G3/08 PATENTABILITY OF SOFTWARE : DETAILS EXPECTED FROM THE ENLARGED BOARD OF APPEAL WILL BE WELCOME By Jean-Robert CALLON DE LAMARCK Partner European and French Patent Attorney The debate on software patentability in Europe has been for a long time a source of polemics and legal uncertainty for both patent applicants and third parties. In fact, the wording of Article 52 of the European Patent Convention (EPC) did not contribute first of all to define a very transparent setting. In its 1973 version, such Article 52 EPC provided that 1 : (1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step. (2) ( ) Shall not be regarded as inventions within the meaning of paragraph 1: ( ) (c) ( ) programs for computers; (3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such. (...) 1 The wording of Article 52(1) EPC is currently as follows (EPC 2000): 1) 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. Articles 52(2) EPC et 52(3) EPC remain unchanged. G3/08 Patentability of sotware: Details expected from the Enlarged Board of Appeal will be
2 Thus, computer programs are assumed to be excluded from patentability, however with an exception to the exception in that they shall only be excluded from patentability if regarded as being as such. The whole issue, which is still the centre of current debate and in particular the centre of the questions referred by Alison Brimelow President of the European Patent Office (EPO) to the Enlarged Board of Appeal as case No. G3/08, is what is included in the term «as such». Is it to be assumed that excluding computer programs from patentability only applies when the claims are specifically worded as relating to a computer program, but that such exclusion does not apply when the same invention is claimed in terms of a process or a system implementing or including technical means of the «hardware» type, or even in terms of storage media comprising readable means for storing the program in question? After all, a process, a system or a readable storage media are not literally programs as such. This approach - illustrated by decisions T424/03 (Clipboard Formats/Microsoft) and T258/03 (Auction Method/Hitachi) is referred to in referral G3/08 (referral pursuant to the provisions of Article 112(1)(b) EPC) 2 which lately seemed to be addressed by the Boards of Appeal of the EPO, following the original guidance given in this respect, at least as far as the absence of exclusion of the claims for a system comprising means hardware is concerned, by decision T931/95 (Pension Benefit Systems Partnership). This approach is however often criticized in that it comes to shift the analysis on the merits which previously relied on the assessment of the technical effect of an invention, to the assessment of its inventive step. The assessment of a possible exclusion pursuant to the provisions of Article 52(2) EPC is thus first related to the wording used by the patentee to draft the claims. It becomes therefore purely formal. The analysis on the merits is now only done upon assessment of the inventive step, when the technical problem deemed to be solved is identified in view of the prior art and the technical contribution of the invention. 2 Art. 112(1) EPC ( ) b) The President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question.
3 Article 52(2) EPC is thus virtually drained out of its substance. To such an extent that quite surprisingly, some decisions have even analysed the inventive step without giving any prior opinion as to whether it is excluded or not excluded from the scope of patentability pursuant to the provisions of Article 52(2) EPC, which allows avoid this question where the lack of inventive step is nonetheless established (cf. T258/03 (Hitachi) point 7 of the decision). This formal approach, which refers the substance of the debate to that of inventive step, was meant to contradict prior decisions of the Boards of Appeal of the EPO that gave less value to the type of wording selected for the claims. These prior decisions were in fact essentially concerned with: the technical contribution of the invention compared with prior art (cf. for example T36/86 (Text Processing - IBM)), or more recently with regard to criticism to this so-called technical contribution approach which could result in different assessments depending on the prior art taken into account - possible additional technical effects, assessed regardless of the prior art, going beyond the «physical modifications of the hardware ( ) deriving from the execution of the instructions given by the program» and which are «a common feature to all computer programs which have been made suitable for being run on a computer» (see in particular T1173/97-IBM also referred to by Mrs Brimelow in her referral). With such additional approaches, a software, even if claimed as such as a computer program, is not necessarily assessed like a computer program as such when resulting in a technical contribution or at the very least in an additional technical effect. So what about «computer program» claims? Excluded or not excluded? The answer is not solely academic and has economic consequences, including for industries in which downloading is in itself a major sale proposal. If a patent only relates to processes implementing the software or to devices with means for implementing it, it becomes possible to act against potential infringers that might propose the software for downloading only within the scope of contributory infringement and not direct infringement. However it is known that in most countries, the scope of contributory infringement is more limited than that of direct infringement. In France in particular, contributory
