Patentability of Computer Programs or Software

Critically consider the patentability of computer programs or software in Europe?

History Of Patentability

The concept of patents is considered to have originated from the Venetian Statute of 1474 in Italy, issued by the Republic of Venice. The main aim of this concept was to recognize the efforts of inventors in the form of innovative devices communicated to the Republic, thus deserving legal protection against potential infringers. This practise had encouraged the merchandisers in Venice to bring out products and processes not known at that time.

In England, the first patent was registered in the name of John of Utynam by King Henry VI in 1449, for a process of making stained glass. (Macqueen 2008)

European Patent Convention

The European Patent Convention (EPC) is a multipartite agreement, which offers autonomous legal system to all contracting states for the grant of patents governed by the European Patent Organisation. After long negotiations by the contracting states of European Patent Organisation in 2000, there were certain new reforms introduced in the provisions of original convention of 1973, which was suppose to be antiquated due to fast growth in international law and procedural flaws of EPO. There were widespread changes made in European Patent System with the emergence of European Patent Convention, 2000, which came into force on 13th December 2007. (Pierre-André Dubois and Shannon Yavorsky, 2008)

Patentable Inventions

Article 52(1) of EPC 2000 provides that, “European patents shall be granted for any invention, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application”. (Macqueen 2008)

Exclusions To Patentability – Article 52(2) Of Epc 2000

“The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(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.

Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject matter or activities as such”. (Macqueen 2008)

Substitute Protection Of Copyright

Copyright protects expression of ideas or functions whereas functionality is protected by patents. The provisions of Article 52(2) raise some doubts within its boundaries. Subsection (b) excludes aesthetic creations which can be protected by copyright, is justified thus placing less burden on patent system. The application of the same principle would be unreasonable purely for two reasons, namely

• unlike aesthetic creations, computer programs are functional in nature.
• the nature of the program determines the worth beyond its expressive properties, restricting infringers to benefit from it.

Patent protection is more favourable to computer program or software than Copyright option. (Attridge, 2001)

The above analysis explains the point that some inventions falling under the category of excluded matter can be protected by copyright. For example, inventions related to aesthetic creations deserve copyright protection rather than patents. Sometimes, such inventions unreasonably entails burden on the patent system. Unlike aesthetic creations, computer programs are well protected by patents as compared to copyrights.

Interpretation Of Proviso ‘As Such’ In Paragraph 2 Of Article 52(2) Of European Patent Convention 2000

Many patent applicants, attorneys, examiners and judges are facing the difficulty to interpret the words “as such” in paragraph 2 of article 52(2) of EPC 2000. The European Patent Convention quashes out ‘software as such’ which still seems to be vague, even after numerous discussions by the European Patent Office (EPO) Boards of Appeal over last two decades. (Bakels, 2009) “The as such qualification is extremely important. It means that only claims which fall squarely within a category of excluded matter will be struck down. Inventions which straddle patentable and non-patentable matter can survive if the technical features meet the other criteria for patentability. ” (Macqueen 2008). The limitation created by such words in article 52(2) of EPC 2000 has restricted the claims to patentability falling under the category of excluded matter enumerated in the above article and consideration towards inventions giving evidence of technical contribution in technical field.

Let us understand the words “technical contribution in technical field”

The notion of ‘technical contribution in technical field’ is understood as transformation in the state, operation, or function of something tangible induced by the technical effect. The framers of EPC 2000 failed to consider the patentability of computer-related inventions on the basis of that invention making technical contribution in that respective field and left unchanged by expressing the view of drawing attention in future Conference. The decision of Board of Appeal in the Vicom’s case offers clear justification of granting patent to computer program inventions on the evidence of making technical contribution in technical field rather than more fundamental issues of patentability. The claim of Vicom in his application was “a method of digitally filtering a data array” but the application was rejected by the Examining Division on the basis of its findings which concluded the claim, first as being a mathematical method, and secondly as being a computer program. On Vicom’s appeal, the Board of Appeal set aside the decision of Examining Division amended the Claim 1 to be read as “A method of digitally processing images in the form of two-dimensional data array”. The Board of Appeal construed that the revised claim was capable of producing technical effect as a digital image is a physical entity and thus should be granted patent. A eye-opener delivered by the Board’s decision in Vicom’s case is the acceptance that “even if the idea underlying an invention can be considered to reside in a mathematical method, a claim directed to a technical process in which such method is used does not seek protection for the mathematical method as such” Basically, it is clear that, even if the invention is plunged in an excluded category, a claim will be patentable on the ground of making ‘technical contribution’ to the state of the art. (Davies, 1998)

The meaning of “as such” restriction is that any inventions which fall in the category of excluded matter will not be considered unless and untill it makes any technical contribution to the art. The judgement of Vicom’s case has clarified the patenting of computer programs to a great extent on the basis of technical contribution made by that invention. This decision has compensated for the ignorance of the framers of EPC 2000. It has made the way for the excluded subject matter to patentability with the requirement of technical features embeded in the invention.

