Overview

Europe - European Patent Convention

I. Computer Programs

II. Presentation of data

III. Methods of Doing Business

IV. Drafting Patent Applications which will be filed in Europe

Japan

Overview

Probably the two most important regions for protecting computer related inventions outside of the United States are countries of Western Europe and Japan. Of course, patent applications on software related inventions are filed in many countries. The countries of Eastern Europe and Russia, Australia, China, Israel, Korea, New Zealand, Singapore and Taiwan all see many patent applications directed to computer related inventions being filed every year. The countries of Western Europe are members of the European Patent Convention and given the cost advantages of filing a single patent application at the European Patent Office, that office, together with the Japanese Patent Office, receives many patent applications each year in this area of technology.

Software related inventions, for the most part, received a chilly reception at the patent offices around the world when patent applications directed to computer related inventions were first filed. There were probably many reasons for this. One important reason was undoubtedly a lack of examiners who understood the technology. Another was the idea that a computer programs solved mathematical problems and mere equations and such had been long held to be nonpatentable. With time, things have changed. Today, the United States is probably one of the most favorable jurisdictions when it come to the protection of computer related technology by means of patents. Most of the rest of the world lags behind the United States in this regard, but the rest of the world is also changing just as the United States has changed to come around to the recognition that computer related inventions are just as worthy of protection as are any other invention in other areas of technology.

Given the importance of Europe and Japan to the world economy and the importance of computer related technology to our world economy, this paper focuses its attention on the protection of computer related inventions in those areas of the world.

Europe - European Patent Convention

The basic definition of what is patentable is that an invention must be susceptible of industrial application and be new and involve an inventive step. Specific exemptions to patentability exist for inventions the publication or exploitation of which would be contrary to the public order or morality and to plant or animal varieties and essentially biological processes for producing plants or animals.

The European Patent Convention also adds a gloss to the basic definition by specifically stating that certain things should not be regarded as being inventions at all. These include:

• discoveries, scientific theories and mathematical methods, aesthetic creations, and schemes;
• rules and methods or performing mental acts, playing games or doing business;
• programs for computers: and
• presentations of information.

These prohibitions are, however, limited by the provision that they apply

I. Computer Programs

In interpreting these provisions, the original EPO Guidelines states rather bluntly:

Although there does not seem to have been any early Appeal board decision directly on point, this interpretation of the European Patent Convention led to rejection of a number of applications in this field and resulted in sustained pressure from the computer industry for reconsideration of the position. In 1985, this led to a revision of the Guidelines so that these now state that, although computer programs per se are unpatentable and this situation is not "normally changed when a program is loaded into a known computer", if "the subject matter as claimed makes a technical contribution to the known art, patentability should not be denied merely on the ground that a computer program is involved in its implementation."

Examples of what might be patentable are indicted in the new Guidelines to include: "program-controlled machines and program-controlled manufacturing and control processes."

This change in approach has since been reflected at the Appeal Board level in Vicom Systems' Application[1] which related to a method of digitally processing images using a computer. The Board reversed the rejection of the Examining division on the basis that even if the idea underlying an invention may be considered to reside in a mathematical method, a claim directed to a technical process in which the method is used is not an attempt to obtain protection for the mathematical method as such.

The Board did, however, draw a distinction between the processing as claimed in which a rearranged data array was produced and a method for "digitally filtering data" which it felt was "an abstract notion not distinguished from a mathematical method so long as it is not specified what physical entity is represented by the data."

The Board went on to hold a claim directed to technical process which is carried out under the control of a program (whether the implementation is in hardware or in software) should be allowable under Article 52(2)(c) and (3) EPC since it cannot be regarded as relating to a computer program as such.

