Dr. Carlo Torti [e-mail]

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Patentability of Software under the European
Patent Convention
Dr. Carlo Tortictorti_at_grunecker.de
Dr. Carlo Tortictorti_at_grunecker.de
Grünecker, Kinkeldey, Stockmair Schwanhäusser
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Why software patents?

• Software is expensive to develop, easy to copy
• Sui generis protection has failed
• Patents protect investment
• Patents protect functionality
• But fast-moving field
• Patent system copes with difficulty
• Least worst form of protection

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Actual Situation

• The EU has still not decided how to handle the
  issue and the Diplomatic Conference in November
  2000 to amend the EPC failed to agree on
  amendment of the list of exceptions to
  patentability. In spite of this, European
  practice and case law have been developing
  rapidly both as regards the practice within the
  European Patent Office and the various national
  jurisdictions

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US v. European Law

• US useful, concrete and tangible result
• Europe list of exclusions
• US is inclusive, Europe exclusive
• Europe in practice technical test
• Statutory subject-matter v. technical
• Europe problem of multiple jurisdictions
• Europe very little software litigation

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US LAW

• 35 USC 101 states that "Whoever invents or
  discovers any new and useful process, machine,
  manufacture, or composition of matter, or any new
  and useful improvement thereof, may obtain a
  patent therefor" in other words, there is a
  positive definition of what constitutes
  "statutory subject-matter" and after some wobbles
  it is now accepted that anything under the sun
  that is made by man1 and which produces a
  useful, concrete and tangible result 2 is
  patentable.

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European Requirements Article 52(2) EPC

• The following in particular shall not be regarded
  as patentable inventions...
• (a) discoveries, scientific theories and
  mathematical methods
• (b) aesthetic creations
• (c) schemes, rules and methods for performing
  mental acts, playing games or doing business,
  and programs for computers
• (d) presentations of information

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European Requirements Article 52(3) EPC

• The provisions of paragraph 2 shall exclude
  patentability of the subject-matter or activities
  referred to in that provision only to the extent
  to which the application or patent relates to
  such subject-matter or activities as such

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Extent of Exclusions

• Limited to the excluded matter as such
• EPC does not define what this means
• Boards of Appeal no definitive answer
• Exceptions to patentability construed narrowly
• But in theory A 52(2) list is not exclusive

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INTERPRETING THE EPC

• A superficial understanding of the European
  Patent Convention (EPC) can lead to the wrong
  conclusion that the patenting of software is
  wholly prohibited.

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IS THAT RIGHT?

• As some patent attorneys have always known, a
  patent including a notional hardware embodiment
  can by means of a cleverly worded claim also
  cover a software embodiment. But if a technical
  process can be carried out either in hardware or
  in software, why should the applicant be excluded
  from obtaining protection if he is honest and
  merely describes the software embodiment?

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Essential BoA Case Law

• Vicom T 208/84
• Koch Sterzel T 26/86
• Sohei T 769/92
• Computer Program Product/IBM T 935/97 T
  1173/97
• Colour Television Signal/BBC T 163/85
• Pension Benefits System T 931/95
• Two Identities/Comvik T 641/00

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AN INVENTION RELATING TO A SOFTWARE PROGRAM IS
PATENTABLE IF

• technical
• makes a technical contribution in a field not
  excluded from patentability
• is the solution to a problem involving technical
  considerations
• produces a technical effect going beyond the
  normal interaction of a computer and a program
• or just generally has a technical character

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TEST ON PATENTABILITY

• 1) A software program
• 2) A software program generating a virus
• 3) A computer controlled welding machine using a
  software program
• 4) A computer program product containing
  instructions to control the sequence of the
  operation of a cash dispenser
• 5) A c. p allowing the user to select different
  aspects of a car that he wishes to buy
• 6) A computer program product for controlling the
  assembling of cars according to the customers
  order

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RESULTS

• 1) Yes
• 2)Yes/No
• 3)Yes
• 4) Yes
• 5) No
• 6) Yes

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POSSIBLE CLAIMS FORMULATIONS

• 1) A method of...comprising the steps of...
• 2) Data processing system comprising means for
  carrying out the steps of the method according to
  claim 1
• 3) A computer program comprising computer program
  code means adapted to perfom the steps of the
  method of claim 1 when said program is run on
  computer
• 4) A computer program as claimed in claim 3
  embodied on a computer readable medium
• 5) A computer readable medium compriing program
  codes adapted to carry out he method of claim 1
  when run on a computer
• 6) A carrier medium carrying the computer
  executable program of claim 3

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VICOM T 208/84 (1)

• Original claim
• A method of digitally filtering a data array..
• Claim accepted by Board of Appeal
• A method of digitally processing images..

