EPO Board to establish software patents?

EPO:s highest appeals chamber, The Enlarged Board of Appeal, has finally found the nerve to put the big question of patentability on the table, or perhaps not.

In fact, the questions seem like a school book example of avoiding clarifications by asking the wrong questions. Are the EPO just cowards, creating straw men or obstructing the clarity of law?

Still, here are my answers to the questions EPO puts before the chamber:

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

- No. Claims should get excluded if the claimed contribution is in software or any other excluded subject matter. Computer programs do data processing and that is the most narrow interpretation of the exclusion in using a computer program as such. But any computer aided inventions may otherwise be patented regardless of the use of software.

2.(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

- No, this is where the IBM cases got it all wrong. Storing information does not make the information itself patentable. (See program claims)

2.(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

- Further technical effect is irrelevant to the question. The question should be if the claim needs to be a technical contribution not excluded under EPC 52. And the answer to that question is Yes. Further technical effect is just an excuse to make anything patentable, using known technology as rescue hook for excluded subject matter.

3.(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

-Argh, again that wording, but just for the sake of it... Yes!

3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

-No. Absolutely not as that is a known technical subject matter.

3.(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?


4.(a) Does the activity of programming a computer necessarily involve technical considerations?

- No, as far as the activity concerns the rules for data processing.
- Yes if those considerations are in matters that are computer aided.

4.(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

-No. The consequence of saying that the number of steps or the memory use in data processing are technical considerations in software would make any and all software patentable, and that is not the intention of EPC 52.

4.(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?

-Further technical effect is irrelevant as it has nothing to do with the technical contribution.
-For instance, a car breaking system using software or not can be claimed where the technical contribution is on the use of the breaking system and not the software. This can be seen as the difference in a simulation of the breaking system in a computer from the use in reality, where only the later could gain protection.

More about the background at IP-kitten. Short story in NYTimes.

I will try to answer these questions in the next couple of days.


  1. Its a tragedy how EPO can twist a clear instruction into something so perverted and then try to argue with these words.

  2. Even worse than patenting of software is the patenting of standards and specifications which are not a physical invention. There should be an exclusion for this. Examples are Microsoft's OOXML document spec, and their SMB network protocol.

    In the same way as is being argued for the case against software patents, the patentability of technical specs should only extend to the physical invention, and not to any other incidental specifications constructed around it.