The unbearable conundrum of patenting software

The unbearable conundrum of patenting software Dr. Sven J.R. Bostyn, LL.M De Clercq, Brants Partners Universiteit Amsterdam, IViR Hoboken, 22 september 2009 www.dcbpatent.com sven.bostyn@dcbpatent.com www.ivir.nl s.j.r.bostyn@uva.nl De Clercq, Brants Partners E. Gevaertdreef 10a B-9830 Sint-Martens-Latem +32(0)9 280 23 40 +32(0)9 280 23 45 Features of computer programs - text + source code + object code - behaviour (functionality): far more valuable than text The way how the program tells the computer how to execute a number of instructions, e.g. in a word processor, deleting text, pasting text etc. The behaviour of the computer program thus embraces the features or functions of the program, used in advertising to influence the customer to buy the specific piece of software. 2 1

Features of computer programs (2) Text and behaviour are independent: The same result or function can be achieved with a different program text Indistinguishable imitation possible without knowing the text Program with identical behaviour (functionality) can be considered a market substitute, even if program text is different 3 Features of computer programs (3) Copyright Protection? copyright protects the expression of a creative idea does not protect technical features automatic protection, no registration required novelty not required functionally identical program can be protected several times no inventive step required no description of the innovation required know-how can (partly) be kept secret 2003 De decompilation Clercq, Brants Partners allowed (in Europe), but is limited Term of protection is long (life + 70) limited scope of protection (adaptation) 4 2

Features of computer programs (4) Patent Protection? protects an innovation with technical character (Europe) or an innovation with a useful, practical and tangible effect (US)/ A claimed process is surely patent-eligible under 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. no automatic protection, examination before grant absolute novelty requirement, no protection if already existing disclosure and description of the invention required inventive step required, implying that trivial improvements cannot be protected term of protection shorter (20 years) 5 Features of computer programs (5) decompilation not allowed without permission of the patent holder, unless for research purposes -> licenses scope of protection is very important and much broader than in any other IP right scope of protection protects innovator against trivial improvements and free riding scope of protection makes it more difficult for competitors to enter the market, and could thus have stifling effect 6 3

Invention Only inventions are susceptible to patent protection Art. 52(1) EPC 1973: (1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step 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. Based on Art. 27(1) TRIPs 7 Invention Concept of invention is not as such defined in the statute Changes with times and evolutions in technoology Leads to problems as to interpretation In German scholarly writing, it is defined as : Lehre zum technischen Handeln Lehre zum planmäßigen Handeln 8 4

Invention In UK : An invention is technical when it causes a practical effect in the physical world (CA, 1989, Merril Lynch) Definition of "invention": Genentech Inc.'s Patent [1989] R.P.C. 147, 264 (Mustill L.J.): "You cannot invent water, although you certainly can invent ways in which it may be distilled or synthesised". Biogen v Medeva [1997] RPC 1, 42 (Lord Hoffmann): "This is obviously right and in such a case it may seem pedantic to say that water fails the condition in paragraph (a) of section 1(1) because it is not new. Unfortunately, most cases which come before the courts are more difficult. Judges would therefore be well advised to put on one side their intuitive sense of what constitutes an invention until they have considered the questions of novelty, inventiveness and so forth". 9 Invention CFPH s Application [2005] EWHC 1589 (Deputy Judge Peter Prescott QC): What is an invention (in the sense I am now concerned with) is a topic bedevilled by verbal formulae and by the sweeping of problems under the carpet. At the risk of some inaccuracy, patents are supposed to be granted for non-obvious advances in technology. I said at the risk of some inaccuracy. We sense that we know technology when we see it. And no doubt that is correct, most of the time. But it is not correct all of the time. Therein lies the delusion. "How, then, does the law define what is an invention? The answer is that nobody has ever come up with a satisfactory, allembracing definition and I do not suppose anybody will". 10 5

Invention Central characteristic: invention must be technical Wat technical means is not entirely clear (see e.g., CII) A number of surveys in the context of patenting have shown that, not only is there no agreement about the meaning of the word, but that most informed respondents agree that trying to define the words technical or technology is a dead-end 11 Invention - discovery invention <- -> discovery + teaching to methodical action + products of nature doctrine EPO Guidelines C.IV. 2.3 (June 2005): to find a substance freely occurring in nature is also mere discovery and therefore unpatentable. However, if a substance found in nature has first to be isolated from its surroundings and a process for obtaining it is developed, that process is patentable. Moreover, if the substance can be properly characterised either by its structure, by the process by which it is obtained or by other parameters and is new in the absolute sense of having no previously recognised existence, then the substance per se may be patentable. US Chakrabarty case: Everything under the sun made by man is patentable 12 6

