Sunday, June 9, 2013

What’s patent eligible and what’s not: patent eligible subject matter comparison – European Patent Convention


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:

  1. discoveries;
  2. scientific theories;
  3. mathematical methods;
  4. aesthetic creations;
  5. presentations of information;
  6. programs for computers; and
  7. 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


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