EPO issues favourable software patent decision to Microsoft.

The EPO has upheld its position on the requirement for a technical solution to a technical problem in a favourable software patent case in the name of Microsoft Corporation (T425/03).

The EPO recently published several decisions related to an invention filed in the name of Microsoft regarding "a method of operating a computer" which enables transfer of data via different clipboard formats. The EPO Technical Board of Appeal has upheld the position from the earlier Hitachi decision (T258/03 related to a Dutch auction system) which stated that a method using technical means is an allowable invention under the European Patent Convention and not therefore excluded under Article 52 EPC. In this instance they stated, "a computer system including a memory (clipboard) is a technical means and consequently the claimed method has technical character in accordance with established case law".

The Board went on to emphasise that a method implemented in a computer system represented a sequence of steps actually performed and achieving an effect, and not a sequence of executable instructions (ie. a computer program) which just has the potential of achieving such an effect when loaded into and run on the computer.

Secondly, the Board upheld the earlier view that an invention must solve a technical problem by technical means in order to meet the requisite inventive step requirement under the European Patent Convention. In this instance, the Technical Board of Appeal stated that the claimed method steps contribute to the technical character of the invention in that "functional data structures (clipboard formats) are used independently of any cognitive content in order to enhance the internal operation of a computer system with a view to facilitating the exchange of data among various application programs. The claimed steps thus provide a general purpose computer with further functionality: the computer assists the user in transferring non-file data into files".

Accordingly, the European Patent Office can be seen very pragmatically, to be allowing computer implemented inventions where these inventions are defined appropriately, firstly as comprising technical means and secondly as solving a technical problem by such technical means. This is still in contrast to the more liberal approach of the United States Patent & Trade Mark Office especially in light of the Lundgren decision related to oligopoly detection reported in late 2005.

Karl Barnfather
© Withers & Rogers LLP 2006