The Patentability of Computer Programs in Europe: An Improved Interpretation of Articles 52(2) and (3) of the European Patent Convention

• Author: Julian Cockbain,Sigrid Sterckx
• Published date: 01 May 2010
• DOI: http://doi.org/10.1111/j.1747-1796.2009.00390.x
• Date: 01 May 2010

The Patentability of Computer Programs in

Europe: An Improved Interpretation of

Articles 52(2) and (3) of the European

Patent Convention

Sigrid Sterckx

Vrije Universiteit Brussel, Universiteit Gent and Fund for Scientif‌ic Research Flanders

Julian Cockbain

Frank B Dehn & Co, Oxford

After the introduction we discuss the European Patent Convention (EPC) provisions that are

relevant to the exculsion from patentability of computer programs and the broader relevance

of the fact that the European Patent Off‌ice’s (EPO’s) Enlarged Board of Appeal has recently

been requested by the EPO President to interpret these provisions. Next, we comment on the

relevance of the recent EPC revision, before addressing what a computer program must be

taken to mean for the purposes of the exclusion from patentability. After drawing attention

to the conf‌lict in case law that has developed in relation to the patentability of the computer

programs and brief‌ly summarizing the different approaches the EPO has taken to Article 52

of the EPC, we explain the evolution of these approaches, with particular attention to the

EPO’s dominant ‘‘technical character’’ approach. Subsequently, we address the questions put

to the Enlarged Board and how they might be answered. We set out our proposal for what we

believe is the approach the Enlarged Board should adopt. Since this approach might have

effects beyond the f‌ield of computer programs, we show that the EPO case law outside

computer programs would not be altered by our approach. Two alternative approaches are

then critically addressed before setting out our conclusion.

Keywords compter programs; European patents; Enlarged Board of Appeal; ‘‘as such’’

[I]t by no means follows that because of pressure from applicants, the

grant of patents for excluded categories should be allowed or that the

excluded categories (particularly . . . computer programs) should be

construed narrowly. Just as with arms, merely because people want

them is not suff‌icient reason for giving them (Jacob LJ in Aerotel Ltd v

Telco Holdings Ltd & Ors, paragraph 19).

Computer programs are big business—ask Bill Gates. Nonetheless, for whatever

reason, European patent law is clear that they are not patentable. This is not to say

that computers operating under the control of computer programs or processes that

involve the use of such computers are not patentable, just computer programs ‘‘as

such’’.

1

The Journal of World Intellectual Property (2010) Vol. 13, no. 3, pp. 366–402

doi: 10.1111/j.1747-1796.2009.00390.x

r2009 Blackwell Publishing Ltd366

The subject of this article is the manner in which the European Patent Conven-

tion (EPC) has been, and should be, interpreted in relation to subject matter which is

deemed not to be an invention under articles 52(2) and (3) of the EPC.

Since coming into effect in July 1978, the EPC has provided a uniform

approach throughout most of Europe as to what subject matter can and cannot

be patented.

European patents may be granted for ‘ ‘inventions’’, i.e. products or pr ocesses

as def‌ined in the ‘‘claims’’ of the patent . Despite early attempts to have ‘‘inv en-

tions’’ def‌ined in the EPC as having a t echnical character, this approa ch was

rejected when the original tex t of the EPC was adopted at a diplom atic conference

in 1973, and the EPC instead (a) def‌ines what characteristic features inventions

must have to be patentable (viz . novelty, inventive step and susce ptibility to

industrial application); (b) li sts certain things which, under a lega l f‌iction, are

not to be regarded as inventions (e.g . discoveries, esthetic creations and, impor-

tantly for the present article, ‘‘programs for computers’’) ; and (c) lists certain things

that, although they may be inve ntions, and may be new, involv e an inventive step

and be industrially applicable, m ay not be patented (e.g. plant variet ies and

inventions the commercial expl oitation of which would be contrary t o ‘‘ordre

public’’ or morality).

