Following calls made the UK Court of Appeal in the recent Symbian case, Alison Brimelow, President of the European Patent Office (EPO) has taken the controversial step of referring the issue of software patentability under the European Patent Convention (EPC) to the EPO’s Enlarged Board of Appeal, which operates independently of the EPO and takes as its only authority the EPC itself. Ms Brimelow has asked for clarification on four questions regarding the exclusion of computer programs “as such” from patentability, stating that diverging decisions of the Boards of Appeal have created uncertainty. According to an EPO statement, “It is hoped that the answers to these questions will lead to greater clarity concerning the limits of patentability, thereby facilitating application of the EPC by patent examiners and enabling both applicants and the wider public to understand the law regarding the patentability of programs for computers.” However, this referral has created controversy.
Nevertheless, 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?
Amicus curiae briefs have been requested and many have been submitted. Briefs that have been are available for download. The letter of the American Intellectual Property Law Association is available for download under the Reference Info tab of this group along with Ms Brimelow's referral.