The Outlook Of Epo On Examination Of Computer-Related Inventions

The term ‘invention’ is not clearly defined in the guidelines of EPC, which relies on the different national patent systems of its Member states. However, the aspect of ‘technical character’ is apparent in most of the former national patent systems of present EPC Member states as follows:

• An invention solving technical problem;
• the solution of a problem produces technical effect;
• the characteristics of invention are technical in nature, thus solving a problem;

The two important aspects to be considered in the examination of computer-related inventions are “computer program as such” and “technical character”. A claim of computer program falling under the restricted area of ‘as such’ will not be considered to be patentable, irrespective of its content. If a claimed subject-matter possesses a technical character which helps in solving a technical problem or its features makes a technical contribution in IT world, then it makes its way to patentability. The modus operandi adopted by EPO in examining the technical contribution made to the art was vague, thus lacking to define what is meant by “technical”. It is not convincing to consider the expertise of inventors in IT field as non-technical. The above approach does not even differentiate between the serious issues of “novelty” and “inventive step”, which could have simplified the procedure of granting patents to computer programs or software in Europe. There are two widely cited cases of the Board of Appeal of the EPO, in which the technical character of software-related invention was approved. They are “T06/83, IBM Data processor network” and “T1002/92 PETTERSSO/ Queuing system”. Finally, in the light of three cases, “T158/88 SIEMENS/Character shape”, “T38/86 IBM/Text Processing”, and “T204/93 ATT/Generation of Computer Components”, the claims were considered to be of non-technical nature and, therefore, not patentable. After these precedents, there are still ongoing negotiations to adopt the best way of protecting computer programs or software. But the fact is, that there are yet two barriers like “as such proviso” excluding computer programs to patentability and the requirement of “technical character or effect”. (Liesegang, 1999)

This article features the criteria to be considered while examining the computer-related invention. It emphasizes on two requirements which are “as such” qualification and “technical character”. It criticizes EPO’s approach towards the examination of grating patents to computer programs on the ground of technical character aspect that their approach fails to define the term “technical” and even lack of differentiation between “novelty” and “inventive step” which could clarify some doubts on granting patents. The author of the article finds it difficult to digest the fact that the claims of expert inventors in IT field lack technical character, thus not deserving patent protection. In spite of many precedents, there are debates in progress to find the best possible way to protect the computer programs or software. Indeed, the “as such” restriction and “technical character” still blocks the way of patentability of computer-related inventions.

The Criticism Of European Economic And Social Committee (Esc) Towards The Epo’s Interpretation Of Article 52(2)

The year 2002 had witnessed the European Economic and Social Committee (ESC) criticizing the European Patent Office’s analysis of article 52(2) of the European Patent Convention as ‘the product of legal casuistry’. The ESC has described the definition of the term ‘invention’ in article 52(2) as negative, because of excluding several categories of subject-matter to patentability. The clarification is provided in Article 52(3) by inserting the proviso ‘as such’. The EPO’s approach towards defining the term ‘invention’ can be perceived from the Board’s decisions in 1980 ‘s cases, such as ‘Christian Franceries/Traffic Regulations’, ‘Stockburger/Coded Distinctive Mark’, ‘VICOM/Computer-Related Invention’, ‘Kock & Sterzel/X-ray Apparatus’, ‘Sternheimer/Harmonic Vibrations’ and ‘IBM/Computer-Related Invention’. These judgements had justified the nature of Article 52(2) by revealing that the existence of ‘technical character’ would resolve the problem of patenting computer-related inventions, hence planted the roots for the upcoming inventions leading to the healthy growth in this field. In the late 1980s, there were issues between individual Boards and parties, where those parties demanded the Board to elucidate the importance of ‘technical character’ of Article 52(2) with regards to computer-related inventions. In this phase, there were two theories recognised, namely ‘whole contents approach’ in which subject matter was supposed to be considered as whole, used by technical means to solve a technical problem or produce technical effect, and ‘contribution approach’ in which the subject matter was supposed to be producing a result in a field covered by article 52(2), thus supporting denial of patents for computer systems. Post 1999, the approach of the board was much clear and straight-forward than that during last decade. This can be traced by the Board’s adoption of ‘whole contents theory’ of technical character to interpret the principles of EPC, especially article 52(3), considering the legal aspects along with the political factors associated with it. The pressure was built on the European states by Article 27(1) of TRIPS with regards to patentability of inventions in all fields of technology and to liberalize the patent granting practices with other jurisdictions such as United States of America and Japan, in order to harmonize the patent law at international level. The ESC went on to criticize the EPO’s approach of ‘whole contents theory’ which was turned down because of lack of support and reasoning. (Pila, 2005)

