ANNEX I. Travaux préparatoires for the EPC 2000

In the year 2007 an adapted version of the European Patent Convention (EPC) entered into force. This new Convention is known as the EPC 2000. The EPC 2000 includes, among other things, amendments to Art. 52 EPC, which, as you know, plays an important role in computer-implemented inventions. In the end Art. 52(1) EPC was amended (introduction of the term “all fields of technology”) but Art. 52(2) EPC (list of non-inventions, inter alia “programs for computers”) remains unchanged. In particular, it was discussed whether the term “programs for computers” should be deleted from the list in Art. 52(2) EPC. The main argument for not deleting the term was that the possible regulation of patent protection for computer programs by EU law (rejected by the European Parliament on 6 July 2005) should not be anticipated. Below you will find an overview of the travaux préparatoires and of the decisive document.

Travaux préparatoires consist of a plurality of documents

The negotiations leading up to the EPC 2000 are recorded in travaux préparatoires (= official record of the negotiation). The travaux préparatoires consist of the following documents:

• 80 documents prepared by the European Patent Organisation (EPO), national delegations, and user groups. These documents form the basis of the preparatory work which took place mainly in the Administrative Council and in the Committee on Patent Law (body of the Administrative Council). The Administrative Council is one of the two organs of the EPO, the other being the EPO. The Council acts as the Office’s supervisory body and is composed of the representatives of the EPO member states.
• 50 documents submitted for discussion during the 10 days of the Diplomatic Conference in November 2000.
• Minutes of the meetings of the Administrative Council and the Committee on Patent Law.

In the figure below you see an overview about the negotiation process regarding Art. 52 EPC:

The decisive document is disclosed in the following in more detail. The document „Basic Proposal for the Revision of the EPC (MR/2/00)“ of the travaux préparatoires forms the most important reference document.

“Basic Proposal for the Revision of the EPC” regarding Art. 52 EPC

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).

The following is an extract from this document MR/2/00, page 43, wherein in the Explanatory remarks all the relevant preparatory documents are listed, thus enabling you to retrieve the legislative history of the provision. The documents of the Explanatory remarks are discussed further below.

MR/2/00: ARTICLE 52 EPC

Explanatory remarks (Preparatory documents: CA/PL 6/99; CA/PL PV 9, points 24-27; CA/PL PV 14, points 143-156; CA/100/00, pages 37-40; CA/124/00, points 12-16; CA/125/00, points 45-73)

1. Article 52(1) EPC has been brought into line with Article 27(1), first sentence, of the TRIPs Agreement with a view to enshrining “technology” in the basic provision of substantive European patent law, clearly defining the scope of the EPC, and making it plain that patent protection is available to technical inventions of all kinds.
2. In light of the new wording of Article 52(1) EPC, it may be queried whether the provisions of Article 52(2) and (3) EPC, which enumerate subject-matter or activities not to be regarded as inventions, are still needed.
3. The Committee on Patent Law and the Administrative Council have advocated the deletion of programs for computers from Article 52(2)(c) EPC. The EPO and the Boards of Appeal have always interpreted and applied the EPC in such a way that this exception in no way excludes appropriate protection for software-related inventions, ie inventions whose subject-matter consists of or includes a computer program. Indeed, more recent decisions of the Boards of Appeal (see T 1173/97 – Computer program product/IBM, OJ EPO 1999, 609) have confirmed that computer programs producing a technical effect, as a rule, are patentable subject-matter under the EPC.
4. Nevertheless, the point must be made that patent protection is reserved for creations in the technical field. This is now clearly expressed in the new wording of Article 52(1) EPC. In order to be patentable, the subject-matter claimed must therefore have a “technical character” or to be more precise – involve a “technical teaching”, ie an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means. 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. The same considerations apply to the assessment of computer programs. Thus, it will remain incumbent on Office practice and case law to determine whether subject-matter claimed as an invention has a technical character and to further develop the concept of invention in an appropriate manner, in light of technical developments and the state of knowledge at the time.
5. Article 52(4) EPC is deleted and transferred to Article 53 EPC (see explanatory remarks to Article 53(c) EPC).

In T 154/04, Reasons, point 8 it is inferred from point 4 above: “The Basic Proposal clearly confirms that patent protection should be available to technical inventions of all kinds (MR/2/00e, page 43, No. 1) and that the technical character is a mandatory requirement for any patentable invention.“