(3) Paragraph 2 shall exclude the patentability of the Patentability of computer programs in Europe Art. 52 EPC2000 (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. (2) 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. 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. 13 Patentability of computer programs in Europe Vicom case: T 0208/84 Headnotes: I. Even if the idea underlying an invention may be considered to reside in a mathematical method a claim directed to a technical process in which the method is used does not seek protection for the mathematical method as such. II. A computer of known type set up to operate according to a new program cannot be considered as forming part of the state of the art as defined by Article 54(2) EPC. III. A claim directed to a technical process which process is carried out under the control of a program (whether by means of hardware or software), cannot be regarded as relating to a computer program as such. IV. A claim which can be considered as being directed to a computer set up to operate 2003 De Clercq, in accordance Brants Partners with a specified program (whether by means of hardware or software) for controlling or carrying out a technical process cannot be regarded as relating to a computer program as such. 14 7

Patentability of computer programs in Europe A basic difference between a mathematical method and a technical process can be seen, however, in the fact that a mathematical method or a mathematical algorithm is carried out on numbers (whatever these numbers may represent) and provides a result also in numerical form, the mathematical method or algorithm being only an abstract concept prescribing how to operate on the numbers. No direct technical result is produced by the method as such. In contrast thereto, if a mathematical method is used in a technical process, that process is carried out on a physical entity (which may be a material object but equally an image stored as an electric signal) by some technical means implementing the method and provides as its result a certain change in that entity. The 2003 technical De Clercq, means Brants Partners might include a computer comprising suitable hardware or an appropriately programmed general purpose computer. 15 Patentability of computer programs in Europe 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 or carrying out a technical process cannot be regarded as relating to a computer program as such and thus are not objectionable under Article 52(2)(c) and (3) EPC. 16.[ ] Generally speaking, an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection by the mere fact that for its implementation modern technical means in the form of a computer program are used. Decisive is what technical contribution the invention as defined in the claim when considered as a whole makes to the known art. Finally, 2003 it would De Clercq, seem Brants illogical Partners to grant protection for a technical process controlled by a suitably programmed computer but not for the computer itself when set up to execute the control. 16 8

Patentability of computer programs in Europe T 0026/86: The Board takes the view that, while an ordinary computer program used in a general-purpose computer certainly transforms mathematical values into electric signals with the aid of natural forces, the electric signals concerned amount to no more than a reproduction of information and cannot in themselves be regarded as a technical effect. The computer program used in a general-purpose computer is thus considered to be a program as such and hence excluded from patentability by Article 52(2)(c) EPC. But if the program controls the operation of a conventional generalpurpose computer so as technically to alter its functioning, the unit consisting of program and computer combined may be a patentable invention. The Board holds that an invention must be assessed as a whole. If it makes use of both technical and non-technical means, the use of nontechnical De Clercq, means Brants Partners does not detract from the technical character of the 2003 overall teaching. The European Patent Convention does not ask that a patentable invention be exclusively or largely of a technical nature; in other words, it does not prohibit the patenting of inventions consisting of a mix of technical and non-technical elements. 17 Patentability of computer programs in Europe T 1173/97, Computer program product/ibm : The exclusion from patentability of programs for computers as such (Article 52(2) and (3) EPC) may be construed to mean that such programs are considered to be mere abstract creations, lacking in technical character. The use of the expression "shall not be regarded as inventions" seems to confirm this interpretation. This means that programs for computers must be considered as patentable inventions when they have a technical character. 18 9

Patentability of computer programs in Europe * In order to make a computer program patentable, it must have a technical character or effect T 1173/97, Computer program product/ibm : [ ] physical modifications of the hardware (causing, for instance, electrical currents) deriving from the execution of the instructions given by programs for computers cannot per se constitute the technical character required for avoiding the exclusion of those programs. Although such modifications may be considered to be technical, they are a common feature of all those programs for computers which have been made suitable for being run on a computer, and therefore cannot be used to distinguish programs for computers with a technical character from programs for computers as such. 19 Patentability of computer programs in Europe T 1173/97 contd. It is thus necessary to look elsewhere for technical character [ ]: It could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. Where said further effects have a technical character or where they cause the software to solve a technical problem, an invention which brings about such an effect may be considered an invention, which can, in principle, be the subject-matter of a patent. Consequently a patent may be granted not only in the case of an invention where a piece of software manages, by means of a computer, an industrial process or the working of a piece of machinery, but in every case where a program for a computer is the only means, or one of the necessary means, of obtaining a technical effect within the meaning specified above, where, for instance, a technical effect of that kind is achieved by the internal functioning of a computer itself under the influence of said program. In other words, on condition that they are able to produce a technical effect in the above sense, all computer programs must be considered as inventions within the meaning of Article 52(1) EPC, and may be the subject-matter of a patent if the other requirements provided for by the EPC are satisfied. 20 10

