Even though the European Patent Convention and its Article 52 excludes the patentability of programs for computers as such, that does not mean that all inventions including some software are de jure not patentable. While according to the the European Patent Register in 2005 85% of the Patent applications in the field of electric digital data processing (G06F in the International Patent Classification) did not give rise to a granted patent but were refused on various grounds or withdrawn by the applicant in response to the search report or substantive objections of the European Patent Office (EPO), some of them have been granted by the EPO since the '80s. At present, applications in this field account for 7% of the total number of applications to the EPO, but only for about 2% of all granted patents. The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention (EPC), is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. ... In general terms, an invention is an object, process or technique which displays an element of novelty. ... Computer software (or simply software) refers to one or more computer programs and data held in the storage of a computer for some purpose. ... Look up De jure in Wiktionary, the free dictionary De jure (in Classical Latin de iure) is an expression that means based on law, as contrasted with de facto, which means in fact. The terms de jure and de facto are used like in principle and in practice when one... Within the context of a national or multilateral body of law, an invention is patentable or, in other words, it satisfies the patentability requirements if it meets the legal conditions to be granted a patent. ... A patent is a set of exclusive rights granted by a state to a person for a fixed period of time in exchange for the regulated, public disclosure of certain details of a device, method, process or composition of matter (substance) (known as an invention) which is new, inventive, and... The International Patent Classification (IPC) is a hierarchical patent classification system published by the World Intellectual Property Organization (WIPO). ... The European Patent Organisation (EPO or EPOrg in order to distinguish it from the European Patent Office, which is the main organ of the organisation) is a public international organisation set up by the European Patent Convention. ... The 1980s decade refers to the years from 1980 to 1989, inclusive. ...

Article 52 EPC

The European Patent Convention (EPC), Article 52, paragraph 2, excludes from patentability, in particular

1. discoveries, scientific theories and mathematical methods;
2. aesthetic creations;
3. schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
4. presentations of information. (emphasis added)

Paragraph 3 then says:

(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such. (emphasis added)

Many believe that, for decades, this "as such" has been interpreted as meaning "as long as an idea in the program (and anything in paragraph 2) is claimed", but this interpretation has not been followed by the Boards of Appeal of the EPO, and the EPO has granted many patents, which qualify as software patents under certain definitions of the expression, since the '80s. The expression "software patent" is however not used by the European Patent Office and its Boards of Appeal. Decisions of the first instances of the European Patent Office (EPO) can be appealed, i. ...

According to Peter Prescott QC (sitting as Deputy Judge in CFPH LLC v Comptroller-General of Patents, Designs and Trade Marks, July 21, 2005 [1], paragraph 35), "[t]he reason why computer programs, as such, are not allowed to be patented is (...) because at the time the EPC was under consideration it was felt in the computer industry that such patents were not really needed, were too cumbersome (it was felt that searching the prior art would be a big problem), and would do more harm than good.". According to him, the exclusions do not constitute a genus, or logical class (paragraph 21); they were excluded for policy reasons, and more precisely not all for the same policy reason (paragraphs 30 and 31). Queens Counsel (postnominal QC), during the reign of a male Sovereign known as Kings Counsel (KC), are barristers or, in Scotland, advocates appointed by letters patent to be one of Her Majestys Counsel learned in the law. They do not constitute a separate order or degree of... July 21 is the 202nd day (203rd in leap years) of the year in the Gregorian Calendar, with 163 days remaining. ... 2005 (MMV) was a common year starting on Saturday of the Gregorian calendar. ... Computer industry is a collective term used to describe the whole range of businesses involved in developing computer software, designing computer hardware, the manufacture of computer components and the provision of information technology services. ... In most patent laws, prior art or state of the art is all information that has been disclosed to the public in any form before a given date. ... In biology, a genus (plural genera) is a grouping in the classification of living organisms having one or more related and morphologically similar species. ... A policy is a plan of action for tackling issues. ...

