The bar for patenting software is generally higher than for traditional technology. This is mainly due to the fact that “programs for computers” and “mathematical methods” are not considered to be inventions under a legal provision in the European Patent Convention (EPC). This is the intention of the legislator and a political decision. Nevertheless, it is possible to patent software. This whitepaper provides an insight into how software respectively computer-implemented inventions (CII) are dealt with at the European Patent Office (EPO). The information is mainly based on the decision G1/19 of the EPO’s Enlarged Board of Appeal issued 2021. This decision is an all-out attack on CII and provides a good basis for an inside view into the software patenting at the EPO.
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I. Provisions of the European Patent Office
The basic provisions for computer implemented inventions and all other inventions are set out in Articles 52 and 56 EPC (EPC = European Patent Convention). An issue for computer implemented inventions is that according to Articles 52(2) and Art. 52(3) EPC “programs for computers” as such are not regarded as inventions. In the following chapter, these Articles are examined in more detail, with the information is based on the Enlarged Board of Appeal decision G1/19, points 24 to 27.
The first basic article of the EPC re patentability
Article 52(1) EPC:
European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
“All fields of technology” and “Invention” of Art. 52(1) EPC
- The reference to “all fields of technology” was introduced in the course of the EPC’s revision (EPC 2000) to bring Article 52 EPC into line with Article 27 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The amendment makes clear that patent protection is reserved for creations in the technical field (see OJ EPO Special edition 4/2007, 48).
- The claimed subject-matter must have a “technical character”, or, more precisely, involve a “technical teaching”, i.e. an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means (Please see ANNEX I: Basic Proposal for the Revision of the EPC, document MR/2/00, page 43, no. 4). It is on this understanding of the term “invention” that the patent granting practice of the EPO and the jurisprudence of the Boards of Appeal are based. In other words, the “technical character” is an implicit requisite of an “invention” within the meaning of Article 52(1) EPC.
- The term “all fields of technology” expresses the intent of TRIPS not to exclude from patentability any technical inventions, whatever field of technology they belong to, and therefore, in particular, not to exclude programs for computers as mentioned in and excluded under Article 52(2)(c) EPC (T 1173/97, OJ EPO 1999, 609, Reasons, point 2.3).
- The Basic Proposal for the Revision of the EPC explicitly states that the above considerations on the technical character of inventions apply to the assessment of computer programs.
Non-exhaustive list of “non-inventions”
Article 52(2) EPC contains a non-exhaustive list of “non-inventions”, i.e. subject-matter which is not to be regarded as an invention within the meaning of Article 52(1) EPC (Please see ANNEX II: T 154/04, DUNS LICENSING ASSOCIATES, OJ EPO 2008, 46, Reasons, points 6, 8).
Article 52 EPC:
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
presentations of information.
The list includes “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers” (Article 52(2)(c) EPC). Even though the “non-inventions” in Article 52(2)(c) EPC cover a broad range of exclusions, they have in common that they refer to activities which do not aim at any direct technical result but are rather of an abstract and intellectual character (T 22/85, OJ EPO 1990, 12, Reasons, point 2).
In other words, based on this list of “non-inventions”, additional conditions have to be fulfilled for patenting software-related inventions compared to inventions in, for example, electrical engineering or mechanical engineering.
Course of EPC 2000 deletion of programs for computers was considered
The negotiations leading up to the EPC 2000 are recorded in travaux préparatoires (= official record of the negotiation). The document „Basic Proposal for the Revision of the EPC (MR/2/00)“ of the travaux préparatoires forms the most important reference document. The document Basic Proposal for the Revision of the EPC (MR/2/00) was drawn up by the Administrative Council and addresses the Revision Conference for consideration. The document was issued on October 13, 2000. MR/2/00 is hence – as part of a subsequent agreement between the contracting states concerning the EPC – a valid instrument for construing the Convention according to the traditional rules of interpretation (see decision G 5/83 (supra), Reasons No. 5, rule (4), and the corresponding Article 31 of the Vienna Convention on the Law of Treaties of 1969; T 154/04, Reasons, point 8).
In the year 2007 an adapted version of the European Patent Convention (EPC) entered into force. This new convention is called EPC 2000. The EPC 2000 comprises inter alia amendments regarding Art. 52 EPC whereby this article, as you know, plays a significant role in computer-implemented inventions.
The „Basic Proposal for the Revision of the EPC (MR/2/00)“ was issued before the final conference of the contracting states to revise the 1973 EPC. In the MR/2/00 the Committee on Patent Law and the Administrative Council has advocated the deletion of programs for computers from Article 52(2)(c) EPC!
Nevertheless, in the final conference of the contracting states to revise the 1973 EPC it was decided that Art. 52(1) EPC has to be amended (introducing the term “all fields of technology”) but Art. 52(2) EPC (list of non-inventions, inter alia “programs for computers”) remains unchanged. The main argument for not deleting the term was that the possible regulation of patent protection for computer programs by EU law (rejected on 6 July 2005 by the European Parliament) should not be anticipated. At the end, the regulation of patent protection for computer programs was rejected on 6 July 2005 by the European Parliament.
Subject-matter or activities “as such”
Article 52(3) EPC limits the exclusion from patentability of the subject-matter and activities referred to in Article 52(2) EPC to “such subject-matter or activities as such”.
Article 52 EPC:
(3) Paragraph 2 shall exclude the patentability of the subject-matter 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.
This limitation is understood as a bar to a broad interpretation of the “non-inventions” listed in Article 52(2) EPC (G 2/12, OJ EPO 2016, A27, Reasons, point VII.2(3)(b), penultimate paragraph, referring to T 154/04, Reasons, point 6).
As soon as in a computer implemented inventions a technical feature is claimed, then it is no longer regarded as a non-invention “as such”. This is called the “any hardware approach”.
In other words, Art. 52(3) EPC provides the possibility to apply for a patent for software-related inventions.
Inventive step
Article 56 EPC gives a negative definition of the “inventive step” required under Article 52(1) EPC, by setting out that an invention shall be considered as involving an inventive step “if, having regard to the state of the art, it is not obvious to a person skilled in the art”. In order to assess inventive step in an objective and predictable manner, the so-called “problem-solution approach” was developed, consisting of the following stages:
(i) determining the “closest prior art”;
(ii) assessing the technical results (or effects) achieved by the claimed invention when compared with the “closest prior art” determined;
(iii) defining the technical problem to be solved, the object of the invention being to achieve said results; and
(iv) considering whether or not the claimed solution, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person (see, for example, Case Law of the Boards of Appeal, 9th ed. 2019, I.D.2).
