JA Kemp International International Protecting software and computer-implemented inventions in Europe By John Leeming and Martin Jackson, JA Kemp categories of invention from patentability, in particular: A patent is generally considered to be the gold • discoveries, scientific theories and standard of intellectual property, potentially mathematical methods; offering true monopoly protection for a broad • aesthetic creations; inventive concept. Although copyright is also • schemes, rules and methods for performing important for software, its value has been mental acts, playing games or doing reduced by recent European Court of Justice business, and programs for computers; and judgments that copyright does not extend to • presentations of information. ‘look and feel’ or command syntax. However, the apparent prohibition on However, this was only to the extent that patenting computer programs in Europe has often the invention related to these things ‘as such’. discouraged the pursuit of patent protection The term ‘as such’ has over time been for software and computer-implemented used to diminish the prohibition to such an inventions. According to our research, in spite extent that it is now routinely possible to of the increasing penetration of software into all obtain patent protection for many computer parts of technology, the percentage of granted programs. In the test for patentability, it European patents that involve software has is what the computer program does that increased by only about 8% to 9% (see Figure 1). determines whether protection is available. It is clearly possible to obtain patent The meaning of these provisions was protection for many software and computer- first considered in a famous 1986 case called implemented inventions in Europe. Case law Vicom (T 0208/84). The decision noted that at the European Patent Office (EPO) is now the categories listed in the EPC as being settled and, as a result, it is possible to make excluded had in common the fact that they an early realistic judgement of patentability. were all “non-technical”. It was therefore Under the EPO’s now settled practice, concluded that an invention was not excluded it is necessary to consider both whether an invention is excluded from patentability and Figure 1: Granted European patents whether it has an inventive step (ie, sufficient involving software in their implementation as innovation to merit patent protection). The a percentage of all grants inventive step must be technical – business, administrative or abstract features are 12% ignored. A pure business method is therefore 10% not patentable in Europe and a computer- 8% implemented method must have some invention 6% in the technical aspects of the implementation. 4% 2% History 0% The European Patent Convention (EPC), originally agreed in 1973, excluded certain 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 www.iam-magazine.com IP Value 2014 21 International JA Kemp from patentability if it made a “technical method, but with no details of the computer contribution”, meaning that it had an effect or other means. For example, a claim might in the real world or related to something specify “a processor for determining the technical – in this case a digital image. price of a contract”. In such a case, the Following this decision, a number of cases step of determining the price of a contract pushed the boundaries of what is patentable. is considered to be non-technical and However, in 2000 the relevant Board of Appeal disregarded. The claim feature is therefore started to develop a new approach to software reduced to “a processor”, which is not new. and computer-implemented inventions which involve a mix of technical and non-technical Recent examples features. Following criticism by the UK Court Some examples of cases in which objections of Appeal, the new approach was endorsed based on non-technical subject matter were by the Enlarged Board of Appeal in Opinion not upheld on appeal include the following: G3/08 in 2011. • SAP/Fulfilment Coordination (T 0964/12) related to a system for tracking fulfilment of EPO’s current approach orders to a company, but went into details The EPO’s current approach to software and of the content and routing of messages in computer-implemented inventions can be the system (as can be seen from Figure 2), summarised as follows: which were considered to be technical. • A pure business or abstract method, • Network Appliance (T 0743/11) related containing no technical features at all, is to allocating space for files in a storage excluded from patentability, even if it is system, which was clearly technical. novel and has an inventive step. • If an invention involves any technical Some recent examples of cases rejected by the feature, however known or trivial, it EPO Boards of Appeal include the following: cannot be excluded. • Deutsche Börse – three cases (T 0907/09, T • When considering the novelty and 2078/08, T 2061/08) relating to valuation inventive step of such a mixed invention of futures contracts based on a basket (ie, an invention containing a mixture of of credit default swaps were rejected as technical and non-technical features), all of lacking any inventive technical features. the non-technical features are disregarded. Even claims specifying details of the algorithm used were rejected, as “the In other words, you need to isolate the algorithm serves an economic or financial technical features and determine whether they purpose without any technical relevance. are new and inventive in order to determine Accordingly, the algorithm does not enter patentability. into the examination for an inventive step”. • Ricoh (T 0972/07) claimed a computer How it works in practice system for managing the exchange between In a patent application, the claims define the different manufacturers of goods that had steps of the method or the features of the been collected for recycling and brought system that are to be protected. Features are to a central exchange facility. Again it was often defined by specifying function and the concluded that the computer system had no features alone determine patentability. inventive features after the administrative A pure business method claim is one that features had been disregarded. sets out only business or administrative steps, • Microsoft/Bayesian Scoring (T 1281/10) without even specifying that they are carried related to Bayesian techniques applied out by a computer or other technical system. to scoring of player skill in online multi- Such claims are relatively rare in the EPO and player computer games. This was held to are routinely rejected. be a game rule, not a technical matter. It is more common for a business method to be claimed in terms of a computer system The definition of ‘technical’ is uncertain or means for carrying out steps of the and the Boards of Appeal have resisted calls 22 IP Value 2014 www.iam-magazine.com JA Kemp International Figure 2: SAP/fulfilment coordination 500 Determination of physical Logical receiver Transformation from sender technical addressing determination based on format and values into information (address, business level routing rules receiver format and values transport protocol,...) 503 555 Sending Integration server Receiving component component 505 system system 557 Receiving Sending Message 520 Message 520 Message 520 Message application 520 application Header: R Header: Header: Header: Physical A V Logical -receiver R -sender -receiver Mapping -receiver address address routing Outbound -... -... framework -... resolution -... Inbound framework proxy framework proxy Body Body Body Body 510 outbound outbound inbound inbound 515 document 530 document 545 document 559 document 525 535 Get routing rules Get transformation Get receiver address Routing model Mapping Service 542 directory 547 directory directory 540 Integration directory 548 for its meaning to be clarified. They take the rejecting many cases that the EPO would likely view that they recognise technical subject have allowed. matter when they see it. Rest of the world National patent offices in Europe Patents are inherently territorial and The patent statutes of the member states of definitions of what can be protected are the European Patent Office are harmonised with harmonised only to a limited extent. An the European Patent Convention. Therefore, international business must bear in mind the the different patent offices ought to take position in all significant markets and those the same approach as the EPO. Although the of its competitors. Most countries restrict or German Patent Office has sometimes been said prohibit patents for business methods and to be stricter than the EPO, the main dissident other forms of abstract invention, but the is the UK Intellectual Property Office (UKIPO). criteria applied vary from country to country. The UKIPO’s general approach, following A detailed analysis of the position in other UK case law, is to identify what further countries is beyond the scope of this chapter. contribution the invention makes over the It is worth briefly mentioning the situation prior art (relevant inventions previously in the United States. The State Street Bank case disclosed), and then decide whether that of 1998 was widely seen as throwing open the contribution is technical. This could be seen doors of patentability to any method. A flood of as simply a reordering of the EPO approach business method patents followed, with some (which is to identify technical features, then ludicrous examples. The doors were closed determine whether they are inventive), and UK substantially by the Bilski case, decided by the courts have said that it ought to give the same US Supreme Court in 2010, and the Court of result. However, the UKIPO takes a narrow Appeals for the Federal Circuit’s judgment in view of what is a technical contribution, CLS Bank v Alice. However, there remains a lack www.iam-magazine.com IP Value 2014 23 International JA Kemp of clarity over the exact test for patentability.