Software Patents? (Part Deux)

In my last post, I offered insights into one of the world’s two dominant schools of thought governing software patents:  the United States model.  This week, we take on Europe.  Here goes …

Software Patents:  European Model

The European Patent Office (EPO) approach to software patents differs from that of the USPTO in that it precludes grant of patents for computer programs or computer-implemented business methods that make no technical contribution.  European Patent Convention (EPC) Article 52, Paragraph 2, excludes from patentability, “in particular …

(a)    discoveries, scientific theories and mathematical methods;

(b)   aesthetic creations;

(c)    schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; [emphasis added]

(d)   presentations of information.”

Article 52, Paragraph 3 then adds the following:

“(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.” [emphasis added]

Taken together, Paragraphs 2 and 3 exclude “computer programs as such” from patentable subject matter.  But the “as such” criterion does not mean patent protection is not available to a software-related invention that meets the conditions of patentability (i.e., has technical character, is new, and involves an inventive technical contribution to the prior art).  For example, a computer program used in a general-purpose computer is considered to be a program as such and, therefore, is excluded from patentability by article 52(2)(c).  But the decision in Koch & Sterzel/X-ray Apparatus suggests if a program controls the operation of a conventional general-purpose computer so as technically to alter its functioning, the unit consisting of program and computer combined may be a patentable invention.

In practice, the EPO’s “technical effects” doctrine considers non-patentable those computer programs that implement business, mathematical, or similar methods; and do not produce technical effects that go beyond the normal physical interactions between the program and the computer.  In the 1984 Vicom case, the EPO Technical Board of Appeal decided software-related methods and apparatus for improving digital image processing should not be excluded from patent protection because the claim was directed toward a “technical process.”  Subject-matter for controlling or carrying out a technical process is patentable irrespective of whether it is implemented by hardware or by software.  In practice, although Vicom established computer programs executing on known hardware were patentable, many applications for programs involving the use of a computer have been found ineligible.  For example, online retailing is not patent eligible in Europe, whereas such automated processes are often patented in the United States.

Conclusion (of sorts)

Applying for patent protection of software under the differing models of the United States and of Europe is a lot like playing cards, in the following ways:  1) Success at one game does not guarantee success in another; 2) You need to know the distinct rules of each game;  3)  Be prepared to watch and emulate someone who is good at the game with which you are less familiar.  Good luck!



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