T 1173/97 contd. Of particular importance to the present case is the fact that, according to the case law of the boards of appeal, a claim directed to the use of a computer program for the solution of a technical problem cannot be regarded as seeking protection for the program as such within the meaning of Article 52(2)(c) and (3) EPC, even if the basic idea underlying the invention may be considered to reside in the computer program itself, as illustrated for example by decisions T 208/84 (OJ 1987, 14),"Computer-related invention/vicom", as cited above, and T 115/85 (OJ 1990, 30), "Computer-related invention/ibm". The case law thus allows an invention to be patentable when the basic idea underlying the invention resides in the computer program itself. 8. The Board takes this opportunity to point out that, for the purpose of determining the extent of the exclusion under Article 52(2) and (3) EPC, the said "further" technical effect may, in its opinion, be known in the prior art. Determining the technical contribution an invention achieves with respect to the 2003prior De Clercq, art Brants is therefore Partners more appropriate for the purpose of examining novelty and inventive step than for deciding on possible exclusion under Article 52(2) and (3). 21 Patentability of business methods in Europe T 0258/03 Automatic auction method/hitachi Headnote: I. A method involving technical means is an invention within the meaning of Article 52(1) EPC (as distinguished from decision T 931/95-Controlling pension benefits system/pbs PARTNERSHIP)(see points 4.1 to 4.4 of the reasons). II. Method steps consisting of modifications to a business scheme and aimed at circumventing a technical problem rather than solving it by technical means cannot contribute to the technical character of the subject-matter claimed (see point 5.7 of the reasons). 22 11

T 0258/03 3.2 The idea behind the so-called contribution approach applied by earlier jurisprudence of the boards of appeal was that the EPC only permitted patenting "in those cases in which the invention involves some contribution to the art in a field not excluded from patentability" (T 38/86, OJ EPO 1990,384, headnote II). In other words, for assessing the first requirement, ie the presence of an invention within the meaning of Article 52(1) EPC, a criterion was established which relied on meeting further requirements mentioned in that article, in particular novelty and/or inventive step. Thus, some prior art was taken into account when determining whether subject-matter was excluded under Article 52(2) and (3) EPC: 23 T 0258/03 3.3 However, in more recent decisions of the boards any comparison with the prior art was found to be inappropriate for examining the presence of an invention: "Determining the technical contribution an invention achieves with respect to the prior art is therefore more appropriate for the purpose of examining novelty and inventive step than for deciding on possible exclusion under Article 52(2) and (3)" (T 1173/97, OJ EPO 1999,609, point 8); "There is no basis in the EPC for distinguishing between 'new features' of an invention and features of that invention which are known from the prior art when examining whether the invention concerned may be considered to be an invention within the meaning of Article 52(1) EPC. Thus there is no basis in the EPC for applying this so-called contribution approach for this purpose" (T 931/95, supra, headnote IV). 24 12

