Software Patents in Europe - Will the EPO grasp the nettle?

In October 2008, the President of the European Patent Office (EPO) referred a set of four questions to the Enlarged Board of Appeal (EBA) that were intended to define "the limits of patentability in the field of computing." The debate regarding the patentability of software and computer implemented inventions (CII) has long been a contentious issue, with pro- and anti-software patent groups voicing their opinions as to the permissibility of software patents.  Argument has particularly centred on the meaning of the exclusion from patentability in the European Patent Convention for "programs for computers (as such)". The referral to the EBA was intended to clarify alleged inconsistencies in the EPO's case law on this subject.

Before the EBA considers the questions, the opportunity has been provided for interested parties to file observations (amicus briefs) for the EBA to consider.  Given the potential for a seismic shift in the EPO's approach to software patents and CII, the level of response is perhaps unsurprising. . Almost 100 amicus briefs were filed, ranging from multi-national corporations, to patent offices, political parties (the Swedish Piratpartiet) and "open source" groups.

The Existing approach to patentability in the field of computing

Current EPO practice regarding CII is that computer programs are patentable if they  provide a technical solution to a technical problem.

Inventions which do not recite any technical means are rejected for lack of technical character (excluded as relating to  a computer program "as such"). Case law has stated that features as banal as a pencil are sufficient to bestow technical character to a claim.

When considering whether a claim has inventive step, the EPO the first considers what technical problem has been solved. Features of the claim which do not contribute towards solving this technical problem are then ignored for the purposes of assessing the inventiveness of the claim.

If the program provides a non-obvious technical solution to a technical problem it will be allowable, even if the physical aspects of the invention are well known. In contrast, known technical apparatus programmed to perform a business method will be refused even if the business method is new and inventive

Common criticisms (indeed often used by the UK IPO and English Courts) include that the word "technical" has never been fully defined, and that the approach renders the exclusion trivial and only prevents the patentability of unsuitable CII by implementing an artificial test for inventive step.

The President's Questions
Under European Patent Law the President of the EPO is allowed to refer a point of law to the EBA where two lower Boards of Appeal have given conflicting decisions. Consequently, whilst the primary purpose of the questions appears to be to test whether the current approach is correct, questions have had to be selected that can be argued to relate to divergences in existing Board of Appeal decisions. Possibly as a result, the referred questions, in particular questions 3 and 4, have been criticised by many to be unclear. The nature of the questions resulted in a number of confused amicus briefs, with several respondents answering one way to questions 3 and 4 when it was clear from their supporting arguments that they were in fact arguing for the opposite.

The referred questions are as follows (with our initial views based on the current approach of the EPO, given in brackets):

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

(The answer under the current approach would probably be considered to be "no". The list of exclusions is non-exhaustive and so there are no special words that must be used in order for the exclusions to apply.)
 
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?

(The answer under the current approach would be "yes". A computer or physical medium provides technical character and avoids the exclusion though it may not help with inventive step (Article 56).)

     (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?

(The answer under the current approach would probably be "no", assuming that "physical" is interpreted narrowly.)

     (b) If question 3 (a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

    (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?

(The answer to 3(c) under the current approach would be "yes".)
 

 4.   (a) Does the activity of programming a computer necessarily involve technical considerations?

(It is not immediately clear what the answer to this question should be under the current approach. The answer may be that it "normally" involves such considerations but not "necessarily".)

     (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?

    
     (c) If question 4 (a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?
 

Accompanying each question was a discussion as to the divergence in case law of the lower Boards of Appeal.

The Amicus briefs
A high number of amicus briefs filed (almost 20%) argued, that there was no significant divergence between the case law and that the referral is inadmissible.

The amicus briefs did not all answer the questions, with some making general comments on the issue of software patents and others arguing solely that the referral should be rejected. Many, perhaps sensibly, took the opportunity to discuss the correct approach to assessing inventive step of CII, even though this had not been explicitly referred to in the questions.

Briefs in favour of keeping the current approach

Around a quarter of all briefs filed argued for maintaining the existing approach.

Most briefs from the groups representing patent law practitioners (such as the EPI, the CIPA (UK), and the AIPLA) generally fell within this category, an indication that many patent practitioners worldwide are happy with the existing tests and do not have any problems in interpreting the current law.

Perhaps more significantly, the briefs from multinational companies who have made sizeable investment in IP and patents (e.g. Apple, Ericsson, General Electric, IBM, Microsoft and Philips) also broadly argued for maintenance of the existing approach. Again, perhaps suggesting that many of those with industrial concerns are also at ease with the current law.

Finally, some submissions from groups representing SMEs, and Intellect (which represents multinationals and SMEs), also argued for keeping the existing approach.

Briefs in favour of broadening patentable subject matter
A limited number of respondents, fewer than 5%, argued for an approach that did not require the test for excluded matter to require a technical solution, possibly opening the door for computer implemented business methods.

Interestingly, the Association Internationale pour la Protection de la Propriété Intellectuelle, which represents the interests of industry, and attorneys in IP law, argued that the patents should be granted in all areas of industry, including computing. Accordingly, they favour a much wider test, one which does not require a "technical" solution, and would only reject business methods that recited "steps executable by hands". 

Briefs in favour of changing to a more restrictive approach
Almost 30% of amicus briefs could be classified as arguing for a narrower test, or excluding protection for CII in their entirety, though many of these briefs were filed by individuals. Unsurprisingly, the majority of briefs arguing for the abolition of CII patents came from the "open source" community, such as the Canonical and Red Hat groups, maintaining their historical position that copyright protection is sufficient for software. Those arguing for the abolition of patents for CII maintain that the software exclusion for patents should be enforced rigorously, and that patent protection should only be provided where there is an inventive step provided outside the program itself.

More surprisingly, the UK IPO and the Polish Patent Office were both in favour of changing the EPO's approach, and seemingly in a manner that would be  more restrictive.

The Polish Patent Office stated that they believe "no  program .. can be an invention, irrespective of the form or circumstances in which the program was presented". The UK IPO objected to the current approach on the basis that it failed to address the policy reasons for the existence of the exclusion for "programs for computers as such", despite stating that the original policy grounds for the exclusion were entirely unclear. Additionally the UK IPO voiced its historical unease over the clarity of the meaning of the word "technical", although its proposed approach also relied on that word.

Other Briefs
The remaining submissions mainly fall into the category of observations discussing the economic aspect of the debate and possible implications of the questions. Whilst some open source groups argued that software patents stifle innovation and harm SMEs, the UK brief  stated that there is no empirical evidence for such statements.

Conclusions
Given that the previous EPO President refused to make a similar referral in 2006, and the lack of divergent case law since, it would be unsurprising if the referral were ruled inadmissible. Such a decision would probably not be favourable as it would fail to address the alleged clarity issues which led to the referral, as well as fail to resolve fundamental differences between the practice of the EPO and some national courts. Whilst the answers to the referred questions, if given, will undoubtedly polarise opinion, they should give a clearer indication of future European practice.  This should hopefully lead to a more consistent approach across all European countries. If the EBA does decide to deviate from the current approach it seems unlikely that the amicus briefs will have helped it come to such a decision.

Diego Black, Russell Barton