Software Patents Remain Available in Europe
July 12, 2005
On 6 July, 2005, European technology industries sighed with relief as the European Parliament voted, overwhelmingly, to reject the draft Directive on patent protection for computer-implemented inventions.
This vote means that existing patent law and established software case law prevails in Europe. Importantly, the damaging changes to the law proposed in the later texts of the draft Directive no longer threaten to lower the level of patent protection available in Europe for software and computer-implemented inventions. Now, under the existing patent law, computer-implemented inventions, including software inventions, qualify for patent protection in Europe provided there is technical character, such as a technical effect which goes beyond the normal physical interaction between software and the computer on which it is executed. Such inventions also have to meet the usual criteria of novelty, inventive step and industrial applicability.
The European Parliament’s vote followed a vociferous debate in which anti-patent groups lobbied for drastic changes to the law; whereas the European Council, supported by European technology interests, called for the Directive to do no more than clarify existing law so as to harmonise it throughout the European Union. Technology companies, large and small, had become very concerned about the legal uncertainty surrounding the level of protection proposed in the Parliament’s version of the Directive. This came to a head on 21 June, 2005 with the Parliament’s own legal affairs committee electing not to support many of the amendments introduced by the Parliament previously. Prospects for the Directive deteriorated further when a number of the larger political groups agreed to withdraw support for the Directive, in any form, after a debate on 5 July. Finally, Parliament, presumably concerned about its ability to achieve the amendments it wanted, voted overwhelmingly to reject the Directive on the following day.
The European Commission, responsible for the original proposal on the Directive, initially indicated it would respect Parliament’s wishes and therefore had no plans to submit fresh proposals in this area of law. However, it has since been reported that the Commission has offered to discuss options for a future proposal with Parliament’s committees, if Parliament so desires. Therefore, a further proposal in this area at some time in the future cannot be completely ruled out.
In What Ways Does Europe Differ from the United States?
There is considerable overlap in the types of computer-implemented inventions the US Patent and Trademark Office (USPTO) and European Patent Office will allow, although the USPTO has more tolerance in less technical fields.
The last decade has seen the United States liberalise its patent granting practice such that inventions which have “a useful, concrete and tangible result” can qualify for protection by patents. While novelty and non-obviousness are required, the USPTO test for patentability does not require a technical contribution to the field in question. Thus, nontechnical software and nontechnical business methods qualify for protection in the US provided there is novelty and inventive step.
In contrast, Europe requires all inventions to have “technical character.” The usual interaction between software and the hardware on which it runs is not sufficient. However, the hurdle has traditionally been low in that technical character has been recognised in many aspects. Technical character tends to be recognised, for example, where software concerns:
- control of industrial processes
- processing of data representing physical entities (e.g. images)
- internal functioning of computer systems, interfaces or networks, for example:
- improvements in efficiency, such as processing speed or data rate
- increased security or reliability
- better management of resources, etc.
This list is obviously not exhaustive.
Accordingly, in Europe, the use of an algorithm is patentable where the algorithm is reduced to an application which confers technical character by means of some programmable apparatus or technical method. However, for methods in particular, specifying technical means for purely nontechnical purposes or for processing nontechnical information will not automatically confer technical character. It is therefore recommended that important cases are reviewed by a European patent attorney as early as possible to check that the requirements for technical character are met.
Assessment of Software Inventive Step in Europe
The recent practice in the European Patent Office has been to look for a technical contribution to the art in a non-excluded area. In general, whether or not software makes this technical contribution is determined as part of the assessment of inventive step. In their assessment of inventive step European examiners usually identify an objective technical problem which is solved by the invention. The solution to the problem is what constitutes the technical contribution to the art. For example, if the problem is to overcome speed limitations in a prior art computer processor, the solution (technical contribution) could lie in a novel and inventive mode of control of mathematical operators (hardware) in the processor’s execution unit.
Again, patent prosecutors need to take care to ensure the specifications they are drafting provide adequate technical disclosure, in an appropriate form, of the components and methods which will later be used to demonstrate technical contribution. Not all specifications exported from the United States meet these requirements, although they may be perfectly acceptable under USPTO patent provisions.
Software Implementations of Business Methods
Particular expertise is required when the subject matter of a claim to a computer-implemented invention looks like a business method or something otherwise replaceable by a mental act. Inventions to playing games also fall into this category. Consummate with the above discussion, these types of computer-implemented inventions are allowable only where the required technical contribution can be demonstrated. The required technical contribution is often present in the computer systems and software for implementing business methods and the like, but it tends be more difficult to demonstrate for inventions in these areas, particularly if the specifications are not drafted sensitively.
In fact, recent case law of the Boards of Appeal of the European Patent Office attempts to modify the problem and solution test for determining inventive step of such inventions. Many regard this modified test, which disregards aspects of the problem relating to business methods (or relevant excluded matter), to be somewhat artificial, and in certain respects also legally flawed. However, this is the direction the Boards of Appeal appear to taking, for now at least, and it means getting parents to computer implemented business methods is becoming slightly more difficult where the computer implementation or software does not make the technical contribution.
Pure business methods, considered separately from the computer system which implements them, have never been allowable in Europe and will not be allowable in future. The same applies to computer code per se, algorithms, mental acts and methods of playing games, when such subject matter is presented and claimed in abstract.
Claim Formats Acceptable in Europe
On the assumption an invention meets the requirements for patentability, it may be appropriate for it to be claimed by means of a number of different claim categories available for computer-implemented inventions and software in Europe. The most appropriate language for use before the European Patent Office is indicated in established case law but may be interpreted differently, or may be unallowable altogether, in certain national offices or courts. For this reason specifications should aim to claim the invention by using an assortment of different claim formats, with the intention that at least some prevail in every jurisdiction. At the same time a commercial approach to claiming is essential, i.e. one should take into account what is offered or sold and how it is distributed, to ensure the monopoly is effective.
Pitfalls
If, as is sometimes the case, only human activities or mental acts are described in a patent specification, it is almost certain to be rejected in Europe. Likewise, describing and claiming only high level business processes is not recommended because there is nothing to fall back on when asked to demonstrate what the technical effect or contribution of the invention is.
Given that rejection of the Directive means the desired harmonisation was not achieved, one should bear in mind that the national courts and patent offices of individual European countries will continue to apply their own variations of the tests for patentability and validity and will still rely on national case law, perhaps in addition to case law from the Boards of Appeal of the European Patent Office, to interpret relevant statutes.
