be disclosed in the

application in a manner sufficiently clear and complete for it

to be carried out by a person skilled in the art, for which dis-

closure of the source code is not required.

Far-reaching rights for third parties

The EPC allows third parties to monitor the grant procedure

and challenge decisions taken by the EPO, for instance if new

prior art (i. e. information already in the public domain) comes

to light. The options are as follows:

During the EPO procedure Inspection by third parties of published applications and

documents relating to their examination

Observations by third parties on pending applications

Oppositions by third parties to granted patents

Appeals by any party adversely affected by an EPO decision

in grant and opposition proceedings

There is no fee payable to inspect published applications (avail-able at www.epo.org/register) or to file observations. Parties

to opposition proceedings at the EPO are not required to have

any economic or legal interest in the patent. In other words,

anyone can file an opposition to a granted patent.

After the EPO procedure

Actions for revocation of European patents

(in the national courts)


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Examination practice at the EPO

Legal framework

The EPO is bound by the articles and rules of the European

Patent Convention (EPC), as adopted by the member states

of the European Patent Organisation and interpreted by the

EPOs boards of appeal (the independent judiciary of the

Organisation).

In accordance with this law, it examines patent applications

for inventions in all fields of technology in order to establish

whether they meet the patentability criteria of the EPC. Pat-ents are only granted for inventions that are new, involve an

inventive step and are susceptible of industrial application.

These principles also apply to computer-implemented inven-

tions.

The starting point is Article 52 of the EPC, which states

that a patent shall be granted for any invention in all fields

of technology, provided that the invention meets the otherrequirements for patentability and is not expressly excluded

from patent protection.


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The case law of the boards of appeal

The boards of appeal, which enjoy independence in their juris-

dictional activities, are responsible for reviewing the decisions

of the EPO in grant and opposition procedures. They interpret

the EPC in cases where a dispute arises, including questions of

what is or is not excluded, and why.

In the field of computer-implemented inventions the boards

have developed the interpretation of the EPC provisions relating

to the term "invention" in many cases, providing guidance on

what is and is not patentable.

According to established EPO practice in line with that juris-

prudence, computer-implemented inventions can be patented

if they involve an inventive technical contribution to the prior

art, irrespective of whether they are implemented by hardware

or software. They are not patentable if there is no technical

contribution to the prior art, or if there is such a contribution

but it is obvious.

Under the EPC there are two basic kinds of patent claim:

claims to a physical entity (product, apparatus)

claims to an activity (process, use)

Whether the process is carried out by means of special circuits

or a computer program was found to depend on economic

and technological factors. Patentability should not be denied

on the grounds that a computer program is involved.

Patent protection for technical creations

Whilst the EPC sets out the requirements for novelty, inventive

step and industrial application in some detail (Articles 54, 56

and 57 EPC), it does not contain a legal definition of the term

"invention". It has, however, been part of the European legal

tradition since the early days of the patent system that patent

protection should be reserved for technical creations. The sub-

ject-matter for which protection is sought must therefore

have a technical character or, to be more precise, must involve

a technical teaching, i. e. an instruction addressed to a techni-

cally skilled person as to how to solve a particular technical

problem (rather than, for example, a purely financial, commer-cial or mathematical problem) using particular technical

means. This requirement must be met in order for an inven-

tion not to be excluded from patentability.

Although the EPC does not define the term "invention", it

does contain a list of subject-matter or activities that are not

to be regarded as inventions. The list, which can be found in

Article 52 (2) EPC, includes "methods for doing business" and"programs for computers".

Under Article 52 (3) EPC, these exclusions have to be interpreted

narrowly. The subject-matter or activities on the list are only

excluded if the European patent application or patent relates

to them as such. Therefore, inventions having a technical char-

acter that can be implemented by computer programs are not

excluded.


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On the other hand, claims directed at business methods in

which technical means are neither defined nor used (i. e. busi-

ness methods "as such") are excluded from patentability

(Article 52 (2) (c) and (3) EPC). Where technical means are defined

or used, the appropriate consideration is one of whether there

is an inventive step involved in those features which do pos-

sess technical character.

Inventions involving computer programs that implement

business, mathematical or similar methods but which do not

produce any "further technical effect" (e. g. because they

solve a business problem rather than a technical one) are not

patentable under the EPC.

The words "further technical effect" are in quotation marks

here because there are inevitable physical effects of running

a computer program in terms of currents, voltages and

transistors switching, which would be regarded as the "normal

technical effect". What is meant by "further technical effect"

in the particular case of computer-implemented inventions is

what is achieved beyond this normal technical effect, suchas the controlled activation of explosive charges in an airbag

device. This manner of considering the "what" and "how"

of computer-implemented inventions is of key importance

to EPO practice.

Other examples of "further technical effects" might be faster

communication between two mobile phones with improved

quality of voice transmission, or more efficient memory man-agement. However, such claims are only allowed by the EPO if

they are based on a new and inventive technical process that

may be carried out by a computer program. The technical details

of the "how" and the "what" must be included in the disclosure.

