Software-Related Patents:
European Patent Convention
copyright 1997, 1998 Donald M. Cameron, Aird & Berlis
with assistance from Dr. Robert Naismith of Cruikshank & Fairweather, Glasgow,
Scotland, U.K.
Contents
The Convention on the Grant of European Patents , commonly known as the
European Patent Convention ("EPC"), was set up by the Council of Europe and is
open to European countries both inside and outside the European Economic Community
("EEC"). The EPC establishes a single procedure for granting patents for
subsequent registration in the national Contracting States and establishes certain
standard rules governing those patents.
A European patent, when registered in a national state, has the effect of a national
patent in each of the designated EPC contracting states and is subject to the same
conditions as a national patent granted by that State. The basic procedure to obtain a
European patent is as follows:
An applicant files a single patent application, in one of the three official languages
(English, French or German).
The application can be filed directly with the European Patent Office (EPO), or at the
national Patents Offices from where it is transmitted to the EPO.
The application designates which national patents are required and requests a search be
performed.
The EPO examines the application for formalities, a prior-art search is performed and a
search report is sent to the applicant.
The application and search report are published by the EPO.
After publication, the applicant can request substantive examination at the EPO. After
this examination, either the application is rejected or a European patent is granted.
The specification as granted is published in the language filed but with translations
of the claims into all three official EPC languages and, after grant of the European
patent, the European patent is registered in the desired designated national states to
have the effect of a national patent, but the specification must be translated into the
local language of that state (i.e. Italian for Italy).
After the European patent has been granted, an opposition must be filed within 9 months
of the date of grant. The result of the opposition can be appealed to the Board of
Appeal. In nearly all countries, an opposed patent will result in a stay of
litigation proceedings with the notable exception of the United Kingdom where injunctive
relief can be obtained on a revoked European (UK) patent, if an appeal has been timely
filed. Further, each national patent can be amended or revoked under the relevant
national law.
The term of a European patent is 20 years from the date of filing (not the priority
date). Annuity fees are payable to the EPO during pendency of the European application and
then to each of the national patent offices after grant to keep the patent in force. Any
infringement actions are handled by the national courts, each applying its own country's
rules.
Contracting States
The following countries have ratified or acceded to the EPC as of 1998:
Austria, Belgium, Denmark, France, Germany,
Greece, Ireland, Italy,
Liechtenstein, Luxembourg, Monaco, Netherlands,
Portugal, Spain, Sweden, Switzerland, United Kingdom
In July 1993, the Administrative Council signed a co-operation agreement with Slovenia
to enable patent applicants and proprietors to extend the effect of European applications
or granted patents to the Republic of Slovenia. Similar types of agreements were signed
with Lithuania (in force as of July 5, 1994) and Latvia (in force as of March 1, 1995). On
September 9, 1994, a patent co-operation agreement with Romania was signed which contained
similar extension provisions.
European patent applications and patents may be extended to certain noncontracting
states. Article 168 of the EPC allows a Contracting State to declare
that this convention applies to any of its territories. Once the declaration has taken
effect, European patents granted for that Contracting State shall also have effect in
those territories. Typically, these are British and French colonies and overseas
territories.
France - extended to:
New Caledonia, French Polynesia, the Southern and Antarctic territories, Wallis and
Futuna and the Départment of St Pierre-et Miquelon.
U.K. - extended to the following states and territories which have
amended their legislation to permit the registration of European patents (UK):
Anguilla, Belize, Cayman Islands, Falkland Islands, Gibraltar, Hong Kong(1a), Jersey, St Vincent, Turks and Caicos, Tuvalu, Virgin Islands
(British)
States and territories where registration of European patents (UK) is possible under
existing law:
Bahrain, Bermuda, Botswana, Brunei, Fiji, Gambia, Ghana, Grenada, St. Lucia, Singapore (1) , Solomon Islands, Swaziland, Trinidad and Tobago,
Vanuatu, Western Samoa, Yemen
States and territories which have indicated a positive intention to amend their laws
and are currently registering European patents (UK):
Cyprus (Nicosia), St Christopher (St Kitts) Nevis, Sierra Leone, Tanganyika, Tanzania,
Uganda, Zanzibar
Additional States and territories which are registering European patents (UK):
Guyana, Kiribati, Seychelles
The Governing Articles
Article 52 of the European Patents Convention excludes
from patentable subject matter computer programs "as such":
(1) European patents shall be granted for any inventions which are susceptible of
industrial application, which are new and which involve an inventive step.
