Software-Related Patents: European Patent Convention

copyright 1997, 1998 Donald M. Cameron, Aird & Berlis
with assistance from Dr. Robert Naismith of Cruikshank & Fairweather, Glasgow, Scotland, U.K.



The Convention on the Grant of European Patents , commonly known as the European Patent Convention ("EPC"), was set up by the Council of Europe and is open to European countries both inside and outside the European Economic Community ("EEC"). The EPC establishes a single procedure for granting patents for subsequent registration in the national Contracting States and establishes certain standard rules governing those patents.

A European patent, when registered in a national state, has the effect of a national patent in each of the designated EPC contracting states and is subject to the same conditions as a national patent granted by that State. The basic procedure to obtain a European patent is as follows:

An applicant files a single patent application, in one of the three official languages (English, French or German).

The application can be filed directly with the European Patent Office (EPO), or at the national Patents Offices from where it is transmitted to the EPO.

The application designates which national patents are required and requests a search be performed.

The EPO examines the application for formalities, a prior-art search is performed and a search report is sent to the applicant.

The application and search report are published by the EPO.

After publication, the applicant can request substantive examination at the EPO. After this examination, either the application is rejected or a European patent is granted.

The specification as granted is published in the language filed but with translations of the claims into all three official EPC languages and, after grant of the European patent, the European patent is registered in the desired designated national states to have the effect of a national patent, but the specification must be translated into the local language of that state (i.e. Italian for Italy).

After the European patent has been granted, an opposition must be filed within 9 months of the date of grant.  The result of the opposition can be appealed to the Board of Appeal.  In nearly all countries, an opposed patent will result in a stay of litigation proceedings with the notable exception of the United Kingdom where injunctive relief can be obtained on a revoked European (UK) patent, if an appeal has been timely filed.  Further, each national patent can be amended or revoked under the relevant national law.

The term of a European patent is 20 years from the date of filing (not the priority date). Annuity fees are payable to the EPO during pendency of the European application and then to each of the national patent offices after grant to keep the patent in force. Any infringement actions are handled by the national courts, each applying its own country's rules.

Contracting States

The following countries have ratified or acceded to the EPC as of 1998:

Austria, Belgium, Denmark, France, Germany, Greece, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, Netherlands, Portugal, Spain, Sweden, Switzerland, United Kingdom

In July 1993, the Administrative Council signed a co-operation agreement with Slovenia to enable patent applicants and proprietors to extend the effect of European applications or granted patents to the Republic of Slovenia. Similar types of agreements were signed with Lithuania (in force as of July 5, 1994) and Latvia (in force as of March 1, 1995). On September 9, 1994, a patent co-operation agreement with Romania was signed which contained similar extension provisions.

European patent applications and patents may be extended to certain noncontracting states. Article 168 of the EPC allows a Contracting State to declare that this convention applies to any of its territories. Once the declaration has taken effect, European patents granted for that Contracting State shall also have effect in those territories.  Typically, these are British and French colonies and overseas territories.

France - extended to:

New Caledonia, French Polynesia, the Southern and Antarctic territories, Wallis and Futuna and the Départment of St Pierre-et Miquelon.

U.K. - extended to the following states and territories which have amended their legislation to permit the registration of European patents (UK):

Anguilla, Belize, Cayman Islands, Falkland Islands, Gibraltar, Hong Kong(1a), Jersey, St Vincent, Turks and Caicos, Tuvalu, Virgin Islands (British)

States and territories where registration of European patents (UK) is possible under existing law:

Bahrain, Bermuda, Botswana, Brunei, Fiji, Gambia, Ghana, Grenada, St. Lucia, Singapore (1) , Solomon Islands, Swaziland, Trinidad and Tobago, Vanuatu, Western Samoa, Yemen

States and territories which have indicated a positive intention to amend their laws and are currently registering European patents (UK):

Cyprus (Nicosia), St Christopher (St Kitts) Nevis, Sierra Leone, Tanganyika, Tanzania, Uganda, Zanzibar

Additional States and territories which are registering European patents (UK):

Guyana, Kiribati, Seychelles

The Governing Articles

Article 52 of the European Patents Convention excludes from patentable subject matter computer programs "as such":

(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step.