However, while computer programs can be extremely com-

plex, this alone is not indicative of technical character, nor of

the presence of a further technical effect.

Important board of appeal decisions

Computer program product/IBM (T 1173/97): Sets out the

further technical effect. Found to be seminal by the later

G 3/08, though not when considering the difference be-

tween a program and that program on a carrier.

Two identities/Comvik (T 641/00): Technical but not inven-

tive. A SIM card having two identities (e. g. professional and

private). An invention consisting of a mixture of technical

and non-technical features and having technical character

as a whole is to be assessed with respect to the require-

ment of inventive step by taking account of all those featureswhich contribute to said technical character, whereas fea-

tures making no such contribution cannot support the

presence of inventive step.

Auction method/Hitachi (T 258/03): Technical but not in-

ventive. An auction method carried out over the internet,

characterised by the auction rules. In this case, it was con-

sidered that the technical problem allegedly solved by theapplication had not been solved but rather circumvented.

(It was also found that a method involving any technical

means whatsoever is to be considered an invention, i. e.

technical.)

(T = Decision of technical board of appeal;

G = Opinion of Enlarged Board of Appeal)


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As the case law developed, some applicants and other inter-

ested parties began to feel that the way computer-implement-

ed inventions were being treated was unclear, or even incor-

rect. In 2008 the President of the EPO therefore referred four

questions of law (case G 3/08) to the Enlarged Board of Appeal

for guidance.

The Enlarged Board handed down its opinion on the referral

in 2010. It found that divergence in jurisprudence over time

was a normal development in a changing world, and that the

practice of the EPO, while not the only one imaginable, was

predictable and reliable in its results. It made extensive refer-

ence to decision T 154/04 (Estimating sales activity/DunsLicensing Associates), which it considered a pragmatic and

useful approach for assessing subject-matter consisting of

a mix of features, some of which had technical character and

some not. The Board noted that it was "an elaborate system

(...) that the Boards are in general quite comfortable with" and

a "practicable system for delimiting the innovations for which

a patent may be granted".

The opinion noted that one question remained unanswered

by the case law, and that was whether a "computer-readable

storage medium" loses its technical nature if too generically or

functionally defined. However, the Board considered that it

was not necessary to answer this question in the absence of

supporting case law and where a working solution existed.

Hence, T 154/04 summarises the approach taken by the EPOwhen examining computer-implemented inventions. It takes

into account the effect of the list of non-inventions in Article

52 (2) EPC in determining whether claimed subject-matter

is inventive, acknowledges the evolution of the jurisprudence

of the EPO, and confirms its latest practice, according to which

only technical features can establish novelty and/or inventive

step.

Following this decision, the non-technical aspects of an inven-

tion may appear in the formulation of the technical problem

as a constraint that has to be met, but the same non-technical

aspects are excluded from the assessment of the inventive

step as they do not have a technical character. The assessment

of the inventive step then only takes into account the contri-

bution of the technical features and aspects of the invention,

even if these features and aspects relate to "a computer" only.

Some examples of grants and refusals

European patent EP 771 280 relates to an invention enabling

detection of the proper functioning of an ABS control unit.It was granted by the EPO, because what the unit "does" has

technical character.

European patent application EP 1 125 233 relates to a method

of scheduling tasks in an industrial process. It was rejected by

the EPO.

European patent application EP 1 022 691 relates to a methodof responding by a mailer to a notice from a postal service that

a mail piece addressed to an addressee is undeliverable. It was

rejected by the EPO.


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In a nutshell

The EPC as interpreted by the boards of appeal enables

and obliges the EPO to grant patents for many inventions

in which software makes a technical contribution, includinginventions for:

allowing a novel and inventive computer-controlled

process to operate a robot arm

enhancing a graphic display

controlling data storage between memories

routing diverse calls through a telephone exchange

in response to demand

The things that are "done" are the "further technical effects".

If the thing done lies in the excluded area, it is of no conse-

quence to the assessment of inventive step.

In the USA, patents have been granted for other processes,

particularly where related to retailing. In Europe, these inven-

tions are only patentable if they use a computer network,otherwise they would be excluded.

If the only thing "done" by the computer network is to enable

a business method, then the subject-matter is not inventive,

as the thing being "done" would, in isolation, be excluded. The

fact that a specific retailing process would give rise to a par-

ticular implementation is self-evident. A technically skilled

person charged with such an implementation would, however,need to be given the necessary information about the retail-

ing process. Its aspects do not contribute to the inventive step.

The rigorous examination practice of the EPO ensures that

only applications meeting the patenting requirements of the

EPC are granted.


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Published and edited byEuropean Patent OfficeMunichGermany EPO 2012

Responsible for the contentRainer OsterwalderDirectorMedia Relations

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