T 0258/03 "The use of technical means for carrying out a method for performing mental acts, partly or entirely without human intervention, may, having regard to Article 52(3) EPC, render such a method a technical process or method and therefore an invention within the meaning of Article 52(1) EPC" (T 38/86, headnote III); "Non-exclusion from patentability cannot be destroyed by an additional feature which as such would itself be excluded..." (T 769/92, headnote II). 3.5 Therefore, taking into account both that a mix of technical and non-technical features may be regarded as an invention within the meaning of Article 52(1) EPC and that prior art should not be considered when deciding whether claimed subject-matter is such an invention, a compelling reason for not refusing under Article 52(2) EPC subject-matter consisting of technical and non-technical features is simply that the technical features may in themselves turn out to fulfil all requirements of Article 52(1) EPC. 25 T 0258/03 The method claim 4.1 The reasoning above (point 3.5) is independent of the category of the claim. Thus, in the present case, also the method of claim 1 is not excluded from patentability under Article 52(2) EPC. 4.2 This conclusion is not in agreement with headnote II of decision T 931/95 which states that: "A feature of a method which concerns the use of technical means for a purely non- technical purpose and/or for processing purely nontechnical information does not necessarily confer a technical character to such a method" (cf also Guidelines C-IV, 2.3.6, penultimate paragraph, second sentence). 4.3 However, in order to be consistent with the finding that the so-called "contribution approach", which involves assessing different patentability requirements such as novelty or inventive step, is inappropriate for judging whether claimed subject-matter is an invention within the meaning of Article 52(1) EPC, there should be no need to further qualify the relevance of technical aspects of a method claim in order to determine the technical character of the method. 2003 De Clercq, In fact, Brants it Partners appears to the Board that an assessment of the technical character of a method based on the degree of banality of the technical features of the claim would involve remnants of the contribution approach by implying an evaluation in the light of the available prior art or common general knowledge. 26 13

T 0258/03 4.4 From a practical point of view, this inconsistency becomes fully apparent when considering the question of whether technical character is conferred to a method using technical means for a purely nontechnical purpose. In this case, following the approach taken in T 931/95, the mere presence of such means would not necessarily be sufficient to lend the method technical character. In the Board's opinion, any practical answer to this question would have to rely on some weighting of the importance of the features to determine the "core" of the invention, necessarily including considerations on their technical relevance, in particular possible novel or inventive contributions, with respect to the prior art. The Board would like to add that such weighting has already been rejected in early case law of the boards of appeal (see decision T 26/86, OJ EPO 1988,19; headnote II). 27 T 0258/03 4.6 The Board is aware that its comparatively broad interpretation of the term "invention" in Article 52(1) EPC will include activities which are so familiar that their technical character tends to be overlooked, such as the act of writing using pen and paper. Needless to say, however, this does not imply that all methods involving the use of technical means are patentable. They still have to be new, represent a nonobvious technical solution to a technical problem, and be susceptible of industrial application. 4.7 It is therefore concluded that, in general, a method involving technical means is an invention within the meaning of Article 52(1) EPC. 28 14

T 0258/03 5.3 In accordance with the principles set out in decision T 641/00 (OJ EPO 2003,352; cf headnote I), the invention will be assessed with respect to the requirement of inventive step by taking account of only those features which contribute to a technical character. The features that make a technical contribution therefore need to be determined. 29 T 0125/04 Catchword: In general, the task of designing diagrams is non-technical. This is so, even if the diagrams arguably convey information in a way which a viewer may intuitively regard as particularly appealing, lucid or logical. 30 15

T 0125/04 Inventive step: The Board would like to add that insofar as a specific manner of representation is concerned in the present case, this manner has been conceived exclusively with regard to a human being's mental capabilities and with a view to aiding a user to visually analyse data and make decisions on the basis of this analysis. It does not relate to any technical format or structure of the information processed, nor is it linked to the internal functioning of the system. Also the present invention concerns an arrangement of images but is different in that only the information conveyed by the images, ie their "cognitive content" (cf T 1194/97, OJ EPO 2000,525, point 3.3), is relevant. The new features have to do with how this content is represented. Unlike the cited case the invention provides no information about the computer system itself, such as the location where the data are stored. 31 T 0125/04 4.10 According to decision T 641/00 (OJ EPO 2003,352, Headnote I), features of a claim making no contribution to the technical character of an invention cannot support the presence of inventive step. Implementing the claimed steps by merely providing means for carrying out these steps is obvious. Summing up, the Board cannot find that the steps performed by the features in claim 1 have any technical effects which go beyond those obtained by the normal use of a computer. It follows that the subject-matter of present claim 1 lacks an inventive step (Article 56 EPC). 32 16

T 0049/04 Catchword: "Following T 643/00 rather than T 125/04, the presentation of natural language text on a display in a manner which improves readability, enabling the user to perform their task more efficiently, relates to how, ie by what physical arrangement of the text, cognitive content is conveyed to the reader and can thus be considered as contributing to a technical solution to a technical problem; reasons 4.5 to 4.7. 33 T 0049/04 3. Invention within the meaning of Article 52(1) and (2) EPC It follows from the terms used in claim 1 ("machine readable natural language text", "parsing said text", "storing said text... to produce an enriched text", "displaying... across a display") that the method steps are to be implemented on a computer although this is not explicitly specified in the claim. Therefore the method of claim 1 meets the criteria set out in T 258/03 (Auction method/hitachi OJ EPO 2004, 575) (cf headnote) for being an invention within the meaning of Article 52(1) EPC. This applies a fortiori to the subject matter of independent device claim 12. 34 17

