Check the URL:
http://www.epo.org/topics/issues/computer-implemented-inventions.htmlThe EPO Approach
The EPO views Computer-Implemented Inventions (CIIs) as follows:
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A CII is usually defined 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
To be patentable, CIIs must fulfil the same basic patentability requirements as inventions in all other fields. These are set out in the European Patent Convention (EPC).
Accordingly, CIIs can be patented if:
· They have technical character and solve a technical problem.
· They are new.
· They involve an inventive technical contribution to the prior art.
With this definition as a basis, the patenting process for CIIs at the EPO is very restrictive as it puts emphasis on new technical solutions. The most striking consequence of this definition is that computer programs, which do not solve a technical problem, are not patentable in Europe".
Examples of clearly patentable CIIs include anti-lock braking systems, encryption/decryption methods and audiovisual processing techniques (e.g. MPEG audio/video technology). An early EPO case relating to image processing was that of Vicom (
T 208/84), which was decided in 1986. The invention related to a new mathematical technique applied to matrices of input data, which would typically represent digital image data. Provided the invention was claimed in the form of a method for processing images, rather than a purely mathematical method applied to data in general, the EPO considered that the method was patentable, because the technical effect of the invention was about processing images more efficiently.
Another key early case was that of Koch & Sterzel (T 26/86), which related to a software-implemented method of controlling an X-Ray apparatus for radiological imaging. Even though there was no new hardware required (the invention could work on existing known machinery), the EPO Board of Appeal considered that the invention was patentable because the invention resulted in a new and inventive technical effect. The fact that this was enabled by software on known hardware was, in the Board's view, irrelevant.
The decisions of Vicom and Koch & Sterzel are largely consistent with the case law that followed over the next 20 years. There is essentially not very much that has changed in the way that CIIs have been dealt with by the EPO. The problem areas have in the main been largely to do with where computer programs are used for implementing other excluded things, in particular business methods.
The EPO approach to patentable subject-matter is inseparable from the established problem-solution approach to assess inventive step. According to this approach, if a claimed invention is new, the proper way to assess whether there is an inventive step is to look at what technical problem the invention solves, in light of the known prior art. Firstly, the difference between the invention and the prior art is identified. Secondly, the technical effect of this difference (if any) is identified. Thirdly, the objective technical problem is identified, given this technical effect. Finally, an assessment is made of whether, given this objective technical problem, the skilled person would find it obvious to arrive at the claimed invention.
Many of the problems associated with patenting CIIs have been more to do with computer-implementations of what are effectively business methods. Two influential cases at the EPO have addressed this issue, Hitachi (T 258/03) and Comvik (T 641/00). This first of these related to implementing a modified Dutch auction on a networked computer system, i.e. over the internet. The EPO Board of Appeal decided that, although the claimed invention was not excluded as an invention because it involved technical means (even a pen and paper would suffice for this test), it was not patentable because any objective technical problem derived from the prior art was merely avoided by the use of a different business method. Implementing the new business method on a computer did not make it patentable.
The other decision of Comvik related to a SIM card allowing for two 'identities', which allowed call charges to be allocated to different accounts. The Board of Appeal rejected the application, deciding that an invention having 'technical character' had to be assessed as a whole, but that features making no contribution to the technical character of the invention could not be used to support the presence of an inventive step. The idea of using two identities on a single SIM card did not make a contribution to solving a technical problem, and it was obvious how it would be implemented, so the invention failed under Article 56.
Following Comvik, the usual approach at the EPO is to move all of the features that do not contribute to the technical character of the invention into the problem part of the PSA, rather than part of the solution. As a result, most business method-type applications fall at the Article 56 hurdle, from the reasoning that implementing a new business method on a standard computer would be normally be obvious to the skilled person, who is typically judged to be a computer programmer.
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Topic: Software "as such" (Read 1612 times)
