Computer Implemented Inventions - Where are we now?

The EPO define a computer implemented invention as an invention that works by using a computer, a computer network or other programmable apparatus. To qualify, the invention also needs to have one or more features which are "realised wholly or partly by means of a computer program".

Before the European Patent Convention 1973, the implementation of the specific provisions relating to computer related inventions was generally left to the EPO, member states and national courts to resolve.  It was felt that as technology developed a specific definition of what would qualify as a patentable invention could potentially restrict or omit emerging technologies. Also there was much disdain towards the US treatment of Software Patents and wariness about letting the practice infiltrate to Europe.

Finally, it was also widely believed that copyright and database right were sufficient protection for software code, and that allowing patenting of a computer program might lead to double protection, which would fall foul of competition laws.

While some countries grant patents for software, the patent practice in Europe requires an applicant to show their invention actually makes a contribution in a technical field.  

The European Patent Convention 2000 (as amended), the legislative instrument governing the grant of European Patents at Art 52 (1) 'Patentable Inventions' states that "European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application." The section then lists a few groups of exclusions at Art 52 (2),  namely:- (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; and (d) presentations of information.  However, it goes on to include a clause that the subject matter relating to these exclusions shall be excluded from patentability "only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such". 

Over the years there has been much banging of heads about what the true meaning of the '...as such' - especially because the EPO has  not provided a clear indication as to what the words mean in  relation to 'computer programs'. The only explanation has been that for computer implemented inventions to be patentable, they must have technical effect/ character, and solve a technical problem, in addition to the other requirements of patentability. However, this simply begs the questions what is, or isn't technical character and what is or isn't a technical problem.

Case law is where one hopes to find the answers to these questions.  However, the EPO has been somewhat inconsistent.

In Vicom/Computer-related Invention [1987] the EPO said that a claim directed to a technical process which is carried out under the control of a program (to be implemented in hardware or software) cannot be regarded as relating to a computer program as such as it is the application of the program for determining the sequence of steps in the process for which in effect protection is sought and that such a claim is allowable under art 52 of the EPC.

Then came Merrill Lynch's Application [1989] establishing that there must be "some technical advance on the prior art in the form of a new result." Although Vicom established that programs running on known hardware were patentable, many applications for such programs had been hopelessly unsuccessful.

Fujitsu's Application [1996] was for a method of modelling crystal structures for designing inorganic compounds by manipulating the images of known structures, a process that had previously been done by linking bits of plastic. The examiner decided that the invention fell within the exclusions, being nothing more than a computer program and a method for performing a mental act. On Appeal to the High Court it was found that the invention was "in substance of a scheme or method for performing a mental act" The Court of Appeal dismissed the subsequent appeal that followed, concluding that the important question was whether the invention produced a technical contribution, not if it provided a new tool.

Thus, in the UK, computer implemented inventions are not patentable if they fall within the exclusions of the Patent Act 1977 Section 1(2), which has similar provisions to those of Art 52.

The current practice however comprises a 'four step test' that originates from the principles in Aerotel/ Macrossan's case which involved a new automated method of acquiring the documents necessary to incorporate a company. It involved a user sitting at a computer and communicating with a remote server, answering questions. The four steps were:

(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.

In comparison with the EPO's approach, and in light of cases such as Astron Clinica Ltd {2008], the  practice has been challenged and even dismissed as incorrect, especially because, some of the UK decisions have not been clear in identifying the technical contribution, or indeed what comprises technical character. Although some judges have tried to interpret the four step test as being in line with the EPO approach, the judgement in Macrossan's also appears to reject the fundamental principles set out in other earlier judgements for example the Fujitsu's Application, a judgement that suggest the UK Courts should seek guidance from the case law of the EPO.

On 22nd October 2008, the President of the European Patent Office (EPO), Alison Brimelow, made a referral to the Enlarged Board of Appeal (the EPO's Supreme judiciary body) on several questions pertaining to the Patentability of Computer Implemented inventions. With patent applications for computer-based inventions experiencing the highest growth rate among all patent categories filed at the European Patent Office (EPO) over the past few years, it will be interesting to see what the response from the Enlarged Board of Appeal will be.