The basic provisions for computer implemented inventions and all other inventions are set out in Articles 52 and 56 EPC (EPC = European Patent Convention). An issue for computer implemented inventions is that according to Articles 52(2) and Art. 52(3) EPC “programs for computers” as such are not regarded as inventions. In the following chapter, these Articles are examined in more detail, with the information is based on the Enlarged Board of Appeal decision G1/19, points 24 to 27.
The first basic article of the EPC re patentability
Article 52(1) EPC: 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.
“All fields of technology” and “Invention” of Art. 52(1) EPC
-
The reference to “all fields of technology” was introduced in the course of the EPC’s revision (EPC 2000) to bring Article 52 EPC into line with Article 27 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The amendment makes clear that patent protection is reserved for creations in the technical field (see OJ EPO Special edition 4/2007, 48).
-
The claimed subject-matter must have a “technical character”, or, more precisely, involve a “technical teaching”, i.e. an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means (Basic Proposal for the Revision of the EPC, document MR/2/00, page 43, no. 4). It is on this understanding of the term “invention” that the patent granting practice of the EPO and the jurisprudence of the Boards of Appeal are based. In other words the “technical character” is an implicit requisite of an “invention” within the meaning of Article 52(1) EPC.
-
The term “all fields of technology” expresses the intent of TRIPS not to exclude from patentability any technical inventions, whatever field of technology they belong to, and therefore, in particular, not to exclude programs for computers as mentioned in and excluded under Article 52(2)© EPC (T 1173/97, OJ EPO 1999, 609, Reasons, point 2.3).
-
The Basic Proposal for the Revision of the EPC explicitly states that the above considerations on the technical character of inventions apply to the assessment of computer programs.
Non-exhaustive list of “non-inventions”
Article 52(2) EPC contains a non-exhaustive list of “non-inventions”, i.e. subject-matter which is not to be regarded as an invention within the meaning of Article 52(1) EPC (T 154/04, DUNS LICENSING ASSOCIATES, OJ EPO 2008, 46, Reasons, points 6, 8).
Article 52(2) EPC:
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.
The list includes “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers” (Article 52(2)© EPC). Even though the “non-inventions” in Article 52(2)© EPC cover a broad range of exclusions, they have in common that they refer to activities which do not aim at any direct technical result but are rather of an abstract and intellectual character (T 22/85, OJ EPO 1990, 12, Reasons, point 2).
In other words, based on this list of “non-inventions”, additional conditions have to be fulfilled for patenting software-related inventions compared to inventions in, for example, electrical engineering or mechanical engineering.
Background to computer program: A computer program is a sequence of instructions in a programming language, which a computer can execute and which serve the control in a computer, in order to solve a certain task. For this purpose a program contains an intellectual concept (program idea, program contents, program code or program listing) - see Anders GRUR 90, 498, 499; Melullis GRUR 98, 843, 851. This intellectual concept requires implementation to be effective, so that the computer can be controled specifically and the electrical condition in its memory be changed. Defining a computer algorithm can be seen in two different lights. On the one hand it may be seen as a pure mathematical-logical exercise; on the other it may be seen as defining a procedure to make a machine carry out a certain task. Depending on which of these views is favoured the question whether computer programming always involves "technical considerations" may be answered negatively or positively.It was apparently the intention of the writers of the EPC to take the negative view, i.e. to consider the abstract formulation of algorithms as not belonging to a technical field (EBoA G3/08, Nr. ABl 11, 10, Nr 13.5.1).
Subject-matter or activities “as such”
Article 52(3) EPC limits the exclusion from patentability of the subject-matter and activities referred to in Article 52(2) EPC to “such subject-matter or activities as such”.
Article 52(3) EPC:
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.
This limitation is understood as a bar to a broad interpretation of the “non-inventions” listed in Article 52(2) EPC (G 2/12, OJ EPO 2016, A27, Reasons, point VII.2(3)(b), penultimate paragraph, referring to T 154/04, Reasons, point 6).
As soon as in a computer implemented inventions a technical feature is claimed, then it is no longer regarded as a non-invention “as such”. This is called the “any hardware approach” which will be discussed in the next chapter.
In other words, Art. 52(3) EPC provides the possibility to apply for a patent for software-related inventions.
Inventive step
Article 56 EPC gives a negative definition of the “inventive step” required under Article 52(1) EPC, by setting out that an invention shall be considered as involving an inventive step “if, having regard to the state of the art, it is not obvious to a person skilled in the art”. In order to assess inventive step in an objective and predictable manner, the so-called “problem-solution approach” was developed, consisting of the following stages:
(i) determining the “closest prior art”;
(ii) assessing the technical results (or effects) achieved by the claimed invention when compared with the “closest prior art” determined;
(iii) defining the technical problem to be solved, the object of the invention being to achieve said results; and
(iv) considering whether or not the claimed solution, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person (see, for example, Case Law of the Boards of Appeal, 9th ed. 2019, I.D.2).
Computer implemented Inventions (CII)
According to the Guidelines of Examination at the EPO: “Computer-implemented invention” is an expression intended to cover claims which involve computers, computer networks or other programmable apparatus wherein at least one feature is realised by means of a computer program.
Conclusion
For example, if a patent application is filed and claimed for a device-related invention – such as a bicycle – then the term “inventions” of Art. 52(1) EPC is not questioned. Such a subject matter is an invention according to Art. 52(1) EPC, since it has in general only technical features.
In contrast, if for a computer implemented invention a patent is applied, then there are features regarding “programs for computers” or “mathematical methods” (the latter are of interest regarding machine learning) that are considered to be non-inventions as such according to Art. 52(2) and (3) EPC. Nevertheless, it is possible to get a patent on computer implemented inventions, but there are further preconditions e.g. in comparison to the bicycle invention. A first precondition is, that at least one technical feature has to be claimed in a computer implemented invention claim which we will see in the next chapter.