About pronovem Information IP Download Links Events News Faq

The European Patent Convention (EPC) does not provide a definition for an invention.

Article 52, the article to be applied for the protection of computer programs, specifies in paragraph 1 the usual criteria of patentability, namely: novelty, inventive activity and industrial application.

Paragraph 2 specifies the items to be excluded:

• discoveries,
• scientific theories,
• mathematical methods,
• aesthetic creations (protection by copyrights),
• objects as a result of intellectual activity (games, commercial methods, etc.),
• computer programs (software) and
• presentations of information.

Paragraph 3 mentions that any of the elements mentioned in the list of paragraph 2 is only excluded from patentability if it is "considered as such".

This means that paragraph 3 constitutes an exclusion of paragraph 2 , being in itself an exclusion to paragraph 1. Consequently, paragraph 3 describes elements that can aim at a patent protection in case they "are not considered as such".

Remark

The exclusions defined in paragraph 2 can essentially be divided in two categories: abstract inventions on the one hand (such as discoveries and scientific theories) and non-technical inventions on the other hand (like aesthetic creations and the presentation of information).

What about computer programs or software? Are they concrete objects? Do they possess a technical effect?

The solution has to be found in the definition of technical character of computer programs. The jurisdiction of the European Patent Office has developed in such manner that a gradually larger definition of patentable objects was given, including computer programs.

In particular, it concerns a series of law cases, among which the most important decisions are T208/84, T26/86, T6/83, T158/88, T769/92, T59/93 and T953/94, that can be seen on the web-site of the European Patent Office (www.european-patent-office.org).

The European Patent Office estimates that the technical character of the invention of which the computer program mainly consists, can be found either in the problem at the base of the invention (T6/83), either directly in the solution responding to the problem ; the technical character being possibly found in the disposition enabling the program to function, or directly in the program itself (T26/86).

Finally, the last decision T1173/97 published in 1999 has precisely defined the practice of the European Patent Office in a way to require_once computer programs for patent protection in general, with just one exception for computer programs as such.

Processes and products will only be excluded from patentability in case they constitute a computer program as such, a mathematical method as such or a presentation of information as such, in other words whenever they do not produce a technical effect.

More particularly, it is however necessary for computer programs that they represent a further technical effect for being susceptible to patentability. With "further effect" one understands another effect than the usual effect a computer program produces on the computer (hardware) (change of the state of transistors, creation of currents, ...).

Nevertheless, this further technical effect can reside or can be produced by any aspect of the invention, even if this aspect is not in itself technical.

What about business methods? Are they concrete objects? Do they possess a technical effect?

As for computer programs, the solution has to be found in the technical character of said business method.

Again, the jurisdiction of the European Patent Office has stated in a recent decision (T0931/95) that business methods would be patentable if the invention has a technical character, which means that it must relate to a technical field, must be concerned with a technical problem and must have technical features in terms of which the matter for which protection is sought can be defined in a patent claim.

Remark

The technical character or the technical problem, should not (necessarily) be new. It suffices that the computer program possesses in itself characteristics of novelty, inventive activity and industrial application so as to be susceptible to patentability.

However, all characteristics leading to a technical effect or problem have to be mentioned in the claims.

Conclusion

It should be noted that although the Convention on European Patents is no member as such of the GATT and has not signed the TRIPS agreements, the jurisdiction of the European Patent Office tends to coincide with the requirements of the TRIPS agreements.