His opinion is in sharp contrast with the case law of the Boards of Appeal of the EPO, according to which the list of exclusions of Art. 52(2) EPC is non-exhaustive and forms a logical group of exclusions that are all either abstract or non-technical (Case Law of the Boards of Appeal of the European Patent Office, Fourth Edition, page 1 [2] - pdf, 2.34 MB). Case law (precedential law) is the body of judge-made law and legal decisions that interprets prior case law, statutes and other legal authority -- including doctrinal writings by legal scholars such as the Corpus Juris Secundum, Halsburys Laws of England or the doctinal writings found in the Recueil Dalloz... // An abstraction is an idea, concept, or word which defines the phenomena which make up the concrete events or things which the abstraction refers to, the referents. ...

Patentability under European Patent Office case law

It should be noted when reading this section, that the EPO decisions are "persuasive, not prescriptive" (Peter Prescott QC , July 21, 2005 [1], paragraph 56) and that the Board of Appeals is part of the EPO (Paragraph 60) and so also "persuasive, not prescriptive". Hence it follows that the case law in this section is not binding on the national patent courts, rather it is a guide to them. "So, although we should pay careful attention to EPO decisions, and the decisions of other Convention courts, we are not bound to follow them blindly." (Peter Prescott QC from Paragraph 56).

Like the other parts of the paragraph 2, computer programs are open to patenting to the extent that they provide a technical contribution to the prior art. In the case of computer programs and according to the case law of the Boards of Appeal, a technical contribution typically means a further technical effect that goes beyond the normal physical interaction between the program and the computer. Decisions of the first instances of the European Patent Office (EPO) can be appealed, i. ...

Though many argue that there is an inconsistency on how the EPO now applies Article 52, the practice of the EPO is fairly consistent regarding the treatment of the different elements of Article 52(2). A mathematical method is not patentable, but an electrical filter designed according this method would not be excluded from patentability by Article 52(2) and (3).

According to the jurisprudence of the Boards of Appeal of the EPO, a technical effect provided by a computer program can be, for example, a reduced memory access time, a better control of a robotic arm or an improved reception and/or decoding of a radio signal. It does not have to be external to the computer on which the program is run; reduced hard disk access time or an enhanced user interface could also be a technical effect.

Patentable subject-matter test

Rather recently, a shift occurs in the case law. The "contribution approach", used to assess what was regarded as an invention within the meaning of Art. 52(1) and (2), was dropped. According to the "contribution approach" (see for instance T 52/85), the claimed subject-matter did not concern an invention within the meaning of Article 52(1) EPC when no contribution was made in a field not excluded from patentability. The "contribution approach" was a disguised inventive step assessment. Recent decisions, such as T 258/03 [3], have made it clear that the contribution approach was no longer applicable. Indeed The inventive step and non-obviousness reflect a same general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive, i. ...

"The structure of the EPC (...) suggests that it should be possible to determine whether subject-matter is excluded under Article 52(2) EPC without any knowledge of the state of the art (including common general knowledge)" (T 258/03, Reasons 3.1).

It now suffices that a physical entity or activity involves technical means to be considered as an invention within the meaning of Article 52(1) EPC. The state of the art is the highest level of development, as of a device, technique, or scientific field, achieved at a particular time. ...

But the patentable subject matter test of Article 52(2) and (3) is only the first step towards patentability. Computer programs can also be refused and are often refused on the ground of lack of inventive step, which can be relatively easier to assess in certain cases. As a Board of appeal put it in T 258/03 (Reasons 4.6) in relation to the fact that the "contribution approach" was no longer applicable, Within the context of a national or multilateral body of law, an invention is patentable or, in other words, it satisfies the patentability requirements if it meets the legal conditions to be granted a patent. ...

"[we are] aware that [our] comparatively broad interpretation of the term "invention" in Article 52(1) EPC will include activities which are so familiar that their technical character tends to be overlooked, such as the act of writing using pen and paper. Needless to say, however, this does not imply that all methods involving the use of technical means are patentable. They still have to be new, represent a non-obvious technical solution to a technical problem, and be susceptible of industrial application."

Writing may refer to two activities: the inscribing of characters on a medium, with the intention of forming words and other constructs that represent language or record information, and the creation of material to be conveyed through written language. ... A ballpoint pen A pen is a writing instrument which applies ink to some surface. ... Piece of paper Paper is a thin, flat material produced by the compression of fibers (or fibres). ...

