The invention of the microprocessor and the resulting digital revolution has created an ever increasing variety of software-controlled products and services leading to the age of information technology, e-commerce and global competition. The protection of costly investments in innovative information technology is of strategic importance for the competitiveness of any market participant, be it a global player or a small start-up company.
On the other hand, the promoters of alternative business models in the software industry, such as open source licensing, are fundamentally challenging the justification of patent protection for software related inventions. In this debate, the contributions by policy-makers, lobbyists and the media are often controversial, sometimes polemic and not always to the point.
The following executive summary explains the legal status quo under the European Patent Convention (EPC) to elucidate available possibilities and existing limits for obtaining European patents for software related inventions.
The EPC does not define the term “invention”. However, the EPC specifies the qualities an invention must have to be patentable, i.e. it must be new, involve an inventive step and be susceptible of industrial application. Under the EPC, the term "invention" should therefore be understood as "subject-matter generally eligible for patent protection" without a priori having the required qualities of being novel, inventive and industrially applicable.
The EPC contains an exemplary list of items that are not regarded as inventions and are excluded from patent protection regardless whether they have the above qualities. Among the excluded items on the list are
The legal situation is even more complex, since the listed examples are only excluded from patentability to the extent that they are claimed "as such". In consequence, the EPC does not consider these items to be non-inventions under all circumstances, but postulates the development of suitable criteria by the case law for all of them to distinguish patentable subject-matter from subject-matter excluded as such. With respect to computer programs the criteria developed by the case law will be explained below.
Computer programs are on the list of items excluded “as such” from patentability. In order to underline the fact that computer programs may only be inventions if they meet the criteria explained below, it seems preferable to coin a new term for patentable subject-matter involving the use of computer hardware and / or software, i.e. "computer-implemented inventions" (CIIs). This term is regularly used by the European Patent Office when assessing the patentability of software under the EPC.
The basic criterion to decide whether subject-matter defined in the claims of a European patent application may be regarded as an invention is the presence of a technical character. This requirement is grounded in traditional European understanding and has been firmly established by the jurisprudence of the Boards of Appeal of the European Patent Office (EPO) for all fields of technology. In a first step of the examination whether a European patent can be granted, the claimed subject-matter is therefore to be assessed whether it has a technical character, i.e. is an invention. This is followed by a second assessment (see sections 5 ff. below), whether the invention meets the other requirements for patentability, i.e. novelty, inventive step and industrial applicability.
The term "technical" (or technological), though mentioned at various places in the EPC, is neither defined by the Convention nor the case law. Moreover, the general understanding of this term is not static, but may change over time. However, the situation is not hopeless in that based on its historic roots the core area of the meaning of "technical" is clear and gives reliable directions for future extrapolations. In particular, the items on the exclusion list "as such" should be regarded as non-technical.
The extrapolation approach may be illustrated by the example of a washing machine. In the past, the various steps in the operation of a washing machine (pumping, soaking, tumbling etc.) were performed under the control of some kind of mechanical control unit. There can be no doubt that such a mechanism and the controlled steps in the washing process had a technical character and were thus eligible for patent protection. Modern washing machines no longer use a mechanical control unit but a combination of hardware and software. There is no reason, why the transition to a computer controlled operation of the washing machine should affect its general eligibility for patent protection. Moreover, an innovation in the operation of such a washing machine should be patentable regardless whether it is implemented in a mechanical controller, dedicated hardware or only in software running on an off-the-shelf micro-processor. A narrow definition of the term “technical”, which would exclude such innovations, is not appropriate.
It is trivial that all computer programs when loaded to and running on a computer cause physical transformations of bit patterns by modifying electrical charges with the aid of electrical voltages and currents. If these phenomena were already considered to be sufficient for the required technical character, a dilemma would arise: either contrary to the law all computer programs would be eligible for patent protection or - in the absence of a discriminating criterion - no programs would be patentable.
This dilemma has been solved by jurisprudence judging that the above mentioned trivial technical effect achieved by all computer programs is not sufficient for allowing patent protection. A further technical effect beyond that trivial effect is required to distinguish patentable programs from programs "as such", the further technical effect residing in the nature and purpose of a computer program. In particular, programs serving a technical application by e.g. controlling technical processes or apparatus may be seen to achieve such a further technical effect and are hence eligible for patent protection. Illegal use of such controlling software may therefore be regarded, and prosecuted, as direct patent infringement.