Soon after this, the EPO specifically rejected the view of the German Federal Patent Court that a teaching is not technical if in its essence it states a rule that can be carried out without employing controllable natural forces other than brain power even if the use of technical means was expedient or indeed the only sensible procedure.[2] In the case before it the appeal board hearing the case held that an X-ray apparatus incorporating a data processing unit which controlled the operating and supply circuits of the apparatus to ensure that exposure parameters were not exceeded was patentable. In the boards's view

Following from the Vicom and Koch cases, a number of issues relating to the patentability of computer-related inventions have come before the Appeal Board. These have been dealt with by following the Vicom decision so that computer-related inventions have been held to be patentable if after the program element has been removed from the claim, there is still left a "technical problem" to be solved.

Exactly what constitutes a "technical problem", however, is still not entirely clear. For example a method of translating the printer control features in a word processing program to another program has been held to constitute the solution of a technical problem.[3] Similarly in General purpose management system/Soler[4], the claim in question was to a computer system for plural types of independent management including at least financial and inventory management. This was held to be patentable as being the application of specified processing steps to various files in a computer's memory and the organization required to permit use of a single "transfer slip" which together constituted sufficient of a technical problem to justify a holding that the invention was neither a computer program as such nor a method of doing business. On the other hand, in IBM/text processing,[5] it was held that the only problem solved by a program to detect and correct contextual homophone errors (e.g. "there" instead of "their") was an essentially mental one and as such the invention was not patentable. Similarly it was held that the problem was merely a mental one in a case dealing with the form that a letter may take in different parts of a word. In some languages (e.g. Arabic) the form of a letter depends upon whether the letter appears at the beginning, middle, or end of a word. An invention relating to the display of the correct form of the letter on a visual display screen by control of the display by a computer program was held to be unpatentable because the problem solved by the computer program was not a technical one but merely "the making of the mental registering" of the letters easier.[6]

II. Presentation of data

An Appeal Board was confronted with a claim reading as follows:

Such a claim was held to be patentable. In the Board's view, the only issue to be decided was whether the television signal as claimed could be considered as being merely a presentation of information, such presentations of information being specifically banned from patentability under the European Patent Convention. The Board noted, however, that the prohibition applied only to such presentations "as such," and concluded that a television signal "inherently comprises the technical features of the TV system in which it is being used and if it is considered to present information then it represents exactly that kind of information which exhibits the technical features of the system in which it occurs." Thus, it was not merely a presentation of information as such. The Board also found that because the signal was a detectable physical reality, the mere fact that it was transitory did not preclude patentability.[7]

III. Methods of Doing Business

Methods of doing business are grouped with methods of performing mental acts and rules for playing games as being unpatentable under Article 52. The approach taken by the Boards of Appeal to such cases has been in line with that taken on computer program and data presentation cases. An example of the approach is given in the official headnote to the decision in IBM/Card Reader[8]. This reads as follows:

The case involved the use of what was described as an "electronic application form" to determine whether the user was entitled to access to, for example, a cash dispensing machine.

However, in Queuing system/Petterson[9] a system for determining the queue sequence for serving customers at a plurality of service points was held to be patentable, notwithstanding the rejection of a corresponding Swedish national application after an appeal to the Swedish Supreme Administrative Court. The system comprised a turn-number allocating unit, an information unit, a selection unit and a computing means which inter alia decided which particular turn-number is to be served at a particular free service point. The Swedish application had been rejected on the ground that the problem solved by the invention was not a technical one. The EPO Appeal board disagreed with this approach holding that the problem to be solved was the means of interaction of the components of the system and this was a technical problem and thus its solution was patentable.

It seems, therefore, that the way is open to claims to intangibles before the European Patent Office provided that such intangibles are closely linked to a technical system of some sort. It is to be expected, however, that the law in this area will develop very much on a case-by-case basis. For the time being, however, it seems that methods of operating cash management accounts and various insurance-related methods that have been patented in the United States will are less likely to be held to be patentable in the EPO.