Inventive step test

The broad interpretation of the term "invention" in the patentable subject-matter test, as used by the Boards of Appeal, has come with an adjustment of the case law relating to the inventive step requirement. It has now become clear that any non-technical feature, i.e. a feature from a field excluded from patentability under Art. 52(2), cannot be taken into account for the assessment of inventive step. Likewise, the "state of the art" (used as the starting point from the inventive step assessment) should be construed as meaning the "state of technology" (T 172/03 [4]), and the person skilled in the art is the person skilled in the relevant field of technology (T 641/00 [5]). Fields excluded under Art. 52(2) are not considered part of the technology for the assessment of inventive step.

Thus an expert in marketing or insurance policies for instance cannot be chosen as the fictional person skilled in the art, while a computer hardware or memory management expert may be chosen as the reference fictional person. This means that the mere implementation of a business method on a computer or computer network rarely involves an inventive step, while improving a computer-assisted industrial process or providing a more efficient memory management within a computer may involve an inventive step. It has been suggested that Product marketing be merged into this article or section. ... Insurance, in law and economics, is a form of risk management primarily used to hedge against the risk of potential financial loss. ... Computer hardware is the physical part of a computer, as distinguished from the computer software or computer programs and data that operate within the hardware. ... Memory management is the act of managing computer memory. ... An industry is generally any grouping of businesses that share a common method of generating profits, such as the movie industry, the automobile industry, or the cattle industry. It is also used specifically to refer to an area of economic production focused on manufacturing which involves large amounts of capital...

Relevant decisions

In chronological order (with date of decisions).

• T 208/84, VICOM [6] - July 15, 1986
• T 26/86, Koch and Sterzel, X-Ray apparatus [7] - May 21, 1987
• T 38/86, IBM, Text processing [8] - February 14, 1989
• T 52/85, IBM [9] - March 16, 1989
• T 158/88, Siemens [10] - December 12, 1989
• T 769/92, Sohei [11] - May 31, 1994
• T 1173/97, IBM [12] (on the "further technical effect") - July 1, 1998
• T 931/95, Pension Benefit System [13] - September 8, 2000
• T 641/00, Comvik, Two identities [14] - September 26, 2002
• T 258/03, Hitachi, Auction Method [15] - April 21, 2004
• T 914/02, Nuclear core loading arrangement [16] - July 12, 2005

July 15 is the 196th day (197th in leap years) of the year in the Gregorian Calendar, with 169 days remaining. ... 1986 (MCMLXXXVI in Roman) is a common year starting on Wednesday of the Gregorian calendar. ... May 21 is the 141st day of the year in the Gregorian calendar (142nd in leap years). ... 1987 (MCMLXXXVII) is a common year starting on Thursday of the Gregorian calendar. ... February 14 is the 45th day of the year in the Gregorian Calendar. ... 1989 (MCMLXXXIX in Roman) is a common year starting on Sunday of the Gregorian calendar. ... March 16 is the 75th day of the year in the Gregorian Calendar (76th in Leap years). ... December 12 is the 346th day (347th in leap years) of the year in the Gregorian calendar, with 19 days remaining. ... 1989 (MCMLXXXIX in Roman) is a common year starting on Sunday of the Gregorian calendar. ... May 31 is the 151st day of the year in the Gregorian calendar (152nd in leap years), with 214 days remaining. ... 1994 (MCMXCIV in Roman) was a common year starting on Saturday of the Gregorian calendar, and was designated the International year of the Family. ... July 1 is the 182nd day of the year (183rd in leap years) in the Gregorian Calendar, with 183 days remaining. ... 1998 (MCMXCVIII in Roman) is a common year starting on Thursday of the Gregorian calendar, and was designated the International Year of the Ocean. ... September 8 is the 251st day of the year (252nd in leap years). ... This article is about the year 2000. ... September 26 is the 269th day of the year (270th in leap years) in the Gregorian Calendar, with 96 days remaining. ... 2002 (MMII) was a common year starting on Tuesday of the Gregorian calendar. ... April 21 is the 111th day of the year in the Gregorian calendar (112th in leap years). ... 2004 (MMIV) was a leap year starting on Thursday of the Gregorian calendar. ... July 12 is the 193rd day (194th in leap years) of the year in the Gregorian Calendar, with 172 days remaining. ... 2005 (MMV) was a common year starting on Saturday of the Gregorian calendar. ...