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VICOM T 208/84 (2)

• a claim directed to a technical process
• if carried out under the control of a program
• whether implemented in hardware or software
• is capable of industrial application
• is not a computer program as such
• is not merely a computer of known type

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Koch Sterzel (1)
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Koch Sterzel (2)

• Inter partes
• Attempt to assert national case-law
• VICOM followed
• Apparatus produced a technical effect
• Irrelevant when this happened
• Invention must be assessed as a whole

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Technical Contribution (1)

• T 6/83, T 216/85, T115/85 solving a problem
  which is essentially technical
• T 22/85 technical character providing a
  technical contribution to the art
• T 38/86 the contribution must be in a field not
  excluded from patentability

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Computer related invention/IBM T 115/85
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Text processing/IBM T 38/86 (1)
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Text processing/IBM T 38/86 (2)
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Sohei T 769/92 (1)
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Sohei T 769/92 (2)
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Sohei T 769/92 (3)

• A computer system for plural types of
  independent management including at least
  financial and inventory management comprising a
  display unit, an input unit, a memory unit, an
  output unit and a digital processing unit
  wherein
• - said display unit displays a single transfer
  slip..

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Sohei T 769/92 (4)

• Arguably a business method
• But a self-contained system
• Confirms need for technical contribution in
  solving a technical problem
• Technical considerations will suffice, i.e.
  implicit technical problem or solution
• But relating to computer, not financial system

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Data carrier T 935/97 T 1173/97 (1)

• A computer program product comprising a computer
  readable medium .computer program code means
• A computer program element comprising computer
  code means to make the computer..execute
  procedure to
• A computer program element embodied on a computer
  readable medium

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Data carrier T 935/97 T 1173/97 (2)

• A computer readable medium having a program
  recorded thereon
• A computer program directly loadable into the
  internal memorysoftware code portions for
  performing the steps of
• A computer program product stored on a computer
  usable medium

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Data carrier T 935/97 T 1173/97 (3)

• TRIPS taken seriously
• Need for tripartite harmonization affirmed
• The key is technical effect, not technical
  contribution, beyond normal interaction of
  program and computer
• This technical effect need not be novel
• A program product can have the potential to
  produce a further technical effect

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Colour TV Signals T 163/85 (1)
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Colour TV Signals T 163/85 (2)

• A colour television signal adapted to generate
  a picture with an aspect ratio of greater than 4
  3, and in which the active-video portion of a
  line constitutes at least 85 and preferably 90
  of the line period.

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Colour TV Signals T 163/85 (3)

• Claims technical features of TV system
• Not a presentation of information as such
• A physical reality which can directly be
  detectednot an abstract entity
• Doesnt matter that its transient
• If a signal can be claimed, what else?

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Pension Benefits System (1) T 931/95

• 1. A method of controlling a pension benefits
  program by administering at least one subscriber
  employer account on behalf of each subscriber
  employers enrolled employees...
• 5. An apparatus for controlling a pension
  benefits system comprising
• a data processing means which is arranged to
  receive information into a memory...

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Pension Benefits System (2) T 931/95

• Clearly directed to a business method
• Importance of technical character
• Contribution approach clarified
• Distinction between apparatus and method claims
  directed to economic activity

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Pension Benefits System (3) T 931/95

• Methods only involving economic concepts and
  practices are not inventions.
• A feature of a method which concerns the use of
  technical means for a purely non-technical
  purpose and/or for processing non-technical
  information does not necessarily confer a
  technical character
• Apparatus claim held non-inventive

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Two Identities/COMVIK T 641/00

• Inventive step needs technical features
• State of the art state of technology
• Usefulness of problem and solution approach
• The problem must be a technical problem
• Features must make a technical contribution to
  the solution to be considered for inventive step

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Conclusions

• Importance of technical character
• Business methods are not technical apparatus for
  carrying them out may be
• A technical problem or technical solution can be
  indirect it need not be novel
• The potential to produce a technical effect can
  suffice
• Invention and inventive step are separate issues

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Any questions?
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Grazie per lattenzione

• Dr. Carlo Tortictorti_at_grunecker.de