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EPO case law

For information about the organisation, see European Patent Office. This article is about the EPO's decisions.

The European Patent Office grants software patents and has a detailed case law of doing so. However, the case law is sometimes confusing because they claim to not allow software patents, so their approvals talk only indirectly about the issue.

The important decisions of the EPO come from the various Boards of Appeal, and more importantly from the Enlarged Board of Appeal.

Key cases

In 2006, Hartmut Pilch summarised the EPO's policy of granting software patents as being mostly based on "adventurous landmark decisions of their Board of Appeal in 1986 [Vicom] and 1997".[1]

Newest first:

  • 2014: TBA 3.5.06 denies patentability of a programming language
  • 2010: T354/07 (overview: Bad News For Meta-Methodists)
    "[A]n invention which as a whole falls outside the exclusion zone of [art 52(2)] (i.e. is technical in character) cannot rely on excluded subject matter alone, even if it is novel and non-obvious (in the colloquial sense …), for it to be considered to meet the requirement of inventive step. … [I]t cannot have been the legislator's purpose and intent on the one hand to exclude from patent protection such subject matter, while on the other hand awarding protection to a technical implementation thereof, where the only identifiable contribution of the claimed technical implementation to the state of the art is the excluded subject-matter itself. It is noted that here the term 'contribution' encompasses both means (i.e. tangible features of the implementation) and effects resulting from implementation"
  • 29 June 2007, Gameaccount Ltd T 1543/06:
  • (year??) T0154/04
  • 15th November 2006, Duns Licensing Associates T 0154/04 - which was mentioned in Symbian v. Comptroller General (2008, UK) as having considered the Aerotel v. Telco (2006, UK) ruling
    "The claimed method requires the use of a computer. It is therefore technical in character and constitutes an invention within the meaning of art 52…"
  • (year??), File search method/Fujitsu T1351/04:
  • (year??), Sharp T1188/04
  • T935/97 and T1173/97 - mentioned here: [1]
  • 1990, IBM Corp./Computer-related invention (1988) T115/85 - application upheld
  • 1990, IBM Corp./Data processor network (1988) T06/83 - application upheld
    "a method for obtaining and/or reproducing an image of a physical object or even an image of a simulated object (as in computer-aided design/computer-aided manufacturing … systems) may be used e.g. in investigating properties of the object or designing an industrial article and is therefore susceptible of industrial application. Similarly a method for enhancing or restoring such an image, without adding to its informational content, has to be considered as susceptible of industrial application ... a claim directed to a technical process which process is carried out under the control of a program (… in hardware or in 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 ... Generally claims which can be considered as being directed to a computer set up to operate in accordance with a specified program (whether by means of hardware or software) for controlling a technical process cannot be regarded as relating to a computer program as such … making a distinction between embodiments of the same invention carried out in hardware or in software [is] inappropriate"
  • 1987 (or 1986?), Vicom/Computer-related invention T0208/84:

Overview by UK Lord Justice Jacob

In the 2006 case Aerotel v. Telco in the UK, Lord Justice Jacob wrote an overview of the EPO's case law.

From pages 11 and 12:

The EPO's Board of Appeals have given various incompatible rulings. This is normal since the members change per board.

(1) The contribution approach

Ask whether the inventive step resides only in the contribution of excluded matter – if yes, Art.52(2) applies.

This approach was supported by Falconer J in Merrill Lynch but expressly rejected by this Court.

(2) The technical effect approach

Ask whether the invention as defined in the claim makes a technical contribution to the known art - if no, Art.52(2) applies. A possible clarification (at least by way of exclusion) of this approach is to add the rider that novel or inventive purely excluded matter does not count as a “technical contribution”.

This is the approach (with the rider) adopted by this Court in Merrill Lynch. It has been followed in the subsequent decisions of this Court, Gale and Fujitsu. The approach (without the rider as an express caution) was that first adopted by the EPO Boards of Appeal, see Vicom, IBM/Text processing and IBM/Data processor network.

(3) The “any hardware” approach

Ask whether the claim involves the use of or is to a piece of physical hardware, however mundane (whether a computer or a pencil and paper). If yes, Art.52(2) does not apply. This approach was adopted in three cases, Pension Benefits, Hitachi and Microsoft/Data transfer (the “trio”). It was specifically rejected by this Court in Gale.

However there are variants of the “any hardware” approach:

(3)(i) Where a claim is to a method which consists of an excluded category, it is excluded by Art.52(2) even if hardware is used to carry out the method. But a claim to the apparatus itself, being “concrete” is not so excluded. The apparatus claim is nonetheless bad for obviousness because the notional skilled man must be taken to know about the improved, excluded, method.

This is the Pension Benefits approach.T 931/95 Pension Benefit Systems Partnership

(3)(ii) A claim to hardware necessarily is not caught by Art.52(2). A claim to a method of using that hardware is likewise not excluded even if that method as such is excluded matter. Either type of claim is nonetheless bad for obviousness for the same reason as above.

This is Hitachi, expressly disagreeing with Pensions Benefits about method claims.T 258/03 Auction Method/Hitachi

(3)(iii) Simply ask whether there is a claim to something “concrete” e.g. an apparatus. If yes, Art.52(2) does not apply. Then examine for patentability on conventional grounds – do not treat the notional skilled man as knowing about any improved excluded method.

This is Microsoft/Data Transfer.[2]

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