IV. Drafting Patent Applications which will be filed in Europe

As can be seen, the examiners at the EPO look for a technical contribution to the art when the invention in question involves a computer program controlling known hardware. Thus, when the application is being drafted (i.e. before it is even filed in the United States) it should be drafted in terms of defining a technical problem which needs to be solved and explaining how the known hardware is controlled by the software to overcome the previously defined problem. Also, the claims need to be given very careful attention before filing in the United States. The examiners at the EPO can (and do) object to the redefining the invention during prosecution (by amending the claims) in a manner which would not have been readily apparent to a person reading the originally filed patent application. The basis for these objections is that, unlike the position in the United States, European patent Applications are published before they are granted, 18 months after the claimed priority date. The case law of the EPO has held that the public should be entitled to rely on what it sees in the published document as a guide to what will ultimately be covered by the patent claims. This does not necessarily prevent broadening of the claims during prosecution, but it does make broadening the claims or changing their thrust more difficult than in the United States.

Japan

The definition of invention is a broad one under Article 2(1) of the Japanese law this is defined as "the highly advanced creation of technical ideas utilizing natural laws". This broad definition is, however, qualified by Article 29 that provides that only inventions that are useful in industry are patentable and Article 32 of the law that precludes the grant of patents for certain types of inventions. Although prohibitions on the grant of patents for chemical products and medicines were removed in 1975, the law still specifically proscribes the grant of patents for inventions that are "likely to harm public order, good morals or public hygiene".[10] On their face these limitations are fairly innocuous. However, the combination of these requirements has resulted in the Japanese Patent Office refusing the grant of patents for inventions relating to new medical treatment, to methods of typhoon control (on the ground that the cost of implementing the method was too high for it to be industrially applicable), for business methods, for essentially biological methods of breeding new plants or animals and for computer programs as such.

In the other major area in which concerns as to propriety of patent protection have arisen throughout the world, namely the question of patentability of computer software - related inventions, the Japanese Patent Office took the lead, issuing an Examination standard for Computer Program Related Inventions as long ago on April 1971. The standard focused on the requirement of Article 2 of the law that to be patentable a "law of nature" (which the standard contrasts with laws of man - such as the rules of chess) must be used to produce a creation of "technical ideas" This approach was re-emphasized in new guidelines issued in the Summer of 1993. The approach is therefore somewhat similar to the EPO's approach of "is there a technical problem to be solved." The standard requires that the "shuko no inga kankei" (roughly translated as "the techniques cause and effect relationship") is based on a physical law of nature then the software in question shall be patentable. Merely because the invention is expressed as an algorithm does not of itself necessarily preclude patentability. While the Japanese approach is similar to the approach taken at the EPO, it is not quite as restrictive since the Japanese Examiners appear to be more apt to find that a claim for a software related invention utilizes a law of nature than an European Examiner will find that essentially the same claim is directed to an invention having a technical effect.

The 1993 guidelines seek to apply this definition to computer-related inventions. According to the guidelines the following types of inventions are patentable:

The Guidelines specifically provide that inventions where no law of nature is used and no hardware resources are utilized are not patentable and give examples of unpatentable situations as being arithmetical methods and sales estimation methods.

The Guidelines appear to be more lenient than are the EPO Guidelines when it comes to the type of claims for software related inventions which are considered to be directed to patentable subject matter. This is because the requisite law of nature is deemed to be utilized when the invention unitizes hardware resources. Thus the Japanese Guidelines indicate that an apparatus claim directed to a software invention for a computer which converts an inputted "kana" word in a "kanji" word is patentable. Compare this with the IBM/text processing decision rendered by a board of appeals at the EPO.

Inter-related with the question of statutory subject matter is the question of inventivity and the guidelines indicate that software will not ordinarily result in an invention having sufficient inventive character to be patentable if the invention is merely the application of procedures or means for realizing functions of an invention in other applications, simple addition or replacement by ordinary systematizing means, mere realization of functions in hardware by way of software or mere computerization of clerical work in business systems. The guidelines further indicate that program languages are not considered patentable.