Enforceability before national courts

The case law of the EPO Boards of Appeal is not binding on the member states. The case law is not even binding on the first instance departments of the EPO, if not in the same, identical case with the same evidence and legal facts at hand. Different national courts and different Examining Divisions of the EPO acting on different cases may take a different view of patentability, especially under Art. 52(2) EPC. A European patent on a computer-implemented invention, like each and every European patent no matter what it relates to, may therefore be issued by the European Patent Office, but subsequently it may potentially be not upheld in a patent infringement lawsuit or a revocation proceeding before a national court. Likewise, during an opposition procedure before the EPO, reviewing the case at the request of a third party (opponent), the patent may be revoked. In law, a patent infringement occurs when the subject-matter claimed in a patent has been utilized by someone other than the rightholder, without the owners approval or in disagreement with the terms of use given by the owner. ... The opposition procedure before the European Patent Office (EPO) is a post-grant inter partes procedure intended to allow any European patent to be centrally opposed if it was wrongly granted. ...

So far there does not appear to have been any case before a national court in Europe where infringement of a software patent has been proved and damages have been awarded. This is in stark contrast to the United States.

However, there have been a few court cases where the validity or not of a patent involving software has been the question, where in some European countries a national court has ruled either that a particular patent is valid (e.g. Germany); or that other patents involving software could be (e.g. UK).

In Germany in the case Logikverifikation (13 December 1999), the German Federal Court (German: Bundesgerichtshof or BGH) ruled on a case involving a European patent claiming a computer-implemented invention, namely a "method for hierarchical logic verification of highly-integrated circuits". Going against the run of previous case law, it overruled the German Federal Patent Court (German: Bundespatentgericht or BPatG), and came to the conclusion that the claimed subject-matter did properly meet the 'technical' requirement, was not excluded from patentability and therefore the patent should be allowed. BPatG objections were also overruled in the decisions Sprachanalyseeinrichtung (German BGH, 11 May 2000) and Suche fehlerhafter Zeichenketten (German BGH, 17 October 2001) [17]; but it should be remembered that in the civil law tradition of mainland Europe legal precedent, as well as the legal precedent before the European Patent Organisation, does not necessarily acquire the same formally binding character that it assumes in the common law traditions typical of most English-speaking countries. December 13 is the 347th day of the year (348th in leap years) in the Gregorian calendar. ... 1999 (MCMXCIX) was a common year starting on Friday, and was designated the International Year of Older Persons by the United Nations. ... The Bundesgerichtshof or BGH (German for federal court) is the highest Germany for civil and criminal lawsuits. ... May 11 is the 131st day of the year in the Gregorian Calendar (132nd in leap years). ... This article is about the year 2000. ... October 17 is the 290th (in leap years the 291st) day of the year according to the Gregorian calendar. ... 2001: A Space Odyssey. ... Civil law is a codified system of law that sets out a comprehensive system of rules that are applied and interpreted by judges. ... This article concerns the common-law legal system, as contrasted with the civil law legal system; for other meanings of the term, within the field of law, see common law (disambiguation). ...

Directive on the patentability of computer-implemented inventions

Main article: EU Directive on the Patentability of Computer-Implemented Inventions. The European Union (EU) Directive on the patentability of computer-implemented inventions (2002/0047/COD) was a proposal for an EU law which aimed to harmonise EU national patent laws and practices, which involved the granting of patents for computer-implemented inventions provided they meet certain criteria. ...

Proposed in 2002, one motivation at least for the controversial draft EU Directive on the Patentability of Computer-Implemented Inventions was to have been to establish common practice for the national courts; and, in cases of doubt as to its interpretation, to have created a requirement for national courts of last instance to seek a ruling from the European Court of Justice. Even though Switzerland for instance is a member of the European Patent Organisation but not a member of the European Union, the EPO also signalled that it would have been likely to adjust its practice, if necessary, to conform with whatever text had finally emerged from the EU legislative procedure, 2002 (MMII) was a common year starting on Tuesday of the Gregorian calendar. ... The European Court of Justice (ECJ) is formally known as the Court of Justice of the European Communities, i. ...

