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Patentability of software inventions in Europe.

Patentability of software inventions in Europe.


1. Introduction.

The question of the patentability of software works has been the subject of many doctrinal and practical disputes in recent years in the institutions of the European Community. The liberalization of scientific and legal views on the patentability of intangible goods logically led to the registration and ex post facto - judicial protection of patents for mathematical, educational and business methods, a trend that until recently was materially unthinkable, but received its breakthrough in the last thirty years. stimulated by some prominent (corporate) users of the patent system, as well as by new trends in the national patent offices themselves. In Europe, unlike other countries in the world (such as the United States), software patentability was effectively parried substantively, namely through Article 52, paragraph 2 of the European Patent Convention (EPC) [1] . This legal norm contains a comprehensive list of objects excluded from patentability, namely: discoveries, scientific theories and mathematical methods; schemes, rules and methods for performing mental operations, games or economic activity, as well as computer programs (as such).

In order to emphasize the fact that software is a type of literary work [2] , but still correctly presume the option of patenting devices that would be eligible for patent protection containing technical components controlled by software in Article 52 , paragraph 3 of the EPC, the correct clarification is made that the provisions of Article 52, paragraph 2 of the EPC "exclude the patentability of the objects or activities specified in this provision, only insofar as the application for a European patent or the European patent refers to these objects or activities as such".

The commented liberalization, including the normative framework, led to a change in the practice of the European Patent Office (EPO), and more specifically of its Appellate Panel, which made focused efforts on the interpretation of the meaning of Art. 52, Para. 2 and Art. 53 of the EPC led to the acceptance of patent claims involving intellectual methods in an increasingly broad context. However, given the fact that the practice of the EPC is rather restrictive with regard to software and business method patents, all software patents issued so far by the EPO [3] can be challenged in court, which follows the high probability that they will be declared invalid, depending on the propensity of the judges to adhere formally to the letter and spirit of the EPC or, on the other hand, to follow the jurisprudence of the Appellate Chamber of the EPO. That is why proponents of software patentability are simultaneously exploring ways to change and refine the EPC.

In November 2000, a diplomatic conference was convened for the countries that had signed the EPA to vote on some amendments to the latter. Among the points to be discussed was the deletion of the term "computer programs" from the exceptions listed in Article 52, paragraph 2 of the EPC [4] . This proposal was made by the Appellate Body of the EPO, but the majority of member states that signed the convention ultimately decided not to vote for it.

In February 2002 Directorate General "Internal Market" of the European Commission published a draft of the "Directive on the patentability of computer-implemented inventions" [5] , which, after heated debates between the European Commission, the Council of the European Union and the European Parliament, was rejected by the European Parliament in the second reading on 6 July 2005 [6]

The purpose of this presentation is to examine in a European context the subject of the patentability of software inventions from a legal, technical, systemic and economic point of view, to discuss the inconsistencies in patent and copyright law resulting from the liberalization of the views of the patent system in relation to software , and to propose a clarification of the boundary between patentable and non-patentable inventions concerning the intangible sphere.


2. Legal analysis of the patentability of software  and why the issue of software patents is ill-posed , respectively unexplored theoretically.

One of the main arguments put forward by the supporters of the patentability of software in a global aspect is the need to protect software works, which are increasingly present as the main technological part in innovative inventions (for example robotics), but for which copyright does not provide sufficient protection. An example often considered by experts in patent offices is that of a new washing machine that washes linen more efficiently, the innovative washing sequence being implemented with the help of a computer. In this framework, software actually executed by a computer would form the basis of the technical contribution and inventive step [7] of a particular new machine and should therefore be covered by patent claims.

This test case was used as a conceptual basis for resolving software feature claims in patent applications, arguing that because the subject matter of the patent did not relate to the software "as such," the embedded software could receive patent protection. However, this first conceptual draft was not in itself sufficient to allow the patenting of software running on general purpose computers, as European patent law doctrine holds that for a claimed invention to be patentable, the innovative part of it must achieve not only a new result compared to the known state of the art, but also to have a "technical character" [8] .

