Software patentability ruling from the European Patent Office's Enlarged Board

The 20-year-monopoly that patents provide to inventors allows them to go to court to prevent or restrain others from infringing their rights. If granted, patents afford software developers potentially much stronger protection than the other intellectual property rights protecting software, and most notably copyright. However, computer software is one of several types of subject matter that are excluded from patentability to an extent. ¹

As described previously, ² how and where to draw the line between what is patentable and what is not has long been up in the air. There is no better illustration of this than the differences in approach taken by the English Courts and UK Intellectual Property Office, compared with that of the European Patent Office (EPO). The seminal English Court of Appeal decision in Aerotel v. Telco and Macrossan's Application ³ involved a lengthy consideration of the different ways that could be used to carry out the assessment, with the Court flatly rejecting the any hardware approach used in recent years in the EPO. Instead, it adopted the four-stage Aerotel test that has since been applied in the English courts and UK Intellectual Property Office.

Under the EPO approach, the mere mention of any hardware (no matter how well-known and mundane) is usually enough to get over the hurdle of patentability, although further hurdles, and most notably the requirement of inventiveness, still need to be met. Although overall the final decision on whether or not a patent should be granted would often be the same in both the United Kingdom and the EPO, there have been some notably different outcomes, and the way of deciding whether to grant a patent has been wholly different. When questions on software patentability were referred by the former EPO President, Alison Brimelow to the EPO's Enlarged Board, many thought this could be the catalyst for a change and harmonisation. However, certain foresighted commentators ⁴ suggested that there was no real basis for the referral. This turned out to be the case when the EPO's Enlarged Board handed down its ruling in case G 0003/08, ⁵ as described further below.

Question 2 was of particular interest because it goes to the heart of whether English Aerotel approach or the EPO's any hardware approach should be used when assessing whether an invention in the field of computer software is excluded. The questions were referred on the basis that different Appeal Boards of the EPO had given different decisions, and that this was an area of fundamental importance.

On 12 May 2010, the Enlarged Board handed down its long-awaited decision. After an in-depth analysis, the Enlarged Board reached the view that the referral was inadmissible. A key issue addressed in this assessment was the meaning of the undefined legal term different decisions, which Alison Brimelow had suggested gave a basis for the referral. While there was little guidance available, the Enlarged Board concluded that this term was intended to mean decisions that were diverging.

The Enlarged Board then went on to consider the questions referred and cases cited by Alison Brimelow, dismissing each in turn:

Question 1: Whether a computer program can only be excluded as a computer program as such if is explicitly claimed as a computer program?

The Enlarged Board conducted a detailed consideration of the two allegedly diverging cases cited, ⁶ and other significant cases on software patentability. Although it recognised a difference between the cited decisions on one issue, it suggested that no subsequent decision had followed one of the cases on that particular point. The other decision was the last in a series of logically consistent decisions and had not been challenged subsequently. Noting that 7 years had passed between the decisions, the Enlarged Board concluded the deviation was a legitimate development of the case law.

The Enlarged Board also confirmed that the present position in the EPO is that a claim can avoid exclusion merely by explicitly referring to the use of a computer or a computer-readable medium. However, this was of course qualified by the Enlarged Board noting that it must be inventive.

Question 2: Whether mere mention of using a computer or computer-readable storage medium is enough for patentability or whether a further technical effect is necessary?

The Board felt that the second question was confusing and had misinterpreted the cases cited as diverging. It gave an example of the phrase Tigers eat meat. Meat is a word. Therefore tigers eat words, noting this was clearly wrong, because the word meat is being used differently in the two premises. After considering the case law cited, the Enlarged Board again found that there was no divergence, with the correct position on the point being as set out for Question 1 above – that is, mentioning even the most mundane hardware such as computer or a computer-readable medium in the claim will do.

Question 3: Whether a claimed feature must cause a technical effect on a physical entity in the real world, and if so, whether the physical entity can be an unspecified computer?

The Enlarged Board identified two problems with this question. First, although the question related to individual features of the claims in a patent that describe what is covered, none of the cases cited in the referral seemed to discuss individual claim features. Second, the cases ⁷ said in the referral to require a physical effect on an entity in the real world simply did not do so in the Enlarged Board's view. Therefore, again, there was no divergence and the question was inadmissible.

Question 4: Whether computer programming necessarily involves technical considerations and related issues?

The Enlarged Board agreed with the assertions in the referral that some of the cases mentioned by Alison Brimelow considered that programming always involved technical considerations, whereas others considered programming to be a mental act. However, it suggested that there was no contradiction between these two positions. Again, therefore, there was no divergence and the question was inadmissible.

In deciding that there was no basis for the referral, the Enlarged Board has endorsed the EPO's current approach to the patentability of computer software, and mention of any hardware in a patent claim, no matter how mundane, will be enough to get around the computer software exclusion. This remains quite different from the tougher English Aerotel approach that the UK Intellectual Property Office has continued to apply since the Enlarged Board decision. ⁸

It is notable that Lord Justice Jacob, the Court of Appeal judge with most experience of patent cases, has suggested previously that where the EPO approach is settled on a question of law, it should be followed by the English Courts. ⁹ However, for now at least, the approaches taken in the United Kingdom and in the EPO remain diametrically opposed, and it is difficult to see how the tests currently being applied in the two jurisdictions can be reconciled with one another. Although it must be acknowledged that in many cases these differences may not affect the overall result, with software patent applications falling at a later hurdle in the EPO, this inevitably increases the uncertainties over whether patents for software innovations will be granted. Although some may think this is preferable to the adoption of a uniform approach that might have affected the availability of patents one way or the other, the uncertainty is unlikely to be welcomed by the software industry or the companies that it supplies.