In Europe, patents will be grated for all inventions, in all
fields of technology, as long as the invention is new, involve an invention step
and is susceptible of industrial application (Article 52(1) EPC). However, this broad claim of patent eligible
subject matter is subject to various exceptions and exclusions.
Article 53 EPC provides several general exceptions. They
are:
·
inventions the commercial exploitation of which would be contrary
to "ordre public" or morality;
·
plant or animal varieties or essentially biological processes for
the production of plants or animals; and
·
methods for treatment of the human or animal body by surgery or
therapy and diagnostic methods practised on the human or animal body.
Article 52(2) EPC lists the following to subject matter as
ineligible patent subject matters:
- discoveries;
- scientific theories;
- mathematical methods;
- aesthetic creations;
- presentations of information;
- programs for computers; and
- schemes, rules and methods for
performing mental acts, playing games or doing business.
The subject matter 1 to 5 above cannot be the subject of a
patent in themselves. However, a
practical application of any of these subject matters may be patent
eligible. For example, the discovery of
electricity is not patentable; however, a practical application of electricity,
such as a light bulb, may be patentable.
The subject matter 7 above relates to mental acts, playing
games and doing business, all of which are human behavior. Therefore, the subject matter 7 is not patent
eligible even though they may be new, useful and inventive. This seems to suggest a major distinction
between patent eligible subject matter between EP and US—business method is a patent
eligible matter in US but not in EP.
The subject matter 6 above, programs for computers, seems to
indicate that there will be no patent protection available for computer
programs. The current EPO practice is less
straightforward than the text of Article 52(2) EPC implies. EPO generally deems the computer-implemented invention
as a patentable subject matter.
The computer-implemented invention is defined by EPO “as an invention
that works by using a computer, a computer network or other programmable
apparatus. To qualify, the invention also
needs to have one or more features which are realized wholly or partly by means
of a computer program.”
To be patent eligible, a computer-implemented invention must
fulfill the same basic patentability requirements as inventions in all other
fields as set out in the EPC. Under
current EPO practice, a computer-implemented invention can be patented if the
invention:
·
has
technical character and solves a technical problem.
·
is
new.
·
involves
an inventive technical contribution
to the prior art.
The emphasis for the patent eligibility analysis of a
computer-implemented invention resides on “new technical solution.” Therefore, if a computer program does not
solve a technical problem, it is not patent eligible in Europe. Examples of patent eligible computer programs
include anti-lock braking systems, encryption/decryption methods and
audiovisual processing techniques.
The decisions of two key cases, Vicom
and Koch & Sterzel, in 1980s established the patent eligibility of the computer-implemented
invention. The first key case involving the
patent eligibility of a computer-implemented invention is, Vicom (T 208/84), which was decided in 1986. The case involves a dispute on patentability
of a method for processing images. The
technology applies a new mathematical technique to matrices of input data. The EPO considered that the method was
patentable because the technical effect of the invention was about processing
images more efficiently and not about a purely mathematical method applied to
data in general.
Another key early case was Koch & Sterzel (T
26/86), which related to a software-implemented method of
controlling an X-Ray apparatus for radiological imaging. Because the invention could work on existing
known machinery, there was no new hardware required. The EPO Board of Appeal ruled that the
invention was patentable because the invention resulted in a new and inventive
technical effect. The fact that this was enabled by software on known hardware
was irrelevant.
The patent eligibility of a computer-implemented
invention does not lead to the patent eligibility of a business method that is
implemented using computer software.
This conclusion was established by using EPO’s problem-solution approach for assessing inventive step. According to problem-solution approach, if a claimed invention is new, the
proper way to assess whether there is an inventive step is to look at what
technical problem the invention solves, in light of the known prior art.
Firstly, the difference between the invention and the prior art is identified.
Secondly, the technical effect of this difference (if any) is identified.
Thirdly, the objective technical problem is identified, given this technical
effect. Finally, an assessment is made of whether, given this objective
technical problem, the skilled person would find it obvious to arrive at the
claimed invention.
Applying the problem-solution
approach analysis to the computer implemented business method, EPO established
the patent inedibility of the computer implemented business method with
influential cases, Hitachi
(T
258/03) and Comvik (T
641/00). This first relates to implementing a modified
Dutch auction over the internet. The EPO Board of Appeal decided that, although
the claimed invention was not excluded as an invention because it involved
technical means (even a pen and paper would suffice for this test), it was not
patentable because any objective technical problem derived from the prior art
was merely avoided by the use of a different business method. Implementing the
new business method on a computer did not make it patentable.
The other decision of Comvik relates to a SIM card allowing for two 'identities',
which allowed call charges to be allocated to different accounts. The Board of Appeal
rejected the application deciding that an invention having “technical character”
had to be assessed as a whole and the features making no contribution to the
technical character of the invention could not be used to support the presence
of an inventive step. The idea of using two identities on a single SIM card did
not make a contribution to solving a technical problem, and it was obvious how
it would be implemented, so the invention failed under Article 56.
Following
Comvik, the usual
approach at the EPO is to move all of the features that do not contribute to
the technical character of the invention into the problem part of the problem-solution approach, rather than part of the solution. As a result, most business method-type
applications fail the inventive step requirement under the Article 56, from the
reasoning that implementing a new business method on a standard computer would
be normally be obvious to the skilled person.
Thanks for reading!
Connie