Therefore, in the operative part of some of its decisions, the Appellate Division of the European Patent Office defined mandatory rules according to which certain types of software can be considered "technical", as opposed to "as such" software, which cannot be patented because making no "technical contribution". It is for this purpose that the European Patent Office created the legal term "computer-implemented invention" in order to be able to designate software as patentable subject matter without having to use the word "software" but instead to insist on the term "invention" which carries the idea of ​​legal patentability. This term first appears in Annex 6 of the report entitled "Examination of 'Business Method' Applications", in which the EPO instructs the other members of the Tripartite Cooperation (the US Patent and Trademark Office and the Japan Patent Office) on how to grant patents for business and software methods, provided they are described in a "technical" way [9] .

However, the construction of heavy legal postulates about the possible existence of discrimination between "technical" and "non-technical" software on the basis of their effects, which we call the "doctrine of the technical nature of software", cannot withstand strict legal analysis. In the aforementioned case with the washing machine, the technical effect is expressed in the improvement of the washing of the linen by the machine. This effect is achieved by applying an innovative washing process, consisting in dosing detergent at a certain point in the washing cycle, by making better mixing of water and linen, etc. - so to speak, standard operations performed by the machine in the material world. The software controlling the machine controls the individual phases in this innovative washing process, but is not in itself its source. Critics of software patents advocate the view that it is the process (method) that is innovative and creates the desired technical effect, not the software itself as such. I can somewhat disagree with this, because in the molding of synthetic rubber, it is the software that keeps the temperature constant to produce the part that requires a precise temperature [10] . The same can be said for software patents in the field of robotics, because there it is the software that moves the robot, trains it and enables it to "think".

On the other hand, it should be correctly noted that, in most cases, computer-executable software does nothing more than manipulate symbolic values ​​according to a previously created program, regardless of how these symbolic values ​​materialize in the executing computer the program (electrons, photons, magnetic moments, quantum states, etc.). The computer, in order to interact with the physical world, needs peripheral devices that materialize the symbolic quantities of the systems into physical actions in the outside world: activating a servo amplifier, displaying certain light information on the screen, molding rubber, etc. In this way, the software that controls the washing machine can be executed on a simulator and work exactly as it would work in the washing machine, but without producing the expected technical effect. This is because the technical effect is independent of the software in question, but is contained in the effective conduct of the process.

The legislator has already analyzed this situation in order to draw the conclusions that are important for the patenting of industrial processes mediated by software solutions. In this way, the manufacturer of innovative washing machines can claim his innovative washing method, as well as the machine that performs it, on the one hand without claiming a software patent at all, but on the other - if technically justified, to claim exactly.

I would like to conclude this section by noting that software that sums the values ​​of two quantities of reagents that are contained in the tanks of a given chemical reactor could be considered "technical" under the doctrine of the technical characteristic of software, whereas the same cannot be said for software that serves to calculate the sum of the balances of two bank accounts, since the latter concerns rather mathematical methods that are excluded from patentability [11] .

Similarly, software cannot be considered to create a technical effect when it enables a person to "perform calculations more efficiently" or "improve the performance of a computer". Let us first note that this doctrine is even more radical than the doctrine of the technical effect of software, since it would allow to count as "technical" any software that provides better computational performance than some existing software , without reference, analysis and solution of a given problem, or rather considering that every use of a computer is itself a technical application.

Since the actual performance of an algorithm depends entirely on the architecture of the computer on which it is implemented and runs, the assumed technical characteristics of an algorithm are not related to it, but rather are based on the adequacy between the underlying hardware and technical implementation considerations of the code (which may also fall into the realm of copyright) as they are specific to each individual software configuration. Therefore, the consideration of "increased efficiency" is not and cannot be the basis for determining a real boundary between the alleged effect of a given software as "technical" and accordingly "non-technical".


