The Limits of Patentability in a Nutshell

1. A set of instructions for solving a problem by means of an automated system consisting only of generic data processing hardware (universal computer), also called “program for computers” or “computer-implemented solution”, is not an invention in the sense of patent law, regardless of the form in which it is claimed.
2. A claimed object can be an invention in the sense of patent law only if it contributes knowledge to the state of the art in a field of applied natural science; an invention is a teaching about cause-effect relations in the use of controllable forces of nature.

The first of these two rules is contained in Article 52 of the European Patent Convention and explained in the European Patent Office’s Examination Guidelines of 1978. It allows even a robot to sort out the most common software patent claims. It is one of the simplest rules that patent courts have ever applied. The EPO openly broke this rule with its IBM 1&2 decisions of 1998, and even further with Controlling Pension Benefits System of 2000. The term “computer-implemented invention”, introduced in 2000, also implies a negation of rule 1.

The second of the two rules is known best by more elaborate versions of it that were developed by German courts. It is an auxiliary rule, needed for cases that don’t fit clearly into the list of unpatentable items of Art 52(2) EPC. According to its strictest interpretation, an invention must impart knowledge about effects of the use of forces of nature, i.e. knowledge that was gained by experimentation rather than by deduction. The EPO has never sought to formulate this rule as clearly as the German courts, and yet they have, in a series of decisions starting with Vicom in 1986, heavily relied on it and stretched it beyond bearing, so that it became increasingly difficult for them to argue that their practise was still in line with rule 1.

Further explanations of these rules, which the EPO has, with great intellectual effort, been bending and breaking, can be found in

• 21 cross-partisan amendments of July 2005: the will of a large majority of the European Parliament – in the end they gave up and dropped the whole project, because in the EU’s legislative procedure the parliament can not prevail against the united ministerial patent officials from the Commission and Council
  • 10 Core Clarifications: a simple and systematic presentation of the position of the FFII, which equalled that of the parliamentary majority
  • Patentowanie Innnowacji Informatyczhnych – an article by polish patent law prof. Aurelia Nowicka which analyses and greatly appreciates these 21 amendments – an english translation is said to be available
• European Parliament’s Amended Directive of September 2003: A large majority of the European Parliament demanded a return to the 2 rules in a very strict and coherent form. Their will was ignored by the Commission and Council of Ministers and countered by the most uncompromising pro-software-patent position ever seen in the process.

In spite of all the legal sophistry that has been employed to obscure them, the rules of patentability according to Art 52 EPC are really among the simplest rules that the patent system has ever applied, much simpler e.g. than the rules about inventive step. Moreover, these rules have proven their applicability in practise and are just as applicable to today’s patent applications as to those of the 1980s. Whether or not to applied them is today, as it was in 1986, 1998 and 2000, essentially a question of political will.

How the EPO president can move to stop the granting of software patents

• Grant EPO employees freedom of speech. Currently examiners risk disciplinary measures if they publicly attack the EPO’s party line.
• Strengthen the independence of the boards of appeal and of the administrative branch of the EPO from each other; cultivate an attitude of respectful critical distance between the two.
• Stop using manipulative terminology such as “computer-implemented inventions”, even if the boards of appeal use it.
• Stop campaigin for “patentability of computer-implemented inventions”, be it via brochures or websites, replace this with objective material that encourages open and critical discussion.
• Stop political lobbying1. Especially it is not correct for the administrative branch of the EPO to lobby for codification of caselaw from the supposedly independent judicial branch.
• Take an open and neutral position in debates, don’t allow ministerial patent officials of member state delegations to hide their bias behind an EPO shield
  • Some steps in this direction are being taken already if we interpret the signals from the European Patent Forum correctly
• Declare the TBA caselaw, in particular that on software, to be non-binding, encourage examiners to challenge this caselaw by interpreting the law directly.
• Form a committe to work out new examination guidelines based on a more plausible interpretation of Art 52 EPC, such as the one explained above.
  • The diverging approaches chosen by some national courts (e.g. UK and DE) can serve as an additional reason for doing so.
• Complain to the Enlarged Board of Appeal (EBA) about the practise of the Technical Boards of Appeal (TBA) and ask for a rectifying decision
  • UK judge Jacob has called on the next EPO president to do just that
  • The TBA was not competent to take the series of legal-political decisions that it has taken, and the EBA, which would have been more competent, was never consulted.
  • It may be enough to reverse one aspect, e.g. that of program claims (IBM 1&2) to get a revision of TBA caselaw started. But stability can only be reached if the whole chain up to Vicom is reversed. The call on the EBA should not attempt to stabilise an intermediate state.

What the EPOrg and its member states can do

• Take decisions on the EPO’s administrative council
• Issue new national examination guidelines
• Issue clarifying national laws in the sense of the above rules 1&2. Even simpler signals such as the following might suffice:
  • forbid program claims
  • delete the national version of Art 52(3), which is redundant

What the EU and its member states can do

• Launch a proper directive “on the limits of patentability with regard to software”, as demanded by the European Parliament
• Absorb EPOrg into the EU, use the Co-Decision procedure to install a Community Patent Law with a more explicit version of Art 52 EPC
• Transfer legislative power on substantive patent law to the European Parliament and national parliaments

Further Reading

Current national caselaw

• Patent attorney Axel Horns, a vocal promoter of software patentability, deplores change of “Zeitgeist”: “Taken together the developments in the UK and Germany in a European Union without a sectoral Directive governing the patentability of computer-implemented inventions, it perhaps might be true that nobody should be very much surprised if, on the national level, it will become more and more difficult to obtain or maintain patent protection in this field. The changed Zeitgeist eventually appears to have reached the Courts and might effectively promote also from there the political agenda of the critics of the IP system.” (read on 2007-05-01)
• German judge Melullis on p 184-185: The patentability of software or, in the broader wording of the EPC, “programs for computers”, has been the subject of prolonged and intensive discussion among patent law professionals and interested sections of the public. This debate has also been fuelled by the efforts of some, mainly larger, companies in the field to obtain protection for software, although the Convention expressly excludes the patenting of computer programs as such, relativising the rules, even if they cannot be abolished. This trend has been reflected, unfortunately, in the legal discussion. The relevant provision of the Convention is not a model of clarity, and legal sophistry has been employed with some success to obscure its meaning still further, in a way that in effect colludes with the efforts to extend patenting to software. …. The FCJ proceeds from the assumption that the prohibition on the patenting of software “as such” means what the law says. Software cannot be protected merely because it achieves, inter alia, technical effects when used in conjunction with a technical device. Conversely, …, software is not patentable merely by virtue of being used in conjunction with a general-purpose computer1. This broadly corresponds to the earlier approach of the European Patent Office, …
• UK caselaw diverges from EPO in a similar way.

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