| The EPO define a computer implemented | | | | is sought and that such a claim is allowable under |
| invention as an invention that works by using a | | | | art 52 of the EPC. |
| computer, a computer network or other | | | | |
| programmable apparatus. To qualify, the invention | | | | Then came Merrill Lynch's Application [1989] |
| also needs to have one or more features which | | | | establishing that there must be "some technical |
| are "realised wholly or partly by means of a | | | | advance on the prior art in the form of a new |
| computer program". | | | | result." Although Vicom established that programs |
| | | | | running on known hardware were patentable, |
| Before the European Patent Convention 1973, the | | | | many applications for such programs had been |
| implementation of the specific provisions relating | | | | hopelessly unsuccessful. |
| to computer related inventions was generally left | | | | |
| to the EPO, member states and national courts to | | | | Fujitsu's Application [1996] was for a method of |
| resolve. It was felt that as technology | | | | modelling crystal structures for designing inorganic |
| developed a specific definition of what would | | | | compounds by manipulating the images of known |
| qualify as a patentable invention could potentially | | | | structures, a process that had previously been |
| restrict or omit emerging technologies. Also there | | | | done by linking bits of plastic. The examiner |
| was much disdain towards the US treatment of | | | | decided that the invention fell within the |
| Software Patents and wariness about letting the | | | | exclusions, being nothing more than a computer |
| practice infiltrate to Europe. | | | | program and a method for performing a mental |
| | | | | act. On Appeal to the High Court it was found |
| Finally, it was also widely believed that copyright | | | | that the invention was "in substance of a scheme |
| and database right were sufficient protection for | | | | or method for performing a mental act" The |
| software code, and that allowing patenting of a | | | | Court of Appeal dismissed the subsequent appeal |
| computer program might lead to double | | | | that followed, concluding that the important |
| protection, which would fall foul of competition | | | | question was whether the invention produced a |
| laws. | | | | technical contribution, not if it provided a new tool. |
| | | | | |
| While some countries grant patents for software, | | | | Thus, in the UK, computer implemented inventions |
| the patent practice in Europe requires an applicant | | | | are not patentable if they fall within the exclusions |
| to show their invention actually makes a | | | | of the Patent Act 1977 Section 1(2), which has |
| contribution in a technical field. | | | | similar provisions to those of Art 52. |
| | | | | |
| The European Patent Convention 2000 (as | | | | The current practice however comprises a 'four |
| amended), the legislative instrument governing the | | | | step test' that originates from the principles in |
| grant of European Patents at Art 52 (1) | | | | Aerotel/ Macrossan's case which involved a new |
| 'Patentable Inventions' states that "European | | | | automated method of acquiring the documents |
| patents shall be granted for any inventions, in all | | | | necessary to incorporate a company. It involved a |
| fields of technology, provided that they are new, | | | | user sitting at a computer and communicating |
| involve an inventive step and are susceptible of | | | | with a remote server, answering questions. The |
| industrial application." The section then lists a few | | | | four steps were: |
| groups of exclusions at Art 52 (2), namely:- (a) | | | | |
| discoveries, scientific theories and mathematical | | | | (1) properly construe the claim |
| methods; (b)aesthetic creations; (c) schemes, | | | | |
| rules and methods for performing mental acts, | | | | (2) identify the actual contribution; |
| playing games or doing business, and programs | | | | |
| for computers; and (d) presentations of | | | | (3) ask whether it falls solely within the excluded |
| information. However, it goes on to include a | | | | subject matter; |
| clause that the subject matter relating to these | | | | |
| exclusions shall be excluded from patentability | | | | (4) check whether the actual or alleged |
| "only to the extent to which a European patent | | | | contribution is actually technical in nature. |
| application or European patent relates to such | | | | |
| subject-matter or activities as such". | | | | In comparison with the EPO's approach, and in |
| | | | | light of cases such as Astron Clinica Ltd {2008], |
| Over the years there has been much banging of | | | | the practice has been challenged and even |
| heads about what the true meaning of the '...as | | | | dismissed as incorrect, especially because, some |
| such' - especially because the EPO has not | | | | of the UK decisions have not been clear in |
| provided a clear indication as to what the words | | | | identifying the technical contribution, or indeed |
| mean in relation to 'computer programs'. The | | | | what comprises technical character. Although |
| only explanation has been that for computer | | | | some judges have tried to interpret the four step |
| implemented inventions to be patentable, they | | | | test as being in line with the EPO approach, the |
| must have technical effect/ character, and solve | | | | judgement in Macrossan's also appears to reject |
| a technical problem, in addition to the other | | | | the fundamental principles set out in other earlier |
| requirements of patentability. However, this simply | | | | judgements for example the Fujitsu's Application, |
| begs the questions what is, or isn't technical | | | | a judgement that suggest the UK Courts should |
| character and what is or isn't a technical problem. | | | | seek guidance from the case law of the EPO. |
| | | | | |
| Case law is where one hopes to find the answers | | | | On 22nd October 2008, the President of the |
| to these questions. However, the EPO has been | | | | European Patent Office (EPO), Alison Brimelow, |
| somewhat inconsistent. | | | | made a referral to the Enlarged Board of Appeal |
| | | | | (the EPO's Supreme judiciary body) on several |
| In Vicom/Computer-related Invention [1987] the | | | | questions pertaining to the Patentability of |
| EPO said that a claim directed to a technical | | | | Computer Implemented inventions. With patent |
| process which is carried out under the control of | | | | applications for computer-based inventions |
| a program (to be implemented in hardware or | | | | experiencing the highest growth rate among all |
| software) cannot be regarded as relating to a | | | | patent categories filed at the European Patent |
| computer program as such as it is the application | | | | Office (EPO) over the past few years, it will be |
| of the program for determining the sequence of | | | | interesting to see what the response from the |
| steps in the process for which in effect protection | | | | Enlarged Board of Appeal will be. |