(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 ;
(d) presentations of information.
(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 ]
The exclusions to patentability in Article 52 have in common that they refer to
activities which do not aim at any direct technical result but are rather of an abstract
and purely intellectual nature.(2) This view is reinforced
by Rules 27(l)(b) and 29(l)(b) which respectively imply that an invention relates to a
technical field, it is concerned with a technical problem which is solved with a technical
solution and which requires the claims to state the technical features which the
inventor desires to protect.(3)
The EPO publishes Guidelines for Examination in the European Patent Office. The
original Guidelines of the EPO took the very restrictive position that if the computer
program constituted the improvement to the prior art, then the claims were not allowable
no matter how the invention was claimed.(4)
The Guidelines were liberalized in 1985(5) to recognize
that the exclusion from patentable subject matter was for computer programs as such.
Examiners were instructed to examine the subject matter of the claim "as a
whole" to determine patentability. It was not appropriate to judge single
features of the claim as being technical or not. Thus, any claimed subject matter considered
as a whole can be regarded as an invention if it provides a contribution to the prior
art based on a technical problem.
The current Guidelines(6) and Board of Appeal decisions
provide the basic rules for Examiners requiring to exclude the following computer-related
inventions are excluded from protection:
- a computer program claimed by itself;
- a computer program stored on a disk or other carrier irrespective of content;
but that the following may be patentable:
- a program-controlled machine or manufacturing and control processes;
- program controlled internal working of a known computer (operating systems).
It is reiterated that if the claimed subject matter makes a technical
contribution to the known art, patentability should not be denied because a computer
program is involved in the implementation.
The Vicom case(7)is the leading authority on the meaning
of "computer program as such" and what constitutes a "mathematical
method". The patent application related to a method and apparatus for digital image
processing which involved a mathematical calculation carried out on a two dimensional
array of numbers representing points of an image. Algorithms were used for smoothing or
sharpening the contrast between neighbouring data elements in the array. The initial
claim format of "A method of digitally filtering data including scanning a data array
with masks..." was disallowed because the physical entity represented by the data was
not mentioned in the claim at all. The EPO Examiner considered this left the
claims with an abstract notion indistinguishable from a mathematical method. On
appeal, the Technical Board of Appeal at the EPO accepted an amended claim which defined
the actual technical activity performed by the digital filtering. The
allowed language was "A Method of digitally processing images in the form of a 2D
array having ...". The Board of Appeal felt this language defined a
"real-world" application.
This is a very significant decision: although much of the patent includes a
mathematical description, the EPO accepted claim language to render the claim patentable
within the EPC statute. This will be compared below to the position taken by the
U.K. national courts. Unfortunately, the EPO later rejected these claims for
lack of novelty and inventiveness.
The Board held that what is decisive in determining patentability is determining what
technical contribution the claimed invention when considered as a whole makes to the known
art. It is irrelevant whether the computer program takes the form of software or firmware.(8)
Mathematical Method
The Board held that even if the idea underlying an invention is based upon a mathematical
method, a claim directed to a technical process in which the method is used is not a claim
which seeks protection for the mathematical method as such.(9)
The Board held that the invention had a technical character, recognizing that signal
processing can be expressed in terms of a mathematical operation. The result, unlike that
of a mathematical process, was not merely numbers. The signal processing is carried out on
a physical entity (the image stored as an electrical signal) by a technical means
implementing the method. The method results in a change in the entity (compare to the U.S.
physical transformation test(10)(11))..