T 0049/04 4.3 The claimed device thus aims at enabling the user to read a natural language text faster. Since the act of reading a natural language text belongs to the category "schemes, rules and methods for performing mental acts" (Article 52(2)(c) EPC), which are not to be regarded as inventions within the meaning of Article 52(1) EPC, the present invention inherently has non-technical aspects. The term "non-technical" as used here refers to subject matter which relates to things which are not to be regarded as inventions within the meaning of Article 4.4 Following the principles set out in T 641/00-3.5.01 (Two identities/comvik OJ EPO 2003, 352), when an invention consists of a mixture of technical and non-technical features, the nontechnical features cannot support the presence of inventive step (headnote I). For the assessment of inventive step of the present claims, it is therefore necessary to investigate whether the claimed subject matter contains any "non-technical features". 35 T 0049/04 4.6.3 The present board differs at this point from the conclusions drawn in T 125/04. Firstly, the board concurs with the view expressed in T 643/00 that technical aspects cannot be ruled out in the design and use of a graphic interface. Furthermore, the board finds that a feature which relates to the manner how the "cognitive content", such as images, is conveyed to the user can very well be considered as contributing to a technical solution to a technical problem. This would in particular be the case when, as the situation was in T 643/00, this particular manner of conveying the information enables the user to perform their task more efficiently; T 643/00, reasons 17. For these reasons, the board is also unable to subscribe to the ratio of T 125/04 which posits that the task of designing diagrams is basically non-technical even when the diagrams convey information in a way which a viewer may regard as particularly lucid and logical. 36 18

T 0309/05 Catchword: 1. Where a combination of non-technical and technical features is claimed, the consideration of inventive step requires that the problem be restricted to its technical aspects (point 4.2, following T 0641/00). 2. The problem of automating the generation of Internet domain names, so that only names which are both available and desirable are presented to a potential buyer, must therefore be stripped of aesthetic and semantic considerations, since these lie in a field excluded from patentability by the provisions of Articles 52(2)(b) and 52(2)(c) EPC (Points 4.7 and 4.9). Reformulating the problem into non-technical and technical components leaves as a technical problem simply the concatenation of a text string provided by a user with a predetermined string (Points 4.11 and 4.12). 3. The subject-matter and activities specified in Article 52(2) EPC can be considered to be "non-technical", as that term has been used by the boards (Point 4.10). 37 T 154/04 (Duns) (B) Having technical character is an implicit requisite of an "invention" within the meaning of Article 52(1) EPC (requirement of "technicality"). (C) Article 52(2) EPC does not exclude from patentability any subject matter or activity having technical character, even if it is related to the items listed in this provision since these items are only excluded "as such" (Article 52(3) EPC). (E) For examining patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention. 38 19

T 154/04 (Duns) (F) It is legitimate to have a mix of technical and "non-technical" features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Nontechnical features, to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features "as such", do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step. 39 T 154/04 (Duns) (G) For the purpose of the problem-and-solution approach, the problem must be a technical problem which the skilled person in the particular technical field might be asked to solve at the relevant priority date. The technical problem may be formulated using an aim to be achieved in a nontechnical field, and which is thus not part of the technical contribution provided by the invention to the prior art. This may be done in particular to define a constraint that has to be met (even if the aim stems from an a posteriori knowledge of the invention). 40 20

T 154/04 (Duns) The examination whether there is an invention within the meaning of Article 52(1) to (3) EPC should hence be strictly separated from and not mixed up with the other three patentability requirements referred to in Article 52(1) EPC. This distinction abstracts the concept of "invention" as a general and absolute requirement of patentability from the relative criteria novelty and inventive step, which in an ordinary popular sense are understood to be the attributes of any invention, as well as from the requirement of industrial applicability. Decisive for the presence of a (potentially patentable) invention is the inherent character of the claimed subject-matter. 41 Referral to EBA -> G 3/08 1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program? 2.(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium? 2.(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program? 3.(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim? 3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer? 3.(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used? 42 21

Referral to EBA 4.(a) Does the activity of programming a computer necessarily involve technical considerations? 4.(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim? 4.(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed? 43 Thank you for your attention! 22