Art 52 EPC: Interpretation and Revision

The reason given for the refusal was that the contribution to the art resided solely in a computer program as such within the meaning of Article 52 EPC, paragraphs 2(c) and Consequently, this subject-matter was not a patentable invention within the meaning of Article 52(1) EPC, in whatever form it was claimed.

In arriving at this conclusion the Examining Division argued on the basis that Claims 1 and 2 related to a method for automatically abstracting and storing an input document in an information storage and retrieval system and Claims 3-6 to a corresponding method for retrieving a document from the system. The claims specifically referred to a dictionary memory, input means, a main memory and a processor. These hardware elements were classical elements of an information and retrieval system (...) and objectionable under Article 54(2) EPC as lacking novelty. According to the present description (...) the method steps were implemented by programming such a classical system. The claimed combination of steps did not imply an unusual use of the individual hardware elements involved. The claims merely defined a collocation of known hardware and new software concerned with document information to be stored but not with an unexpected or unconventional way of operating the known hardware. The differences between the prior art and the subject-matter of the present application were defined by functions to be realised by a computer program which was used to implement a particular algorithm, or mathematical method, for analysing a document. In other words the steps of the method defined operations which were based on the content of the information and were independent of the particular hardware used.

In other words, a collocation of standard computing hardware with new computing rules (algorithms), in whatever form it is presented in the claim, would be excluded from patentability.

This was also clearly expressed in the Examination Guidelines of the European Patent Office of 1978.

However, in 1985 the Guidelines were revised and in particular the limits of patentability with respect to programs for computers were blurred. In two decisions of 1986, the EPO's Technical Board of Appeal reinterpreted the list of exclusions to mean that only "non-technical" innovations should be excluded, but refused to define "technical" -- a concept that was not mentioned in the law. From thereon the EPO embarked on a slippery slope by gradually widening the meaning of what could be understood to be "technical".

The EPO's reinterpretation of 1985/1986 and the subsequent loosening were criticised by law scholars such as Krasser, Benkard and Vivant and have led to a schism of judicial practise, which a new EU directive is supposed to overcome.

See also BPatG Error Search 2002/03/26: system for improved computing efficiency = program as such, Melullis 2002: Zur Sonderrechtsfähigkeit von Computerprogrammen and BGH copyright senate 1990-10-04: "Betriebssystem" (operating system) Decision

The decisions at the EPO were understood to have been taken "in response to pressure from the computer industry and trends emerging in the US".

Patentable Inventions

European patents shall be granted for inventions in all fields of technology, as far as they are new, involve an inventive step and are susceptible of industrial application.

As a result of an uproar of public opinion, politicians from major countries prevented this planned change of Art 52. Yet the "Base Proposal" version was accepted as a new wording for Art 52(1), and Art 52(4) was deleted (whereby the concept of "industrial application" was further weakened).

Thus the revised version of Art 52 EPC, which is not yet in force, contains the TRIPs formula "in all fields of technology", but fails to define the new term "technology", which doesn't exist in the old EPC. Thus clause (2) seems relativised by an indeterminate concept from an international treaty. It would have been in the interest of clarity and legal security to concretise this concept, e.g. by explaining clearly what is to be understood by a "technical invention" and why algorithms, business methods and rules for operating known data processing equipment do not belong into this category. Instead the legislators opted for introducing indeterminate concepts and potential contradictions into the law, which are then likely to be resolved by putting the appositive "as such" from 52(3) in quotes to make it appear mysterious and unclear, so as to allow the patent judiciary to rely on its own favored interpretation of "fields of technology" or even to point to alleged WTO constraints, thus giving up the clarity and integrity of national law in favor of arbitrary decisionmaking by the international patent lawyer community.

Art 52(4) about surgery on the human body was "only" reworded and moved to Art 53. This however implies that surgery methods are no longer considered to be non-inventions, non-technical or non-industrial. In this way, the Diplomatic Conference further weakened the TRIPs concepts on which it decided to rely for limiting patentability.

In reality, the national and conventional rules are clear: they stipulate without ambiguity a principle of non-patentability of software. The game which is being played today consists in twisting these rules one way or another, e.g. by imagining to consider, as we have seen, the totality of software and hardware as a virtual machine which is potentially patentable (tomorrow ...). From that point on one can speak about software in patent language. The patents which may be obtained this way, by this channel or by another, however still do not have any value beyond what we lend to them - but of course it is possible that they will finally acquire a value simply through an informal consensus to stop discussing the question. In fact, the efficiency of this twisting of rules of law is largely dependent on whether this consensus evolves to take for granted -- against the rules of written law -- that we will play this game or not. This question is no longer a legal question in the strict sense of the term.

After an intensive public debate it has turned out that the current legal rule is adequate and that recent EPO caselaw is at odds with both the law and the public interest. The courts are called upon to correct their practise and apply the law.

The European Parliament has passed an amended directive which reconfirms the system of Art 52 EPC and makes it more explicit. Frits Bolkestein and some people in the Council do not like this clarification and propose to opt instead for a revision of the EPC or some other kind of inter-governmental agreement. The UK Patent Office has proposed to rewrite Art 52(3) in a way that allows anything deemed "technical" to be patented. On the other hand it would also be possible to concretise Art 52 EPC itself further in the spirit of the amended directive. Putting positive definitions of "technical field", "technology", "industry" etc, as found in the amended directive, into Art 52ff EPC or its national versions could become a way of implementing the directive.

Any rewriting would probably entail a change in Art 52(3), since this has been used to make the law appear unclear. If rewritten in the spirit of the amended directive, Art 52(3) might be removed altogether, because it is to be considered purely explanatory. A "program as such" is a "program as a program" (in contrast with "a program as implementation feature of an claim object whose inventive part is not a program"). It stresses a self-evident differentiation which belongs in the Examination Guidelines. Deleting it from the law would be a convenient way of telling lawcourts to return to the correct interpretation of the law, which was predominant during the 1970/80s.