In the above example, the controller for a washing machine may be realised by a conventional hardware processor and an innovative controlling program running on this processor. This program causes a further technical effect beyond its standard interaction with the hardware processor by controlling a technical apparatus and may therefore be separately claimed and protected.
Since a computer itself is also a technical apparatus like the above discussed washing machine the same approach may be applied in that all programs which control the internal functioning of a computer (i.e. which make or keep the computer running) so that it can be used as a platform for any applications should be patentable, such as e.g. BIOS or operating systems.
In summary, a computer program is not necessarily a technical means, and the art of programming is not necessarily a technical activity. Only those programs that lend themselves to a technical application are considered to have a technical character, i.e. to become a technical means.
Purely abstract or aesthetic concepts devoid of any technical implications are not considered to be inventions. They generally fall under the exclusions as such explicitly mentioned in the EPC (see above).
In all other cases, jurisprudence has greatly simplified the assessment of a technical character by establishing that concrete man-made products/devices/apparatus have per se a technical character. Methods/processes have a technical character if they employ technical means, irrespective of whether or not these means are conventional, provided they are explicitly recited in the claims of a European patent application.
Hence, the first hurdle to patentability requiring the presence of an invention is rather low, and any claimed subject-matter having an explicit technical bearing is taken "on board". This applies in particular to mixtures of technical and non-technical features in a claim which are common practice. For the assessment of a technical character, no prior art is taken into account because the technical character is an absolute requirement regardless whether the claimed subject-matter is known or obvious from the prior art.
A technical character is therefore already present, if a method claim recites hardware parts or peripherals, in particular a conventional PC, or if a device claim relates to a conventional data carrier storing a program.
At this stage of the examination procedure, available prior art arrives on the scene and serves as a basis for evaluating the above mentioned qualities of an invention. This assessment, in particular with respect to inventive step, is the second hurdle to patentability for a software related invention, which is by far more difficult to overcome than the first hurdle.
a) Industrial applicability
Computer-implemented inventions are normally susceptible of industrial application so that this requirement is readily fulfilled.
b) Novelty
Novelty is generally present, if not all features of a claim are known from a single prior art document. Whether non-technical features of a claim alone may establish novelty over the prior art does not appear to have been conclusively decided by the case law. This issue is however of minor practical importance since it can normally be bypassed by directly considering inventive step.
c) Inventive step
When examining inventive step, a major problem arises for a claim containing a combination of technical and non-technical features: Can an inventive step be acknowledged on the basis of a non-technical feature only ? The jurisprudence has given a clear answer to this question by establishing that an inventive step can only be made up by one or more features that contribute to the required technical character. More specifically, a feature justifying the acknowledgment of an inventive step must serve for the technical solution of a technical problem.
This approach has important consequences for the practical assessment of inventive step:
Based on the above approach, the relevant skilled person is a person skilled in the technical (or technological) arts. He is neither competent in, nor does he take account of non-technical knowledge. Any non-technical input is considered to be transferred by a non-technical expert to the technically skilled person as a frame-work within which the skilled person may become active. In other words, features which do not contribute to the technical character of the claimed subject-matter are to be split off in the assessment of inventive step and treated as pre-existing constraints for the technical problem to be solved.
The prior art is then used for assessing whether the novel technical features were obvious in view of the technical problem and the pre-existing constraints. In this context, it is regularly found that the mere automation of non-technical concepts (e.g. in the business or financial services) by conventional hardware or software lacks an inventive step.
All in all, inventive step turns out to be the barrier "sorting the wheat from the chaff" in the field of software related inventions.
Following the structured approach developed by the Boards of Appeal, the current practice in examining software related inventions at the EPO may be summarised by the following sequence of questions:
I. Does the claimed subject-matter define or use technical means?
If no, the claimed subject-matter is not eligible for patent protection and hence not allowable for this reason.
If yes, it has the required technical character and is an invention. The first hurdle is overcome.
II. Is the claimed subject-matter distinguished from the available prior art?
If no, the claimed subject-matter lacks novelty and is hence not allowable for this reason.