Computer Program As Such
Using similar reasoning as with respect to mathematical methods, the Technical Board of
Appeal in the Vicom case held that a claim directed to a technical process which is
carried out under the control of a computer program (implemented in hardware or software)
is not a claim to a computer program as such. Instead, it is the application of the
program in a process; protection being sought for the process:(12)
"... a claim directed to a technical process which process is carried out under
control of a program (be this implemented in hardware or in software), cannot be regarded
as relating to a computer program as such ... it is the application of the program for
determining the sequence of steps in the process for which in effect protection is
sought."
Claims directed to a computer set up to operate in accordance with a computer program
(by means of hardware or software) or such a computer programmed for controlling or
carrying out a technical process are not claims directed to the computer program as such
and would be allowable.(13) In the Koch &
Sterzel case(14) the Technical Board of Appeal qualified
this general language to restrict patentability to a situation where the operation of the
general purpose computer is changed so as to "technically alter its functioning"(15), a situation which occurred in that case where the
computer controlled the operation of an X-ray machine to obtain optimum performance
without overloading the machine. The Board of Appeal held that the EPC does not
prohibit a claim with a mixture of non-technical and technical features.
A further example of a "technical effect" is IBM's system/program that displays
a message in response to the occurrence of an event, in this case displaying the state of
apparatus(16), this being the solution to a technical
problem. A further technical problem was solved in the IBM/Editable document form case(17)where an amended claim which stated that the software
transformed printer control codes into different control codes to enable communication
between incompatible word processing systems was held to be allowable because the claim
related to the processing of electrical signs. In this case, although the claims
related to the translation of text data, the data included control items such as carriage
returns, new paragraph marks and the like which were considered to be technical
functions having nothing to do with the meaning of the text being processed..
Mere Reproduction of Information
Mere reproduction of information is not a technical result. Where the data both does not
represent physical phenomenon and is not used to control the physical/technical
functioning of the device, the claims are not patentable.(18)The
Technical Board of Appeal held in the Koch &Sterzel(19)case
that the mere processing of data to reproduce information, does not constitute a technical
effect and therefore is not patentable.
The mere processing of information has been held to be "mental acts" and
nonpatentable. Arnold(20)refers to several cases in which
claims relating to data processing have been rejected as non-statutory subject matter,
particularly in the field of text-processing:
- a method for abstracting and storing documents in an information retrieval system and a
method for retrieving a document from the system.(21)
- a method for listing semantically related expressions.(22)
(This decision followed the decision of T38/86 24).
- a spell checking system for use in word processing.(23)
- a method of proof-reading a text document and detecting and replacing linguistic
expressions having a low "understandability" with words having a higher
"understandability" (that is, simpler words).(24)
- a method for automatically detecting and correcting contextual homophone errors in a
text document.(25)
- a method of editing data set out in table form in a word processing system.(26)
- a method of displaying and editing data set out in table form in a word processing
system.(27)
Word processing, according to the Board, is a series of mental acts(21),
(26) and lacks technical significance and hence is not
patentable.
Computer-Generated Software
A process for generating source code for computer programs from a specification was held
not to be patentable subject matter; it was merely the automation of the mental acts of a
computer programmer.(28)
Method of Doing Business
A method of using an automated teller machine by use of a machine readable card was held
to be a method of doing business and non-patentable subject matter.(29)
However, a recent case, known as Sohei(30) may have
extended what types of invention may be considered patentable by the EPO.
The invention related to a computer system for financial, inventory, personnel and
construction management in shops and offices. Prior art systems required an operator
to perform input processing of the same data two or more times. The invention solved
this problem by presenting a transfer slip in the form of a screen menu for entering items
once and this entered information is stored in datafiles which can be updated with
subsequent operator input. All the hardware was conventional. The claims were
upheld on appeal because the EPO considered that the invention solved the problem
technically in that it provided for the processing of data relating to different
management types in a single system. They concluded that technical subject matter
was present and if the claims were limited to specific types of management, the technical
character is still applied to the claims. The technical effect test is deemed to be
met when technical considerations are made to implement details of an invention.
These technical considerations imply a technical problem to be solved and the technical
features for solving the problem.
