There is much confusion in the tech industry about the patentability of software in the United Kingdom and Europe. The starting point for this muddle is Article 52(2) of the European Patent Convention, which is mirrored in the United Kingdom under Section 1(2) of the Patents Act 1977. Article 52(2) sets out a list of activities which are not regarded as inventions (commonly referred to as categories of excluded subject matter), specifically:
- discoveries, scientific theories and mathematical methods;
- aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, computer programs; and
- presentations of information.
Article 52(3) qualifies Article 52(2) by excluding the subject matter of these activities only to the extent to which a European patent application or patent relates to such subject matter “as such”.
As a result, patents can be granted at the UK Intellectual Property Office (UKIPO) and at the EPO for inventions which involve the categories of excluded subject matter set out in Article 52. However, the “as such” qualification has also been used to limit the scope of allowable subject matter in these categories.
Over the years, the EPO and the UKIPO have developed the way in which the allowability of patent applications for computer software and business methods is assessed. The EPO has settled on an approach that gives greater certainty to applicants in comparison to other patent offices, such as the USPTO, where the law in this area is in a state of flux. The UKIPO’s approach is similar to that of the EPO, but with some subtle differences.
How does the EPO interpret Articles 52(2) and 52(3)?
The first important case to address the issue of subject matter involving computer software was the EPO Technical Board of Appeal Case T208/84 (Vicom). A claim to a method of digitally processing an image was allowed, even though the processing was essentially carrying out the steps of an algorithm. The processing was considered to be technical and therefore the claim was not excluded because it related to a computer program or mathematical method as such.
The basis for the qualification that an invention must be technical arises from the European Patent Convention, which states:
- “The claims shall define the matter for which protection is sought in terms of technical features of the invention” (Rule 43(1)); and
- “The description shall: (a) specify the technical field to which the invention belongs” (Rule 42(1)(a)).
In 1999, two EPO Technical Board of Appeal cases, T935/97 and T1173/97 (IBM), established that claims having the form “a computer program product” and “a computer readable medium having a program recorded thereon” were allowable.
Following the IBM decisions, it became accepted practice at the EPO that software could be claimed directly. This continues to be its practice so long as other requirements (ie, clarity of the claim language and sufficiency of disclosure) are met.
In Case T931/95 (Pension Benefits System Partnership), it was held that the claims of an application must define non-excluded subject matter and be novel and inventive. The claims were directed to a method and an apparatus for controlling a pension benefit programme. The method claim referred to technical means, but was refused because it related to a method of doing business as such (ie, it did not define non-excluded subject matter).
In this case, the apparatus claims did define technical features and were not refused merely because they related to excluded subject matter. However, the apparatus claims were refused on the grounds that they lacked an inventive step because it was viewed that the differences from the prior art lay in an economic field (ie, non-technical) and hence there was no technical contribution provided by the distinguishing features of the invention. This case marked a substantial shift in the EPO’s approach to non-excluded subject matter.
Subsequently, in Case T258/03 (Hitachi), the Board of Appeal held that there could be no distinction between apparatus and method claims in the assessment of the technical contribution of features. Therefore, method claims involving technical apparatus (eg, a computer) should also be considered under the requirement of inventive step.
Following the Pension Benefit and Hitachi cases, if a claim involves technical features, then the EPO will not reject it for simply relating to excluded subject matter. The question is whether the technical distinguishing features over the closest prior art provide a non-obvious technical solution to a technical problem (ie, the question is one of inventive step). Applying the approach of Case T641/00 (Comvik), if a feature cannot be considered as contributing to the technical character of the invention, it has no significance for the purpose of assessing inventive step.
In 2008 in referral G3/08, the president of the EPO referred questions regarding the patentability of computer programs to the EPO’s Enlarged Board of Appeal. After a lengthy period in which many amicus curiae briefs were filed, the board declined to answer the questions posed in the referral on a legal technicality; it was held that, since there was no divergence in existing case law, the legal requirements for the referral itself were not met.
Since then, the EPO has continued to apply the precedents set out in the Pension Benefits, Hitachi and Comvik cases, among others.