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(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 ;

(d) presentations of information.

(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 ]

The exclusions to patentability in Article 52 have in common that they refer to activities which do not aim at any direct technical result but are rather of an abstract and purely intellectual nature.(2) This view is reinforced by Rules 27(l)(b) and 29(l)(b) which respectively imply that an invention relates to a technical field, it is concerned with a technical problem which is solved with a technical solution and which requires the claims to state the technical features which the inventor desires to protect.(3)


The EPO publishes Guidelines for Examination in the European Patent Office. The original Guidelines of the EPO took the very restrictive position that if the computer program constituted the improvement to the prior art, then the claims were not allowable no matter how the invention was claimed.(4)

The Guidelines were liberalized in 1985(5) to recognize that the exclusion from patentable subject matter was for computer programs as such. Examiners were instructed to examine the subject matter of the claim "as a whole" to determine patentability.  It was not appropriate to judge single features of the claim as being technical or not.  Thus, any claimed subject matter considered as a whole can be regarded as an invention if it provides a contribution to the prior art based on a technical problem.

The current Guidelines(6) and Board of Appeal decisions provide the basic rules for Examiners requiring to exclude the following computer-related inventions are excluded from protection:

  1. a computer program claimed by itself;
  2. a computer program stored on a disk or other carrier irrespective of content;

but that the following may be patentable:

It is reiterated that if the claimed subject matter makes a technical contribution to the known art, patentability should not be denied because a computer program is involved in the implementation.

Case Law

The Vicom case(7)is the leading authority on the meaning of "computer program as such" and what constitutes a "mathematical method". The patent application related to a method and apparatus for digital image processing which involved a mathematical calculation carried out on a two dimensional array of numbers representing points of an image. Algorithms were used for smoothing or sharpening the contrast between neighbouring data elements in the array.  The initial claim format of "A method of digitally filtering data including scanning a data array with masks..." was disallowed because the physical entity represented by the data was not mentioned in the claim at all.  The EPO Examiner  considered this left the claims with an abstract notion indistinguishable from a mathematical method.  On appeal, the Technical Board of Appeal at the EPO accepted an amended claim which defined the actual technical activity performed by the digital filtering.  The allowed language was "A Method of digitally processing images in the form of a 2D array having ...".  The Board of Appeal felt this language defined a "real-world" application.

This is a very significant decision: although much of the patent includes a mathematical description, the EPO accepted claim language to render the claim patentable within the EPC statute.  This will be compared below to the position taken by the U.K. national courts.  Unfortunately, the EPO later  rejected these claims for lack of novelty and inventiveness.

The Board held that what is decisive in determining patentability is determining what technical contribution the claimed invention when considered as a whole makes to the known art. It is irrelevant whether the computer program takes the form of software or firmware.(8)

Mathematical Method

The Board held that even if the idea underlying an invention is based upon a mathematical method, a claim directed to a technical process in which the method is used is not a claim which seeks protection for the mathematical method as such.(9)

The Board held that the invention had a technical character, recognizing that signal processing can be expressed in terms of a mathematical operation. The result, unlike that of a mathematical process, was not merely numbers. The signal processing is carried out on a physical entity (the image stored as an electrical signal) by a technical means implementing the method. The method results in a change in the entity (compare to the U.S. physical transformation test(10)(11))..

Computer Program As Such

Using similar reasoning as with respect to mathematical methods, the Technical Board of Appeal in the Vicom case held that a claim directed to a technical process which is carried out under the control of a computer program (implemented in hardware or software) is not a claim to a computer program as such. Instead, it is the application of the program in a process; protection being sought for the process:(12)

"... a claim directed to a technical process which process is carried out under control of a program (be this implemented in hardware or in software), cannot be regarded as relating to a computer program as such ... it is the application of the program for determining the sequence of steps in the process for which in effect protection is sought."