4 infringement requires that evidence is given that the means supplied or available for supply refer to a key feature of the invention, and that the third party knows, or that circumstances make obvious, that these means are suitable and designed therefore 3. Software systems are currently, in many fields (including medical imaging, telecommunications, etc., only to mention a few examples), the core of industrial investment and added value to goods or services provided. It would be extraordinary not to allow direct patent protection, at least insofar as it relates to a field of technology. The diplomatic Conference for the revision of the European Patent Convention held in 2000 was a first opportunity to strongly clarify such issue of software patentability. At the time, it was envisaged that specific reference to computer programs is removed from Article 52(2) EPC, since Article 52(1) EPC was itself modified to match the wording of Article 27 of the TRIPS Agreements which provided that patents could be obtained for any invention, product or method, «in all fields of technology». From this new wording of Article 52(1) EPC, it seemed to be possible to consider that computer programs, in fields of technology, were indeed patentable. However, the result of the discussions only amounted to finding a compromise whereby, although Article 52(1) EPC was modified, reference to computer programs was maintained in the list of exclusions set forth in Article 52(2) EPC The European directive on software patentability, which the European Commission has worked on since 2002, should also have provided a clarification of the conditions under which a «computer program» could be validly claimed and protected with a patent. However the turmoil caused by this directive proposal and particularly undue amendments which had been proposed before the European Parliament (to the point for example of excluding that information processing could be a direct or indirect infringement of a patent) has stayed in the minds. The result was a definitive rejection in July 2005. There also remained perspectives that could be brought by national patent offices and case laws in the contracting States. One cannot but also admit at these stages strong hesitations and many turnarounds. A perfect example is United Kingdom: at the end of 2006, the Aerotel - Macrossan 4 decision led the UKIPO to review its guidelines relating to 3 Cf. art. L613-3 and L613-4 Intellectual Property Code. 4 Aerotel vs Telco and Macrossan s patent application - Court of Appeal of England and Wales- 27 October 2006
5 software patentability and seemed to close any possibility of granting patents with computer program claims or even computer program media claims. A few months later on the contrary, Mr. Justice Kitchin reversed a decision of the UKIPO which refused product claims relating to computer programs (Astron Clinica 5 ) and considered that, as long as a method implemented by a computer program was regarded as patentable, the same should be true of the same program. The British Patent Office accordingly revised its guidelines again. More recently, in the Symbian case 6, a decision of the Court of Appeal upheld invalidation of a rejection by the UKIPO of a patent application relating to a dynamic link library, which was alleged by the applicant that it was not a computer program as such but a program involving an additional technical effect and in particular a more reliable computer operation. There is no wider technical issue which could be applied to many programs. But then, where are now the limits to software patentability? Does it still make sense to refer to computer programs in exclusions from patentability set forth in Article 52(2) EPC or its equivalent in the «UK Patent Act»? Nonetheless, in less than two years, the case law in the United Kingdom has fluctuated between two assessment extremes. It is likely to be partly because of these different decisions in the United Kingdom that the President of the EPO, Mrs Brimelow also ex- Comptroller General of the UKIPO eventually referred to the Enlarged Board of Appeal 7, unlike her predecessor who had once refused to do it 8. This referral is obviously welcome. 5 Astron Clinica and others vs. Comptroller General of Patents England and Wales High Court (Patents Court) 25 January 2008 6 Symbian Limited vs. Comptroller General of Patents - Court of Appeal of England and Wales - 8 October 2008 7 http://www.epo.org/topics/issues/computer-implemented-inventions/referral.html 8 In the Aerotel/Macrossan decision, Lord Justice Jacob questioned the President of the EPO at the time, Pr. Alain Pompidou, to request a decision of the Enlarged Board of Appeal in order to try and clarify this matter. At the time, the request was declined, with the President of the EPO arguing that there were in his opinion insufficient differences between current EPO Board of Appeal decisions that would justify a referral at this stage by the President of the Office.
6 As it stands out, specialists expect from it a clarification of the outline of software patentability and especially, one may hope some stabilization of the case law of the EPO, as well as national case laws in the contracting States over this issue. By Jean-Robert CALLON DE LAMARCK (callon@regimbeau.eu) Partner, European and French Patent Attorney Paris, April 17, 2009. About Regimbeau: PARIS Cabinet Regimbeau 20, rue de Chazelles 75847 PARIS CEDEX 17 Tél. : +33 (0) 1.44.29.35.00 Fax : +33 (0) 1.44.29.35.99 Contact : paris@regimbeau.eu Cabinet Regimbeau Industrial Property Law Firm has supported public and private sector companies and project owners for more than 75 years in protecting, strengthening and making profitable their innovations (patents, brand names, designs and models). 10 partners head up a team of 180 people whose skills are put into practice in all the strategic aspects of industrial property: technological intelligence, licensing contracts, IP portfolio audits, partnership negotiations, acquisition of rights, disputes. The consistent strike force of Cabinet Regimbeau and its regional offices means that it can support an international strategy, while maintaining a personalized relationship of very high quality with its clients. RENNES Cabinet Regimbeau Espace performance Bâtiment K 35769 ST GREGOIRE CEDEX Tél. : +33 (0) 2.23.25.26.50 Fax : +33 (0) 2 23.25.26.59 Contact : rennes@regimbeau.eu LYON Cabinet Regimbeau 139, rue Vendôme 69477 Lyon Cedex 06 Tel :+33 (0)4 72 83 85 70 Fax : +33 (0)4 78 24 30 78 Contact : lyon@regimbeau.eu GRENOBLE World Trade Center 5 place RobertSchuman BP1510 38025 Grenoble Cedex 1 Tél. : +33 (0) 4 76 70 64 79 Fax : +33 (0) 4 76 28 28 49 Contact : grenoble@regimbeau.eu www.regimbeau.eu