Boards of Appeal 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.
Contents
Key cases
| Case | Date | Comments |
|---|---|---|
| T 51/84 (Coded distinctive mark/Stockburger) | 19 March 1986 | - |
| T 115/85 (Computer-related invention/IBM) | 5 September 1988 | - |
| T 1173/97 (Computer program product/IBM) | 1 July 1998 | Landmark decision. |
| T 931/95 (Pension Benefit Systems Partnership) | 8 September 2000 | Landmark decision. |
| T 931/95 (Two identities/COMVIK) | 26 September 2002 | Landmark decision. |
| T 258/03 (Auction Method/Hitachi) | 21 April 2004 | Landmark decision. |
| T 388/04 (Undeliverable mail/PITNEY BOWES) | 22 March 2006 | - |
| T 154/04 (Estimating sales activity / DUNS LICENSING ASSOCIATES) | 15 November 2006 | Landmark decision. |
| G 3/08 (Programs for computers) | 12 May 2010 | - |
| G 1/19 (Programs for computers) | 10 March 2021 | - |
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.[1]
Related pages on ESP Wiki
- European Patent Convention
- European Patent Office
- European Patent Office grants software patents
- Software patents exist in Europe, kinda