Claims directed to a computer set up to operate in accordance with a computer program (by means of hardware or software) or such a computer programmed for controlling or carrying out a technical process are not claims directed to the computer program as such and would be allowable.(13)  In the Koch & Sterzel case(14) the Technical Board of Appeal qualified this general language to restrict patentability to a situation where the operation of the general purpose computer is changed so as to "technically alter its functioning"(15), a situation which occurred in that case where the computer controlled the operation of an X-ray machine to obtain optimum performance without overloading the machine.  The Board of Appeal held that the EPC does not prohibit a claim with a mixture of non-technical and technical features.

A further example of a "technical effect" is IBM's system/program that displays a message in response to the occurrence of an event, in this case displaying the state of apparatus(16), this being the solution to a technical problem. A further technical problem was solved in the IBM/Editable document form case(17)where an amended claim which stated that the software transformed printer control codes into different control codes to enable communication between incompatible word processing systems was held to be allowable because the claim related to the processing of electrical signs.  In this case, although the claims related to the translation of text data, the data included control items such as carriage returns, new  paragraph marks and the like which were considered to be technical functions having nothing to do with the meaning of the text being processed..

Mere Reproduction of Information

Mere reproduction of information is not a technical result. Where the data both does not represent physical phenomenon and is not used to control the physical/technical functioning of the device, the claims are not patentable.(18)The Technical Board of Appeal held in the Koch &Sterzel(19)case that the mere processing of data to reproduce information, does not constitute a technical effect and therefore is not patentable.

The mere processing of information has been held to be "mental acts" and nonpatentable. Arnold(20)refers to several cases in which claims relating to data processing have been rejected as non-statutory subject matter, particularly in the field of text-processing:

  1. a method for abstracting and storing documents in an information retrieval system and a method for retrieving a document from the system.(21)
  2. a method for listing semantically related expressions.(22)   (This decision followed the decision of T38/86 24).
  3. a spell checking system for use in word processing.(23)
  4. a method of proof-reading a text document and detecting and replacing linguistic expressions having a low "understandability" with words having a higher "understandability" (that is, simpler words).(24)
  5. a method for automatically detecting and correcting contextual homophone errors in a text document.(25)
  6. a method of editing data set out in table form in a word processing system.(26)
  7. a method of displaying and editing data set out in table form in a word processing system.(27)

Word processing, according to the Board, is a series of mental acts(21), (26) and lacks technical significance and hence is not patentable.

Computer-Generated Software

A process for generating source code for computer programs from a specification was held not to be patentable subject matter; it was merely the automation of the mental acts of a computer programmer.(28)

Method of Doing Business

A method of using an automated teller machine by use of a machine readable card was held to be a method of doing business and non-patentable subject matter.(29)

However, a recent case, known as Sohei(30) may have extended what types of invention may be considered patentable by the EPO.

The invention related to a computer system for financial, inventory, personnel and construction management in shops and offices.  Prior art systems required an operator to perform input processing of the same data two or more times.  The invention solved this problem by presenting a transfer slip in the form of a screen menu for entering items once and this entered information is stored in datafiles which can be updated with subsequent operator input.  All the hardware was conventional.  The claims were upheld on appeal because the EPO considered that the invention solved the problem technically in that it provided for the processing of data relating to different management types in a single system.  They concluded that technical subject matter was present and if the claims were limited to specific types of management, the technical character is still applied to the claims.  The technical effect test is deemed to be met when technical considerations are made to implement details of an invention.   These technical considerations imply a technical problem to be solved and the technical features for solving the problem.

