Martin Terry and Gareth Fennell, Kilburn & Strole, London, England
The position of the European Patent Office (EPO) on the patentability of business methods and computer programs is that the subject matter must be “technical”. Whilst this term remains undefined, the case law gives some indication of what is non-technical, such as business and economic concepts. The EPO’s approach to inventive step using the “problem and solution” approach involves the identification of a technical solution to a technical problem. Case law indicates that the technical problem is set for a “technical professional” and that the problem posed to him may contain novel non-technical features of the claimed invention. In cases where the technical implementation on a computer system of an innovative non-technical scheme is routine, the EPO will find the application to lack an inventive step and refusal should be expected.
Background
The European Patent Office (EPO) is responsible for granting patents in various European countries. If a patent becomes the subject of national court proceedings, the validity will be tested in accordance with the law of the particular nation. This article sets out the approach of the EPO, but does not discuss any differences in approach at the national level.
The law applied by the EPO includes a list of certain things which are excluded from patent protection. This list of exclusions includes mathematical methods, methods for performing mental acts, business methods and computer programs. Patent protection is not available for these exclusions “as such”, but it is important to note that patent protection is not precluded by the mere fact that to implement an invention modern technical means are used, for example in the form of a computer program. The EPO has developed an approach to the question of whether an application relates to one or more of the exclusions. This exclusion question is most often encountered when a patent application is concerned with a software or computer-implemented invention.
The EPO’s approach to inventive step
As a general rule, a patent will be granted by the EPO if the invention is a non-obvious technical solution to a technical problem and the EPO has developed the problem-and-solution approach as a way of determining the presence of non-obviousness (inventive step). This approach requires (i) the closest prior art to be identified, (ii) the identification of one or more distinguishing features between the invention and the closest prior art, (iii) the technical problem solved (i.e. the advance or advantage achieved) by the distinguishing features to be defined, and (iv) an explanation of why it would not be obvious to arrive at the invention when set the technical problem in view of the closest prior art.
The EPO’s approach to the exclusion question
In 1986, Vicom (T0208/84), a landmark piece of EPO case law concerning the exclusion question reasoned that “decisive is what technical contribution the invention as defined in the claim when considered as a whole makes to the known art”. In this case an invention defined in terms of a mathematical method was not allowed, but a re-phrasing of invention in terms of a method of digitally processing images using the mathematical method was allowable. Built on this foundation and following two later significant EPO decisions – PBS Partnership (T 0931/95) in 2000 and Comvik (T0641/00) in 2002 – a methodology which incorporates the exclusion question into the assessment of non-obviousness has been developed at the EPO. This methodology has been followed in one form or another in various EPO decisions and prohibits non-technical features of the invention from contributing to inventive step, often by relocating the non-technical features of the invention into the phrasing of the technical problem for part (iii) of the problem-and-solution approach.
For example, in PBS Partnership, which related to a new pension benefit scheme, it was found that “the regime of patentable subject matter is only entered with the programming of a computer system for carrying out the invention. The inventive step thus has to be carried out from the point of view of a software developer or application programmer…having the knowledge of the concept and structure of the improved pension benefits system and the underlying schemes of information processing”. With no invention at the software developer level, the programmed computer system was found lacking in inventive step.
The subject matter of Comvik related to the concept of allocating two user-selectable identities to the subscriber identity module of a mobile telephone system so that costs could be conveniently distributed between business and personal use. It was found that “selectively distributing the costs for service or private calls … does not make a contribution to the technical character of the invention.” Although the application indicated that an object of the invention was to eliminate inconveniences caused by distributing costs for service and private calls, it was decided that this was not considered to be a technical problem and that “to arrive at the technical problem this object needs to be reformulated as being to implement the GSM system in such a way as to allow user-selectable discrimination between calls for different purposes… .In fact the technical professional would, in a realistic situation, receive knowledge of the cost distribution concept as part of the task information given to him.” The invention was found to lack an inventive step.
The EPO have not formally defined the term “technical” and are unlikely to do so. However, there is guidance from the EPO case law that certain areas are non-technical (e.g. economic concepts and practices, and business, actuarial and accountancy systems), but in the absence of a positive definition there is scope for arguing on a case-by-case basis that a particular feature categorises as “technical”.
Thus, at present as far as the EPO is concerned, to ensure that an invention possesses an inventive step and is not in an excluded category, a non-obvious technical solution to a technical problem by a (fictitious) technical professional must be identified. Where non-technical innovation is concerned, such as with an innovative economic concept, a technical problem set may be “how to implement a computer system to perform the innovative economic concept” where the technical professional has knowledge of the new concept. If implementing the system involves no invention by the technical professional – for example if the implementation of the system is routine – then the application will be found to lack an inventive step. In other words, if there is only innovation at a non-technical level then refusal of the patent application by the EPO should be expected.
However, the President of the EPO, Alison Brimelow, has now opined that there is a conflict in the Board of Appeal’s decisions in this matter and has sought clarity and certainty in the EPO’s approach by referring several questions to the Enlarged Board of Appeal in order to seek their judgment. This has been given Appeal number G03/08. The questions are:
1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?
2(A). Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(C) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?
2(B). If question 2(A) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?
3(A). Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?
3(B). If question 3(A) is answered in the positive, is it sufficient that the physical entity be an unspecified computer? 3(C). If question 3(A) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?
4(A). Does the activity of programming a computer necessarily involve technical considerations?
4(B). If question 4(A) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?
4(C). If question 4(A) is answered in the negative, can features resulting from a programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?
It is generally thought by many practitioners having experience with borderline cases that there already exists a reasonably well established cannon of case law that the EPO follow, as discussed above , and which provides much insight to the EPO’s approach to assessing the patentability of borderline applications. The requirement that an invention provide a technical effect, namely a technical solution to a technical problem, is now pretty firmly entrenched in EPO doctrine. However, the President’s questions probe the oft used but little understood term “technical” by asking whether a technical effect is able to exist merely within a programmed computer or if there must be a real world effect on some other (e.g. external of the computer) physical entity? The questions go on to ask whether or not the act of programming a computer can be thought of itself as a technical act.
Also, the questions seek clarification as to whether or not the current practice of effectively assessing the exclusion from patentability under the guise of inventive step (under Article 56 EPC) is appropriate or if such an assessment should be carried out with a separate determination of inherent patentability (under Article 52 EPC).
With regards to how this will affect currently pending applications, it is our experience that EPO Examiners are endeavouring to ‘carry on regardless’ with the approach they currently apply rather than putting prosecution of all of the possibly many thousands of potentially affected applications on hold since the eventual outcome may very well likely be a validation of the current approach thus maintaining the status quo ante.
We await the Enlarged Board of Appeal’s judgement with much anticipation and hope that it will formally clarify the EPO’s approach to assessing the patentability of computer implemented inventions and enable such an approach to be followed in Europe’s national courts and patent offices.
Originally published in Intellectual Property Owners Association May 2009 Newsletter