Abstract
Technology advances have usually brought wealth and health to society, while also raising ethical and policy issues. Technology and patents are linked to each other in that patents have been conceived also as a tool for rewarding and motivating the inventor’s endeavors. Patents have been subject to critical views, especially in the era of software where the innovation might be based on non-technological improvements, sometimes arising from new business models, social behavior or trends. For patents to support innovation in its beneficial contribution to society and avoid abuse, a high-quality patent system should be ensured. Many people believe that this requires in the first place to exclude from patent protection those inventions that are purely non-technical. In this paper, the authors analyze the legal situation at the European Patent Office (EPO), considered as setting amongst the worldwide strictest standards in terms of software patentability, and wherein patents are granted only to technology advances. Within this context, the case of software simulators is discussed, since this is directly linked to intangible software inventions and since it is the subject of a case on a point of law pending before the EPO highest instance, such that its outcome may impact patentability of modern software technologies. In conclusion, the authors argue in favor of maintaining the present EPO practice on simulators, as this is seen as a fair balance in Europe between patent protection for intangible inventions based on technology while excluding from patent protection those inventions that are non-technical arrangements.
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References
The EPO legal provisions are set out in the European Patent Convention (EPC). The text of the EPC can be found at. https://www.epo.org/law-practice/legal-texts/epc.html
With the term software inventions, reference is made to those inventions that make use of a computer. The EPO uses however the term Computer Implemented Invention (CII) to refer to “claims which involve computers, computer networks or other programmable apparatus, whereby at least one feature is realised by means of a program”, see the Guidelines for Examination at the EPO, F-IV 3.9
Article 52 EPC: (1) European patents shall be granted for any inventions, in all fields of technology, provided that […]. (2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: […] (a) discoveries, scientific theories and mathematical methods; […] (c) schemes, rules and methods for per-forming mental acts, playing games or doing business, and programs for computers; (d) presentations of information. (3) Paragraph 2 shall exclude the patentability of the 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
The Board of Appeal represents the second instance of the EPO entrusted with reviewing decisions issued by patent examiners; unless otherwise stated, reference will be made to decisions of the Technical Boards of Appeal. The EBoA can be said to represent the highest instance of the EPO entrusted with ensuring a uniform application of the law and with clarifying any point of law that is of fundamental importance; a Board of Appeal (or the EPO president, but not directly a party to proceedings) may refer questions to the EBoA if it considers that a decision is required for ensuring uniform application of the law, or if a point of law of fundamental importance arises. Decisions of the BoA and of the EBoA can be found at. http://www.epo.org/patents/appeals/search-decisions.html. BoA and EBoA cases are numbered according to the format T1234/YY and G12/YY, respectively
G 2/07, reasons 6.4.2 “[h]uman intervention, to bring about a result by utilizing the forces of nature, pertains to the core of what an invention is understood to be”
T1173/97, IBM, see e.g. r. 6.4 “[the technical character of a computer program] could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. When 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”
Borrowing the conclusion from T1227/05, Infineon, r. 3.3: for a computer program to be patentable, it needs to show “the potential for a technical effect going beyond basic hardware/software interaction in a computer”
In r. 9.2 of G3/08 dealing with patentability of computer implemented inventions, the Enlarged Board of Appeal stated: “We do not attempt to define the term “technical”. […] the Enlarged Board only makes the assertions that “a computer-readable data storage medium” and a cup have technical character and that designing a bicycle involves technical considerations […]. It is to be hoped that readers will accept these assertions without requiring a definition of exactly what falls within the boundaries of “technical”.”
It is noted that the German Federal Court of Justice (Bundesgerichtshof, the German highest instance) adopted a general definition of technical in the Rotetaube decision, and that this has been referred to and recognized as still holding valid in r. 6.4.2.1 of G2/07: “The term technical teaching was characterised as “a teaching to methodically utilize controllable natural forces to achieve a causal, perceivable result” […]”
More precisely, the term technology “was deliberately not defined by the legislator in order not to preclude that adequate protection would be available for the results of developments in the future in fields of research which the legislator could not foresee”, see G2/07, r. 6.4.2.1
For a general discussion on EPO case law, see e.g. Computer Implemented Inventions under the European Patent Convention and Practice in Japan, M. Baccelli, M. Hiratsuka, AIPPI e-News No. 1, April 2018. https://aippi.org/enews/2008/edition01/computer_implemented_inventions_japan.html
T423/, Microsoft
The German company Infineon applied for a European patent that then became subject of appeal case T1227/05
In fact, Article 52 EPC prohibits patentability of mental activities, see Article 52(2) EPC: “(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: […] (c) schemes, rules and methods for performing mental acts”, see also note 3 above
T1256/09, IEX, reason 1.13: “Leaving aside the question of whether these conditions are indeed sufficient to contribute to a technical character, […]”
T625/11, Areva, reason 8.1 (reading translation from the French language in which the decision was issued): “[…] the process claimed […] could serve non-technical objectives or technical objectives, but not necessarily linked to the functioning of a nuclear reactor. […] The claimed process could also, as a second example, be implemented in order to establish, with competent authorities, that a given reactor fulfills the requirements in force required for its operation. The operation, entrusted to a design office, would then have an exclusively administrative purpose. […]”
The text of the referral can be found at: https://www.epo.org/law-practice/case-law-appeals/pdf/t140489ex1.pdf. The patent application underlying the referral is EP03793825.5
See also “Zur Patentierung von Entwurfs- und Simulationsverfahren in der EPA-Rechtsprechung”, Rainer Moufang, GRUR Int. 2018, pages 1146ff (the author is also the legal member of the referring Board in case G1/19)
On the interrelationship, at least for question of patentability, between computer simulations and AI, see e.g. section II of “Software and Artificial Intelligence – Old and New Challenges for Patent Law – Conference Report on the 3rd Binational Seminar of the TU Dresden and the Charles University in Prague, November 20, 2018”, in GRUR Int. 6/2019, pages 560ff, wherein reference is expressly made to the Infineon decision when discussing whether patentability of AI has been already clarified by the current legal framework
Official minutes of the hearing are not available at the time of writing; hence, the present notes reflect the authors’ views and impressions from the online attendance to the hearing
The representatives of appellant and the representatives of the President of the EPO, who is party to the proceedings
In the amicus curiae brief submitted by Siemens, the following is noted under (ii) on page 3: “With regard to the explosively increasing importance of software in […] the Internet and digitization, there is a serious risk that a criterion that is too traditional and without recognizable justification as “necessary” will exclude the entire field of digital future technologies from patent protection could be.” (informative translation from German)
In “Framing new technical problems in AI inventions”, by Rachel Free, CIPA Journal, October 2018, it is argued that there are a number of new technical problems arising from AI inventions, which are not properly reflected in the classic formulation of technical problems. It thus seems important adapting existing examination practice to reflect the central role of computers in the conception of new inventions
In “Autonomous Machines and their Inventions”, Ryan Abbott, Mitteilungen der deutschen Patentanwälte, October 2017, pages 429ff, the author addresses the scenatio where the invention is directly conceived by the computer and argues that “creative computers require a rethinking of the criteria for inventiveness, and potentially of the entire patent system”
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Baccelli, M., Kobayashi, K., Sereboff, S.C., Hiratsuka, M. (2020). Advanced Software and Patents: A Patentability Balance for Fostering Technology. In: Kreps, D., Komukai, T., Gopal, T.V., Ishii, K. (eds) Human-Centric Computing in a Data-Driven Society. HCC 2020. IFIP Advances in Information and Communication Technology, vol 590. Springer, Cham. https://doi.org/10.1007/978-3-030-62803-1_6
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