This case is encouraging but until it is applied as a precedent, caution is advised in relying upon it.  The facts and legal conclusion of this case should be compared with those in the case of State Street Bank and Trust Co. v. Signature Financial Group(31) where a computerized business-related invention was held unpatentable (and at the time of writing, the appeal decision is awaited).  It may be seen that perhaps the EPO is adopting a position more favourable to the patentability of business-related inventions than the USPTO, as long as the invention has a "technical character".   Thus, U.S. patent attorneys should be aware that, at the present time, it may be possible to obtain patent protection for such types of inventions in the EPO as long as they have a "technical character".

After an EP patent is granted

It is beyond the scope of this article to discuss enforcement of a European patent.   However, as mentioned above, infringement and validity are dealt with by the national courts.  There is as yet no national case law of which we are aware revoking a granted EP patent on the basis that the invention is inherently unpatentable.   However, of the EP member states, the United Kingdom courts have taken a consistently strong line in rejecting computer-related inventions of the kind which have already been allowed by the EPO and the USPTO.  The enforceability of such EP (UK) patents for computer-related inventions is indeterminate but the U.K. Courts have, in the past, preferred to rely on its own case law for inherent patentability which is likely to favour a defendant.  There is a view amongst some EP practitioners that the other EP states are likely to follow the position taken by the EPO and this will favour plaintiffs.


1. Hong Kong applications must be recorded in Hong Kong within 6 months of EP publication and the EP patent must also be recorded within 6 months of date of grant in the EP Bulletin but there are numerous transitional provisions which necessitate specific investigations for each EP (UK) case to be registered in Hong Kong.

1a. Singapore ceased accepting UK patents as of February 23, 1996

2. IBM System for Abstracting Documents - Decision 22/85. Reported OJ EPO 1-2/1990,12.

3. EPO Guidelines for Examination, Part C, Chapter IV, paragraphs 1,2.

4. [1978]O.J., EPO.

5. EPO Guidelines for Examination, Part C, Chapter IV

6. See CIPA European Patents Handbook; 2nd Edition; Vol. 2, Chapter 56; Longman; p. 295, 297.

7. EPO Decision T208/84; OJ EPO 1/1987, 14

8. ibid at p. 20.

9. ibid at p. 19.

10. In re Diehr, 450 U.S., 192, 209 USPQ at p. 9.

11. In Re Lowry, 32 F 3d 1579, 1583, 32 USPQ 2d, 1031 (Fed. Cir. 1984).

12. EPO Decision T208/84; OJ EPO 1/1987, 14 at p. 20

13. ibid at p. 20.

14. R. 72 EPO Decision T26/86; OJ EPO 1-2/1988, 19.

15. EPO Decision T208/84; OJ EPO 1/1987, 14 at p. 20

16. IBM/Computer-related invention Decision T115/85: OJ EPO 1-2/1990, 30.

17. Decision T110/90: OJ EPO 0/1994, 557.

18. Siemens [1992] E.P.O.R. 69.

19. supra at p. 75.

20. See: Arnold, Richard; Patentability of Computer-Related Inventions; Feb. 7, 1995

21. Decision T22/85 [1990]: OJ EPO-12/1990-12.

22. IBM/Semantically-related expressions decision T52/85 [1989] 8 E.P.O.R. 454.

23. Decision T121/85 (unreported March 14, 1989).

24. IBM/Text clarity processing Decision T38/86; OJ EPO 9/1990, 384.

25. IBM/Text processing Decision T65/86 [1990] E.P.O.R. 181.

26. Decision T95/86 (unreported October 23, 1990).

27. Decision T186/86 (unreported December 5, 1989).

28. AT&T Decision (unreported October 29, 1993).

29. IBM Card reader Decision T854/90 [1994]: OJ EPO 11/1993, 669.

30. Sohei/General Purpose Management System T769/92: OJ EPO 8.1995, 525.

31. 927. F. Supp. 502 38 USPQ 2d 1530 (D. Mass. 1996).

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