EPO Enlarged Board Referral on Software Patents

The IPKat has just learned that a referral has been made to the Enlarged Board under Article 112(1)(b) by the President of the EPO Alison Brimelow (right) on question of software patents. The full text of the referral can be found here (pdf document), and the EPO announcement here. Thanks are due to a very eminent subscriber for pointing this out.

As a background to the questions, Ms Brimelow states:

"Even in the 1960s, as the founding fathers of the European Patent Office drafted a new European patent law, it was clear that the patentability of computer programs was a complex issue. Legislative attempts to change or clarify the law in this field have met with more controversy than success, although Article 52 EPC was amended to state that inventions ‘in all fields of technology’ are patentable, thus making an implicit requirement explicit.

As the EPC was drafted, the feeling was that it was better not to define the exclusion precisely in law, but rather that the matter should be left in the hands of the EPO and the national courts. This flexibility is important as technology develops and new technologies emerge. Nevertheless, to quote a working group in 1972: “it was stressed that a matter as important as computer programmes [sic] should not be left in a state of prolonged uncertainty pending legal developments”. Diverging decisions of the boards of appeal have indeed created uncertainty, and answers to the questions arising from these decisions are necessary to enable the further, harmonious development of case law in this field.

Currently 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. It is clear that the European Patent Office should have the leading role in harmonising the practice of patent offices within Europe.

The four questions have been chosen to look at four different aspects of patentability in this field. Firstly the relevance of the category of the claim is questioned. The next three questions concern themselves with where the line should be drawn between those aspects excluded from patentability and those contributing to the technical character of claimed subject-matter: the second question concerns the claim as a whole; the third, individual features of a claim; the fourth, relevant for defining the skills of the (technically) skilled person, concerns the activity (programming) which underlies the resulting product (computer program).

It is hoped that the referral of these questions to the Enlarged Board of Appeal will lead to more clarity concerning the limits of patentability in this field, facilitating the application of the law by examiners and enabling both applicants and the wider public to understand the law regarding the patentability of computer programs according to the EPC."

The questions are as follows:

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

2.(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

2.(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

3.(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

3.(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?

4.(a) Does the activity of programming a computer necessarily involve technical considerations?

4.(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

4.(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?

As the extensive background to each of the questions details, each of them is deliberately aimed at aspects of the sometimes contradictory nature of the Technical Boards of Appeal decisions that have been made on the subject over the last couple of decades, from Vicom to Duns Licensing, via IBM, Hitachi and Microsoft, among others.

The closing summary gets to the real meat of the issue:

"From the historical documents it appears that the authors of the EPC agreed that a computer program could only be patentable if it had technical character. This view is supported by the different comments given by delegates referring to the amendment of paragraph 1. However, this technical character, necessary to avoid the exclusion laid down in Article 52(2) EPC, was not defined.

Furthermore, the wording of Article 52(2) EPC provides no indication as to whether the exclusion of certain items is based on the fact that the items mentioned lack the necessary technical character or whether the exclusion is based on broader social or political considerations. The possibility that some excluded items are indeed technical is left open by the phrase “shall not be regarded as inventions”. Consequently, from the wording of Article 52(2) EPC, no conclusion can be drawn concerning the question of whether a computer program is technical or not.

In the absence of guidance from the law and its preparatory documents, and in view of the existence of divergences of opinion regarding how the computer program exclusion should be applied, it is considered appropriate at this stage to refer the questions set out in the previous section to the Enlarged Board of Appeal for its opinion."

The IPKat must admit that he is quite surpised, not to say a bit shocked, at the appearance of this referral. He was gradually coming round to believing that the questions had being largely settled (heavily fudged though they may be), after the kerfuffle around Aerotel and Duns Licensing, followed by the dampening down of Symbian (IPKat commentary here). He had the impression that national courts, the UK in particular, were eventually beginning to be persuaded to step in line with the EPO lead, even though the EPO stance had 'evolved' somewhat over the years as a result of the demands of patent applicants. As regular readers will know, this Kat has been banging on for a while now about the sometimes strange reasoning that the EPO has been using over whether to exclude or not to exclude, particularly when it comes to what exactly is meant by 'technical'. Humpty Dumpty has, of course, been mentioned in this context before.

The IPKat is very keen to see these questions being settled properly at the EPO level, which should hopefully provide applicants with some degree of predictability as to what they might and might not be able to get away with in future. As many people from either side of the software patents debate often fail to realise, what patent practitioners actually want in the main, rather than more patents for bad inventions, is some degree of certainty so they can provide a decent service for their clients. Their jobs are not made any easier, and their clients' pockets are certainly made much lighter, by the swinging pendulum of the UK approach and the uncertain shifting reasoning of the EPO approach. Failing certainty, it would be nice just to have slightly more rigidly defined areas of doubt and uncertainty. At the moment we don't have even that.

The outcome of the referral process, resulting in a decision by the enlarged board on these questions, is unlikely to be known for some time, possibly a year or two given past behaviour. The IPKat wonders whether this will mean that all those applications containing computer program claims, or even those merely referring claiming 'computer implemented inventions', will now have to be put on hold. We (patent attorneys, that is) certainly hope not, but the IPKat thinks that this might be an inevitable effect of trying to sort out the issue properly (but, he suspects, not once and for all).

For more on this referral, see the IPKat's further comments here.