If yes, it is novel.
III. Do any of the distinguishing features contribute to the technical character and are those features inventive over the prior art?
If no, the claimed subject-matter does not involve an inventive step and is hence not allowable for this reason.
If yes, a patent may be granted (second hurdle overcome).
The following interactive illustration shows the above sequence of steps:
Software related inventions are predominantly claimed as computer-based methods or processes where the basic concept of an underlying program is expressed by method steps. By this formulation, the main thrust of such a program is normally highlighted: it will be apparent from the method what the program is aiming at and which effects are achieved.
Computer programs may also be claimed by themselves or as records on a carrier. The category of computer program has to be distinguished from method claims since programs are only a inanimate sequence of computer-readable instructions that have the potential for achieving concrete effects when loaded to, and running on, a computer, whereas in a method steps are actually carried out and effects are actually achieved. If claimed as a computer program or a record on a carrier, such a claim is in most cases added and refers back to a corresponding method claim. A literary presentation of all program instructions, as e.g. for copyright purposes, is neither required nor useful.
Device/apparatus claims, or in case of "distributed" inventions like client-server architectures, system claims are also possible, frequently referring to program constructs as modules or means.
Finally, claiming of data and signal structures or formats is conceivable, albeit the grey zone to purely mental acts may be approached.
a) Information modelling
Information modelling, though a precursor for program design, has been considered to be a non-technical activity as such. It might contribute to the technical character only if applied in a technical environment.
b) Database technology
Database technology referring to technical functions and data structures actually stored in the computer has been found to be technical. Similarly, the exchange of data among various application programs by functional data structures (e.g. clipboard formats) was considered to enhance the internal operation of a computer system and hence patentable. Further programs judged favourably in terms of technical character relate to garbage collection in a computer memory and aspects of data retrieval.
c) Mathematical methods/Simulation/Computer-aided design
On the one hand, mathematical methods as such are also on the list of non-inventions. On the other hand, mathematics easily qualifies for technical applications. Simulation of an electrical circuit subject to 1/f noise was found to constitute neither a mathematical method as such nor a computer program as such, even if mathematical formulae and computer instructions were used to perform the simulation. Similarly, designing an optical system in accordance with an algebraic condition using an optics design program represented a technical activity. In both cases, the inclusion of an actual fabrication step in the simulation or design method was not required.
d) Business methods/Financial transactions
Excluded as such, these concepts can hardly be seen to be prone to technical applications and therefore cannot be taken into account for assessing inventive step. What might nevertheless be patentable, are specific implementation aspects involving hardware designs or program constructs having themselves technical character. It is therefore important to include as many concrete technical implementation details as possible to support sufficiency of disclosure and patentability prospects for innovations in this field.
e) Information/Translation
Pure information contents are not patentable. However, the use of a piece of information in a technical system, or its usability for this purpose, may confer a technical character to the information itself in that it reflects the properties of the technical system in which it exists, e.g. by being specifically formatted and/or processed. Also linguistic aspects of a translation process may in principle assume technical character if they are used in a computer system and form part of a technical problem solution.
f) Graphical user interfaces
The jurisprudence is reluctant to attribute technical character to the design of graphical user interfaces, in particular if they are only based on aesthetic considerations or aim at facilitating human perception or mental processing. Visual indications of internal states of a technical system in the form of a visual feedback for human interaction with the system have, however, been accepted as technical.
g) Computer games
Computer games naturally involve a mixture of non-technical aspects of schemes, rules and methods for playing games, computer programs and presentations of information through graphical user interfaces. All of these aspects have to be carefully checked whether they make a technical contribution. Aspects that are purely driven by game rules have to be ignored.
The above case law has recently been challenged by the President of the EPO, referring questions to the Enlarged Board of Appeal and alleging divergences between various decisions on the patentability of computer programs, in particular on how narrowly the exclusions from patentability have to be construed. Referral G 03/08 is still pending before the Enlarged Board of Appeal, a decision may however be expected in the near future. At present, it would appear rather unlikely that the Enlarged Board of Appeal will make major adjustments to the case law as it stands.
Inventions involving computer hardware and software are patentable under the EPC
It is therefore important to include concrete technical implementation details to support sufficiency of disclosure and patentability prospects.