However, the directive became highly controversial, drawing increasing legislative notoriety to this area of European law. Proponents of the Directive claimed its purpose was to clarify the meaning of Article 52, by consolidating existing EPO practice. Opponents claimed the Directive would dismantle perceived more stringent restrictions against software patenting employed or employable by national courts, and lead to an increased assertion of patents on software Union-wide across the EU. After a history of procedural wrangling, and sustained lobbying and publicity efforts from both sides, the Directive, which had largely been supported by the European Commission and most member-state governments in contrast with their the national parliaments, was overwhelmingly rejected by the European Parliament on 6 July 2005, terminating the legislative procedure. The European Commission (formally the Commission of the European Communities) is the executive body of the European Union. ... The European Parliament is the parliamentary body of the European Union (EU), directly elected by EU citizens once every five years. ... July 6 is the 187th day of the year (188th in leap years) in the Gregorian Calendar, with 178 days remaining. ... 2005 (MMV) was a common year starting on Saturday of the Gregorian calendar. ...

Final interpretation of the law in this area thus continues to be the responsibility of national courts, following national case-law. A decisive supra-national authority for European patent law cases could be created under either proposals for the Community patent or the European Patent Litigation Agreement. As of early 2006 these are the subject of a public consultation by the EU Commission, preparatory to new expected legislative activity. The Community Patent, also known as the European Community Patent or EC patent, is a patent law measure being debated within the European Union, which would allow individuals and companies to obtain a unitary patent throughout the European Union. ... The draft European Patent Litigation Agreement (EPLA), or formally the Draft Agreement on the establishment of a European patent litigation system, is a proposed patent law agreement aimed at creating an optional protocol to the European Patent Convention (EPC) which would commit its signatory states to an integrated judicial system... 2006 (MMVI in Roman) is a common year starting on Sunday of the Gregorian calendar. ...

References

• Keith Beresford, Patenting Software Under the European Patent Convention, Sweet & Maxwell, 2000. ISBN 0-752-006339.
• European Patent Office, Case Law of the Boards of Appeal of the European Patent Office, Fourth Edition, 2002, European Patent Office DG3 - especially sections I.A.1, I.A.1.1 and I.A.1.2 on pages 1 to 8, (2.4 Mb pdf document- pdf pages 31 to 38)

British publisher joined the Thomson Organization in about 1987. ...

See also

• Software patent
• Software patent debate
• Software patents under TRIPs Agreement
• Software patents under the Patent Cooperation Treaty
• Software patents under United Kingdom patent law

Software patents and patents on computer-implemented inventions (CII) are a class of patents and one of many legal aspects of computing. ... This article or section contains information that has not been verified and thus might not be reliable. ... The WTOs Agreement on Trade-Related Aspects of Intellectual Property Rights or TRIPs Agreement, and particularly its Article 27, and whether software and computer-implemented inventions are considered as a field of technology are important elements in the discussion of the international legal framework of the patentability of software... As to software patents, there is almost nothing in the Patent Cooperation Treaty that relates to this subject. ... Globally, the extent to which patent law should allow new patents related to software (software patents) is controversial (see software patent debate). ...

External links

For more external links, including links to lobbying organizations, see Software patent debate. A lobby can be: An entryway or waiting area, such as a foyer, from the Latin word lobium, or vestibule. ... This article or section contains information that has not been verified and thus might not be reliable. ...

• Article 52 European Patent Convention (defining the patentability of Software in Europe)
• "Computer-implemented Inventions and Patents, Law and Practice at the European Patent Office", EPO brochure (pdf document, 400KB)
• EPO examination guidelines: Computer programs
• Microsite concerning the patentability of Computer Implemented Inventions (CII) and their relevance to the EPO

• Explanation of the EPO case law in this field, written by European patent attorney Arnoud Engelfriet
• Prof. Lenz: Interpretation of Art 52 of the European Patent Convention regarding the question to what extent software is patentable (translation from German)