Computer-Implemented Inventions in Europe

Alexander Clelland

Patenting in Europe of what are loosely termed "software inventions" has long been controversial, with the European Parliament trying - and failing - to arrive at a definition of what ought to be patentable.  An attempt by a former President of the EPO, allegedly at the request of the UKIPO, to have the Enlarged Board set out a fixed approach to patentability was equally unsuccessful. Even so, with the exception of the English courts, most European courts look to the Boards of Appeal for guidance on this issue.

To some extent the apparent fuzziness is deliberate: the Boards have consistently avoided answering the question of how the exceptions to patentability in Article 52(2) EPC or the "as such" limitation of Article 52(3) EPC should be understood. Instead, the Boards have developed case-law based on "technical character", again without defining what is meant by "technical". The advantage is said to be that the exceptions can be reinterpreted as technology develops.
The lecture will explore the development of the "technical character" test and the use in case-law of the term "technical". More recently the emphasis has shifted to a two-step test starting with a low threshold for technical character and a much higher threshold for inventive step. The development of this two-step test, the so-called "Comvik approach", will be discussed and some of the problem areas explored, in particular programming languages, games, graphical user interfaces, and the use of mathematical methods in engineering applications.