Here, the author Justine Pila has described the intense criticism of European Economic and Social Committee (ESC) towards the interpretation of article 52(2) of EPC by the European Patent Office. Certain board’s judgements in 1980’s cases has clarified the position of granting patents to computer programs on the basis of technical character, thus opened the way for forthcoming inventions leading to strong competition in the field. From 1999, the board embraced a new concept of dealing with the “technical character” aspect in the light of legal aspects and political factors connected with it. The TRIPS provision has compelled the Euorpean states to liberalize the patent system in order to match with other jurisdictions, leading to harminization of international patent law.

Uk’s Approach Towards Granting Patents For Computer-Related Inventions

On the verge of 20th century, the EPO’s approach was different from three cases starting with ‘Pension Benefits’ case which was earlier consistent to ‘VICOM’ and it was termed as ‘any hardware’ approach in ‘Macrossan/Aerotel’ case. Those three cases are ‘Pension Benefits’, ‘Hitachi/Auction Method’, ‘Microsoft/Data Transfer with expanded clipboard formats’. The Court of Appeal in UK was stubborn enough to reject the approach of EPO cases and High Court decisions. It felt obliged by following its previous decision in Merrill Lynch and followed the four-part test set out in Macrossan/Aerotel case. The criticism of UK Court of Appeal regarding the European approach can be found in the statement, “European patent judges ought, so far as they can, try to be consistent with one another, particularly in relation to the interpretation of national laws implementing provisions of the EPC”. The UK Court of Appeal believes that the correct approach is that of ‘VICOM’ in EPO and ‘Merrill Lynch’ in the United Kingdom, using the four-part test. ‘Merrill Lynch’ case has created a expectation that the EPO Enlarged Board of Appeal will simplify its approach. There are constant efforts made in harmonizing other patent areas across, whereby patentability of computer program is ignored, thus pushing ahead for future negotiations. (Lees, 2007)

Two years back, there was a benchmark case of ‘AEROTEL’ in the patent industry decided by the UK Court of Appeal. After considering the UK and EPO approach towards the scope of exclusions to patentability in article 52 of EPC, Jacob L.J devised the following four-step test.

1. properly construe the claim;
2. identify the actual contribution;
3. ask whether it falls solely within the excluded subject matter;
4. check whether the actual or alleged contribution is actually technical in nature.

This test was not consented by the Board of Appeal of EPO, hereby criticising it as ‘not consistent with a good-faith interpretation of EPC’. (Sharp, 2009)

In December 2006, the Gowers Review of Intellectual Property proposed that the UK should review its guidelines of not granting patents beyond its current limits, inspite of prevalent patenting practise of computer-related inventions all over Europe. (Macqueen 2008)

There was conflict of interests between the Intellectual Patent Office (IPO) and the patent applicants in succeding cases with regards to the application of the third and fourth stage of test recognized in the Aerotel case. The IPO elucidated that if any claim falls into the third stage of excluded matter, than the question of “technicality” does not arise. In Symbian case, the patent application was rejected by IPO on the ground that it was a computer program, which fall under the excluded matter of the act. When this issue reached the doors of High Court, the learned judge took different approach than IPO. It interpreted the reading of Aerotel approach that it does not involve completely seperate stages of analysis. It was more keen to discover whether an invention falling in excluded matter category makes a relevant technical contribution to the art. The High Court found that the claimed invention solves a technical problem within the computer, as a result it improves the realibility of the computer. Even the Court of Appeal consented to the decision of High Court, which simplified the UK law on the issue of patenting software. The concept of technicality is still not clear and specific, thus forms uncertainty and subject of criticism. (Mauny, 2009)

Cross Border Patent Systems

Patenting computer-related inventions is the issue making headlines and topic of discussion in many countries. The pressure has been mounting in order to furnish enough protection to the fruitful efforts and monetary investments of inventors in software market at both national and international level, because of the speedy growth in the field of Information Technology and increasing popularity of computer software. The inefficiency of World Intellectual Property Organization and Universal Copyright Convention to harmonize the Intellectual Property Law in global market can be marked by the conflict of approach by many nations towards the patentability of software at international level. The present condition of protecting software, through either copyright or patent protection laws, is in the state of disorderedness throughout the world. Many developed countries in the field of computer software like United States, West Germany, France, Japan and Canada are experiencing difficulties to unify the patent-granting laws for computer software.

1. United States :

The act governing the granting of patents is the Patent Act 1952, Title 35 USC. Section 101 of the above act states:

“Whoever intents or discovers any new and useful process, machine manufacture or composition of matter, or any new or useful improvement thereof, may obtain a patent therefore, subject to conditions and requirements to this title”.