Predictably (see Kolle, 1974), many individuals and companies have sought to

be granted European patents for computer programs. Where subject matter in an

existing commercial f‌ield becomes patentable, the established players in that f‌ield are

placed in the situation of what is essentially a prisoners’ dilemma, where a player

obtains maximum benef‌it if she is the only holder of patents and the minimum

benef‌it if she is the only player without patents. Between these extremes are the next

best and next worst options, where no one holds patents and where everyone holds

patents, respectively. It should come as no surprise, therefore, to f‌ind established

players in the software industry arguing that ‘‘European’’ patents for software are

unnecessary and yet, at the same time, being major applicants for such patents and

being the appellants in some of the key legal decisions. Bill Gates, for example, has

stated that:

If people had understood how patents would be granted when most of

today’s ideas were invented and had taken out patents, the industry

would be at a complete standstill today. . . . The solution is patenting as

much as we can. A future startup with no patents of its own will be

forced to pay whatever price the giants ch oose to impose. . . . Established

companies have an interest in excluding future competitors (quoted in

Warshofsky, 1994, p. 170).

In a similar vein, in testimony in hearings on software patenting before the US

Patent and Trademark Off‌ice, Jerry Baker, Senior Vice President of Oracle

Corporation and head of product line development, said:

r2009 Blackwell Publishing Ltd

The Journal of World Intellectual Property (2010) Vol. 13, no. 3 367

The Patentability of Computer Programs in Europe Sigrid Sterckx and Julian Cockbain

At Oracle we believe that patents are inappropriate means for protecting

software and are concerned that the patent system is on the brink of

having a devastating impact on the software industry. In our opinion,

copyright and trade secret law is satisfactory to protect the developer’s

rights in software and to promote innovation in our industry. . . .

[A]s a defensive strategy, Oracle has expended substantial money and

effort to protect itself by selectively applying for patents which will

present the best opportunit ies for cross-licensing be tween Oracle and

other companie s who may allege patent infringement. . . .

Oracle has recommended that patent protection be eliminated for computer

software and computer software algorithms because software patents are

failing to achieve the Constitutional mandate of promoting innovation

and indeed are having a chilling effect on innovative activity in our

industry . . . (Baker, 1994).

Comparable observations were made particularly forcefully in the England and

Wales Court of Appeal judgment in Aerotel Ltd v Telco Holdings Ltd & Ors:

[T]here is pressure from would-be patentees on patent off‌ices. People are

applying for what are, or arguably are, business method and computer

program patents in signif‌icant numbers. This is evidenced, for example,

by the fact that whereas a few years ago the Comptroller [the Head of

the UK Patent Off‌ice] only had one or two hearings a year concerned

with these topics, he now has about four a week . . .

This pressure in part stems from the fact that . .. people have been

getting patents for these subject-matters in the USA. Since they can get

them there, they must as a commercial necessity apply for them everywhere.

If your competitors are getting or trying to get the weapons of business

method or computer program patents you must too. An arms race in

which the weapons are patents has set in. The race has naturally spread

worldwide (Aerotel Ltd v Telco Holdings Ltd & Ors, paragraphs 17–18).

As we will argue in this article, the European Patent Off‌ice’s (EPO’s) Technical

Board of Appeal responsible for computer-related inventions, Appeal Board 3.5.1,

has sought to f‌ind a way around the EPC’s prohibition of patents for computer

programs. This has primarily involved making the assumption that inventions must

have a ‘‘technical character’’ in order to be patentable. The Board’s ensuing, and to

our mind bizarre and incorrect, corollaries—which will be discussed at length

below—have been (1) that the things excluded by the EPC as not being inventions

should only be things which do not have a technical character; (2) that the prior art

against which the novelty or inventiveness of claimed subject matter is judged

cannot include material that is not of a technical character; and (3) that the features

of an invention as claimed that are not of a technical nature cannot be taken into

r2009 Blackwell Publishing Ltd

The Journal of World Intellectual Property (2010) Vol. 13, no. 3

368

The Patentability of Computer Programs in EuropeSigrid Sterckx and Julian Cockbain