This case is encouraging but until it is applied as a precedent, caution is advised in
relying upon it. The facts and legal conclusion of this case should be compared with
those in the case of State Street Bank and Trust Co. v. Signature Financial
Group(31) where a computerized business-related
invention was held unpatentable (and at the time of writing, the appeal decision is
awaited). It may be seen that perhaps the EPO is adopting a position more favourable
to the patentability of business-related inventions than the USPTO, as long as the
invention has a "technical character". Thus, U.S. patent attorneys should
be aware that, at the present time, it may be possible to obtain patent protection for
such types of inventions in the EPO as long as they have a "technical
character".
After an EP patent is granted
It is beyond the scope of this article to discuss enforcement of a European patent.
However, as mentioned above, infringement and validity are dealt with by the
national courts. There is as yet no national case law of which we are aware revoking
a granted EP patent on the basis that the invention is inherently unpatentable.
However, of the EP member states, the United Kingdom courts have taken a consistently
strong line in rejecting computer-related inventions of the kind which have already been
allowed by the EPO and the USPTO. The enforceability of such EP (UK) patents for
computer-related inventions is indeterminate but the U.K. Courts have, in the past,
preferred to rely on its own case law for inherent patentability which is likely to favour
a defendant. There is a view amongst some EP practitioners that the other EP states
are likely to follow the position taken by the EPO and this will favour plaintiffs.
1. Hong Kong applications must be
recorded in Hong Kong within 6 months of EP publication and the EP patent must also be
recorded within 6 months of date of grant in the EP Bulletin but there are numerous
transitional provisions which necessitate specific investigations for each EP (UK) case to
be registered in Hong Kong.
1a. Singapore ceased accepting UK
patents as of February 23, 1996
2. IBM System for Abstracting Documents - Decision 22/85. Reported
OJ EPO 1-2/1990,12.
3. EPO Guidelines for Examination, Part C, Chapter IV, paragraphs
1,2.
4. [1978]O.J., EPO.
5. EPO Guidelines for Examination, Part C, Chapter IV
6. See CIPA European Patents Handbook; 2nd Edition; Vol. 2, Chapter
56; Longman; p. 295, 297.
7. EPO Decision T208/84; OJ EPO 1/1987, 14
8. ibid at p. 20.
9. ibid at p. 19.
10. In re Diehr, 450 U.S., 192, 209 USPQ at p. 9.
11. In Re Lowry, 32 F 3d 1579, 1583, 32 USPQ 2d, 1031 (Fed. Cir.
1984).
12. EPO Decision T208/84; OJ EPO 1/1987, 14 at p. 20
13. ibid at p. 20.
14. R. 72 EPO Decision T26/86; OJ EPO 1-2/1988, 19.
15. EPO Decision T208/84; OJ EPO 1/1987, 14 at p. 20
16. IBM/Computer-related invention Decision T115/85: OJ EPO
1-2/1990, 30.
17. Decision T110/90: OJ EPO 0/1994, 557.
18. Siemens [1992] E.P.O.R. 69.
19. supra at p. 75.
20. See: Arnold, Richard; Patentability of Computer-Related
Inventions; Feb. 7, 1995
21. Decision T22/85 [1990]: OJ EPO-12/1990-12.
22. IBM/Semantically-related expressions decision T52/85 [1989] 8
E.P.O.R. 454.
23. Decision T121/85 (unreported March 14, 1989).
24. IBM/Text clarity processing Decision T38/86; OJ EPO 9/1990,
384.
25. IBM/Text processing Decision T65/86 [1990] E.P.O.R. 181.
26. Decision T95/86 (unreported October 23, 1990).
27. Decision T186/86 (unreported December 5, 1989).
28. AT&T Decision (unreported October 29, 1993).
29. IBM Card reader Decision T854/90 [1994]: OJ EPO 11/1993, 669.
30. Sohei/General Purpose Management System T769/92: OJ EPO 8.1995,
525.
31. 927. F. Supp. 502 38 USPQ 2d 1530 (D. Mass. 1996).
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