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Software patenting developments in Europe
1 January 2009
As program developers and their companies sift through a wave of
new and existing patent rules and regulations in Europe, Browne
Jacobson partner Mark Daniels looks at the latest advancements.
Not all inventions are patentable. Article 52(2) & (3) of
the European Patent Convention (EPC), which in the UK has its
equivalent in the Patents Act 1977, s. 1(2), excludes certain
subject matter from patent protection. That subject matter includes
“a program for a computer” (i.e. software). However, the exclusion
only applies to the extent that the invention relates to that thing
“as such”. [double quotes indicate quotation from the law]
The question of what types of computer programs are caught by
this exclusion has long been a matter of debate for the European
Patent Office (EPO) and the UK Intellectual Property Office
(UKIPO).
The tendency has been for the UKIPO to refuse patents for
software on the basis that computer programs comprise excluded
subject matter—an approach that appears to have been in stark
contrast to the approach of the EPO, which has granted European
patents for the same and similar inventions. However, off the back
of a recent UK Court of Appeal decision in Symbian Ltd v.
Comptroller of General Patents (published on 8 October 2008 and
reported in WIPR, November/December 2008 edition), the UKIPO has
issued fresh guidance on how its patent examiners will assess the
patentability of computer programs going forward. Importantly, the
EPO is also proposing to revisit the issue. So, to what extent will
these developments close the gap?
The European approach to computer programs
The EPO has developed a doctrine based on assessing the
technical nature of the invention, beginning with the decision in
Vicom. In this case, the EPO decided that an invention relating to
a computer program must make a technical contribution/constitute
the solution to a technical problem in order to be patentable. In
essence, it must have a technical character.
The EPO has not always applied its reasoning consistently in its
decisions on this issue (since it is not, after all, bound by
precedent in the same way that the UK courts are). In a number of
decisions, it has moved away from the technical character test and
instead focused on whether the invention involved the use of or the
interaction with any hardware.
The ‘any hardware’ approach was particularly prevalent in
Pension Benefits. In this case, the EPO Board concluded that, if
the computer system “has the character of a concrete apparatus in
the sense of a physical entity, man-made for a utilitarian
purpose”, it is patentable.
In Hitachi, the Board went even further, rejecting the technical
contribution approach entirely in favour of the ‘any hardware’
approach.
A contrasting approach in the UK
Until Symbian, the leading judgment on this issue in the UK had
been given by the Court of Appeal in the conjoined appeals of
Aerotel Ltd v. Telco Holdings Ltd and others and In re Macrossan's
Application. The court in those cases rejected the EPO’s ‘any
hardware’ approach and expressly approved the technical effect
approach.
In doing so, it adopted a four-stage test, namely:
- Properly construe the claim
- Identify the actual contribution
- Ask whether it falls solely within the excluded subject
matter
- Check whether the actual or alleged contribution is actually
technical in nature.
The Aerotel/Macrossan test, as this became known, has become the
accepted basis on which both the UKIPO and the UK courts have
considered this issue, but the suitability of this approach was
revisited by the UK Court of Appeal in Symbian.
Symbian—a catalyst for review
The key question tackled by the court in Symbian was whether the
UK courts should now be abandoning the Aerotel/Macrossan test in
favour of the European approach. The overall approach taken by the
court was to seek to find common ground between the two approaches,
and certainly, it is true that Symbian represents a shift in
emphasis towards the EPO, but the extent to which the approaches
are now unified remains to be tested.
Following the judgment, The Chartered Institute of Patent
Attorneys (CIPA) has commented that “the decision means that
applications to patent software should now be examined by the
UK-IPO and the courts in the UK on the same basis as they are at
the European Patent Office (EPO)”.
Yet, the Aerotel/Macrossan test is far from abandoned. In
Symbian, Lord Neuberger, giving the leading judgment, made clear
that the EPO approach will not be followed to the extent that
post-Aerotel decisions contradict the Aerotel/Macrossan test.
By way of confirmation of this point, the UKIPO issued some
guidance (which can be found at www.ipo.gov.uk/p-pn-computer.htm)
following the decision. In this, it states that UK patent examiners
will continue to apply the “structured approach of
Aerotel/Macrossan to address the fundamental question whether a
claim falls solely within the excluded matter”.
