1 October 2010PatentsReinhard Knauer

Software and business method patents in Europe

The confusion surrounding business method patents and, in more general terms, software patents (called ‘computer-implemented inventions’ in the European Patent Organisation’s (EPO) official terminology) becomes apparent from the fact that Amazon’s 1-Click patent application is considered to be the most prominent representative of the species, despite not even remotely claiming a business method.

This application, which is cited in almost every article related to business method patents, was rejected by the EPO at first instance. An appeal is pending at the Boards of Appeal. A quick look in the file history reveals that the application was always considered by the EPO to claim technical, and therefore patentable, subject matter. The rejection in the first instance was due to prior art.

The above example shows the great uncertainty present in this field. While the Boards of Appeal of the EPO have achieved what no national office achieved previously—the development of case law that can be easily understood and applied by examiners in their daily work—it is nonetheless evident that the public and applicants have not fully followed case law developments, resulting in a lack of understanding of the current practice.

The case law, as developed by the EPO Boards of Appeal, is best reflected by two prominent decisions: in Auction method/Hitachi and Two identities/Comvik. Other frequently cited decisions are Data structure product/Philips and Clipboard format/Microsoft.

The Hitachi and Comvik decisions effectively said that an apparatus claim or method claim that comprises technical features, such as computers or a networks, relates to patentable subject matter and so meets the requirements of Article 52 EPC. So, in practice, Article 52 EPC plays a minor role; the real hurdle lies in the assessment of an inventive step under Article 56 EPC.

On this issue, Comvik developed the idea that only those parts of a claim that contribute to technical character should be taken into account for the assessment of inventive step.

This case law starts from an understanding that a typical business method application or software patent application might have technical features and non-technical features combined in a claim, and so the difficulty is deciding whether in such a mixture of technical and non-technical features, there is sufficient technical contribution to justify an inventive step. EPO case law does not even distinguish between business method patents, software patents or computer-implemented inventions patents in general.

A basic test to determine whether a claim is sufficiently technical is to determine whether technical objects can be formulated and whether this object is then solved by technical means. A typical technical object is to make an apparatus or a method more secure, faster or more reliable.

"In practice, Article 52 EPC plays a minor role; the real hurdle lies in the assessment of an inventive step under Article 56 EPC."

This case law was recently confirmed by a decision of the Enlarged Board of Appeal in May 2010 (G 0003/08). Former EPO president Alison Brimelow, who referred several questions on the patentability of computer-implemented inventions to the Enlarged Board of Appeal, received confirmation from the Board that there is actually no contradiction in the present case law and moreover that the current practice is in line with the existing law.

The great confusion in the field seems to be confirmed by the fact that the EPO’s former president and her consultants obviously had an improper understanding of the existing case law when referring the questions.

The Enlarged Board of Appeal’s decision gives hope for ongoing stability in the case law, which should allow interested parties to catch up and gain a solid understanding of the case law. It is worth noting that this case law is already widely accepted outside the EPO.

Recent examples include German Supreme Court decisions in Dynamische Dokumentengenerierung/ Siemens, which broadly harmonises German practice with that of the EPO, and in Windows- Dateiverwaltung/Microsoft (both in April 2010).

Reinhard Knauer is a partner at Grünecker, Kinkeldey, Stockmair & Schwanhäusser. He can be contacted at: knauer@grunecker.de

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