Under the US Patent Act, computer program or software was not specifically precluded. The US Judiciary has the freedom to interpret the above section pertaining to granting patents to new technologies, bearing in mind the established principles. In Gottschalk v Benson, the US Supreme Court declared that it does not intend to exclude computer program from the patent system. For the first time in 1980s, the Supreme Court regarded a computer process as a statutory subject matter under Section 101 of 35 USC in a widely cited case of Diamond v Diehr. To ease the patent system in US, the Supreme Court precisely illustrated the exceptions to patentable inventions that are divided into three basic groups of subject matter. They are laws of nature, natural phenomena and abstract ideas. Unlike EPO approach, the US Supreme Court has stressed upon the significance of considering the invention as a whole in determining the eligibility of the claimed invention patent protection under Section 101 35 USC. The Federal Circuit in AT&T Corp. v Excel Communications Inc, extended the interpretation of Section 101 that it should be ascertained for all types of claims in the same way regardless of that claim being a machine or a process. The main criteria to be considered in a patentable subject matter are ‘useful, concrete and tangible result’ aspect. The initial case law of 1990 demonstrated the patentability test for software inventions in US courts which considers the computer made for special use, capable of performing particular functions or manipulate data to achieve a practical application. At the end of this decade, this theory was modified post State Street and AT&T case stating, patents shall be granted to software-related inventions if it produces useful, concrete and tangible result. (Park, 2005)

2. Japan :

The definition of patentable invention under the Japanese Patent Law is as follows;

“a highly advanced creation of technical ideas utilising natural laws”.

Therefore, the exceptions to patentability of computer-related inventions can be construed from the definition itself as ideas involving absolute use of laws other than natural ones, like economic principles, arbitrary arrangements, mathematical methods or human mental activities. As compared to EPO and US approach in the field of software patents, the Japanese Patent system has prescribed examination guidelines instead of case laws to determine eligibility of software inventions to patentability. The 1993 Guidelines regarded a computer-related invention to be patentable only if its program performs certain functions with the help of hardware resources within or outside the computer. Like US, JPO follows the same principle of examination by considering the invention as a whole. In the year 2000, the guidelines were revised, which awards computer-related invention the position of ‘statutory invention’ and managed as ‘invention of a product’.

“In the Examination Guidelines of JPO dealing with patentability of computer-related inventions, there are some examples which exemplify the claims that utilise hardware resources. The following functions enable a claim to be patentable:

• a control function for apparatuses such as rice cookers, washing machines, hard disk drives or engines;
• information processing based on the physical or technical properties of an object such as the number of revolutions of an engine or rolling temperature”.

After contrasting major three patent offices, it is induced that every office has a different view-point to ascertain the scope of the requirement ‘technical nature’ in the matter of extending patent rights for computer programs or software. The USPTO avoids technical aspect of the invention and mainly concentrates on the tangible result, adopting broad modus operandi for a software patent. In US, the only requirement for promoting software inventions to patentability is ‘useful, concrete and tangible result’, whereas in Europe, the software invention is required to draw out the technical features for successful grant of patent under the provisions of EPC. Regardless of amendments and the precedents, the EPO’s approach is still narrow with respect to software patents. It is obvious that the chances of European Patent passing the US examination procedure, is more feasible than vice versa. The JPO appears to have adopted a middle path. The Japanese point of view is similar to that of EPO, but not so intense. (Park, 2005)

The Need Of Harmonization

There is an urgent need of certainty in the approach of different patent systems granting patents to computer programs for the benefit of both, applicants and third parties. At present, there is different approach adopted by different jurisdictions, thus increasing uncertainty in the field and affecting the economy. If this situation continues, then the inventors would not be motivated to come up with new inventions or ideas which will in turn degrade the technology and growth of IT field. Due to negotiations with EPO, the UK Intellectual Office has started following the EPO’s approach in relation to patentability of computer programs or software, in order to harmonize the law. Following the recent trends, other European states have tried to change their patent laws in order to merge with the Global Patent system. (Wallis, 2009)

Conclusion

Patentability of computer programs or software is one of the hot topic in the IPR field around the world. Every nation attempts to simplify the patent laws towards computer-related inventions based on two factors, “as such” provision and majorly “technical contribution to the art”. The conflict of interests between many jurisdictions still exists with regard to patenting computer programs. It has increased the rate of uncertainty in the IT field which is booming gradually. After analysing all the above factors, I conclude that global patent system for computer programs or software should be harmonized by all jurisdictions in the best interests of inventors, third parties, Patent Offices and majorly for the World economy. This is the best way to fight the problems for granting patents in modern world.

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