So, following Symbian, what remains of the Aerotel/Macrossan
test in the UK? In reality, quite a lot (if not everything), but
the value of the test has been downgraded.
Analysing the four stages, Lord Neuberger considered stages 3
and 4 of the Aerotel/Macrossan test to amount to a single stage
(namely, is there a technical effect?), in line with the EPO. He
suggested ‘conflating’ stages 3 and 4 on the basis that stage 4
“was unlikely to add anything to the third stage”—a point made
expressly in Aerotel/Macrossan itself. Lord Neuberger also
considered that “the order in which the stages are dealt with is
different, but that should affect neither the applicable principles
nor the outcome in any particular case”.
This suggests that what is more than ‘excluded subject matter’
and what is ‘technical’ remain distinct concepts, even if they
should give the same answer.
Even more difficult, is the question, what constitutes a
‘technical’ contribution?
In Symbian, the Court of Appeal endorsed German judicial remarks
at a Symposium of European Patent Judges in September 2006. The
German approach is to assume that “software is not patentable
merely by virtue of being used in conjunction with a
general-purpose computer”. Lord Neuberger agreed that the use of
the word ‘technical’ is difficult, not least because, as the German
experience had found “when assessing software as such, the
program’s interdependence with the technical device makes the
technical content hard to deny”.
The technical effect of Symbian’s invention was to improve the
speed and reliability of the functioning of the computer. This was
found to solve a technical problem, and so fell within patentable
subject matter.
The fact that this invention passed the test has been heralded
by some as an indication that, provided the invention does not fall
foul of the other excluded subject matter in the list (e.g. it is
not a method for doing business or a method for performing mental
acts), computer programs are now more likely than not to be found
to be patentable in the UK as well as by the EPO. Although, it is
clear that the test requires something more than a ‘better’
computer program than the prior art (there has to be a technical
innovation, which has an effect whether within or outside the
computer), the hurdle in the UK to patenting software seems to have
been lowered as a result of this decision.
Reaction at the EPO
Very shortly following the Symbian decision, a referral of
questions on this subject was made to the Enlarged Board by the
President of the EPO, Alison Brimelow.
The referral notes the difficult balance that the “founding
fathers of the European Patent Office” tried to strike when writing
the European Patent Convention in relation to computer programs, by
excluding computer programs in such a way that the exclusion would
allow some flexibility as technologies developed.
However, it also notes that “there are concerns, also expressed
by national courts and the public, that some decisions of the
boards of appeal have given too restrictive an interpretation of
the breadth of the exclusion”—perhaps an oblique reference to
Symbian and other UK decisions.
The questions referred to the Enlarged Board concern:
- The effect on patentability of the wording of the patent
claims
- Clarification of the test applied by the EPO as to whether a
particular computer program is patentable
- The scope of technical character.
It is not clear at this stage whether answers to these questions
would remove the current uncertainty over what ‘technical’ actually
means. The original authors of the EPC intended that inventions
relating to computer programs would have some degree of technical
character to avoid being computer programs as such, but that was
never defined and the difficulty in defining it has become
increasingly apparent over time.
In a further twist, the Enlarged Board may actually refuse to
answer the questions altogether. A number of commentators have
pointed out that the admissibility of the questions depends upon
whether the Enlarged Board deems its existing case law to be
inconsistent.
If the Enlarged Board deems that there is no inconsistency (as
the then EPO president, Alain Pompidou, did when the UK courts
first argued for a referral) then it should reject the referral
altogether. If it does reject the referral, it is effectively
saying that the ‘technical effect’ approach and the ‘any hardware’
approach are not incompatible, which would be an interesting
conclusion in itself and would go someway towards answering the
proposed questions.
However, if the Enlarged Board does elect to give a ruling, it
is likely to be some time away. It has decided to allow third-party
observations on the points of law engaged by the questions, and a
timetable for such observations is likely to be set down at the end
of January 2009.
In the meantime, the UKIPO looks set to continue to apply the
Aerotel/Macrossan test albeit with one eye fixed on its counterpart
in Munich.
This article was first published in
WIPR
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