3. Considerations regarding the heavy formalism regarding technical contribution in software patents.

The conceptual impossibility of distinguishing between "technical" and "non-technical" software in advance dooms any attempt to embody this distinction in legislative texts to failure. An obvious example of the failures in this direction is the one proposed on May 24, 2004. draft text of a Directive for computer-implemented inventions (from the English Proposal for a Directive of the European Parliament and of the Council on the patentability of computer-implemented inventions), proposed by the Irish Presidency of the European Union [12] , after the European Parliament voted on first reading, a text expressly rejecting the patentability of software. The "Irish" text, which was presented by its proponents as preventing the patentability of "pure" software (recital 7b), however stated that software itself could make a "technical contribution" (recital 13 and Article 2b), and finally the patenting of such software was permitted (Article 5b). These articles would allow the patenting of any kind of software (as such), since it is always created to solve a given problem, thus ignoring the correct hypothesis of Art. 52, para. 3 of the EPC. Obviously, this was considered a mistake, because only software that leads to, supports, or implements a specific technical solution can be the subject of patent claims under this legal norm.

As a counterpoint to the foregoing, it should be noted that any doctrine which allows for the grant of a patent for individual software on the assumption that it is inherently "technical" or that the use of "technical means" to accomplish some other an unpatented algorithm constitutes a "technical invention", it opens up the option of patenting the entire field of intellectual methods, including business methods as well as mathematical methods, since there is no essential difference between all of them, with the proviso that this is prohibited in any European patent law. Business methods and learning methods are essentially algorithms, and all algorithms are equal to mathematical proofs according to the Curry-Howard Isomorphism [13] , but this does not make them patentable a priori .

The perceived legal "Pandora's Box" and the presumed legal house that could be reached led to the conclusion that the legislator's choice could not be half-hearted. He should have either fully supported the creation of a regime of full patentability of software, business, educational and mathematical methods, or rejected them entirely. The European Parliament, in amending the said draft directive at first reading, completely rejected the patentability of software claims, while still allowing the patenting of material inventions and industrial processes that use software for their management, which was the usual practice before, in view of the meaning of Art. 52, paragraph 2 and paragraph 3 of the EPK.

On the other hand, very often supporters of software patents refer to the norm of Article 27 of TRIPS, which imposes an imperative for the existence of patents in any field of technology, as long as the invention proposed for patenting is new, has an inventive step and is industrially applicable. Speaking on the subject, Mr. Paul Hartnack (Chief Examiner of the UK Patent Office in the first decade of the 21st century) emphasized that this interpretation cannot be the only one possible, as each individual case must be approached with attention and accurate analysis of whether the factual composition of patentability concerning software is present, as it is logically excluded on the basis of Article 10 of TRIPS, which relates software to copyrighted works.

The problem at one point became a political one, as the Commission and the Council of Europe in their proposals for the mentioned Directive on computer-implemented inventions came out with the opinion that software works have a technical contribution by their legal nature and that precisely on the basis of Art. 27 of TRIPS should be assumed that they are suitable objects of legal protection. On the other hand, the European Parliament took the fundamentally opposite position, motivated by the view of the Berne Convention that software is not in the field of technology, but in the field of copyrighted works and should therefore remain outside the scope of Art. 27 of TRIPS, ultimately letting practice dictate the correct legal decisions.

Despite all that has been said so far, it should be noted that the Directive on computer-implemented inventions has focused attention on the particularly modern problem of software patents, which has remained unresolved in European law. Supporters of the directive argued that its purpose was to clarify the meaning of Article 52 of the EPC by consolidating and clearing the existing practice of the EPO of conflicting decisions and giving a precise interpretation of the issue. Opponents argued that the directive would remove stricter restrictions against software patenting adopted by national courts and lead to an increase in the number of software patents across the EU, in violation of the Berne Convention and Article 10 of TRIPS [14] . After prolonged procedural wrangling and heavy lobbying pressure from both sides, the directive, which was largely supported by the European Commission and the governments of most member states, as opposed to their national parliaments, was overwhelmingly rejected by the European Parliament on 6 July 2005, with which the legislative procedure on it was finally terminated.


4. Competence of national courts on the topic of patentability of software patents.

In conclusion, I would like to highlight the fact that, to date, this entire legal debate has led to the fact that the substantive interpretation of the patentability of software patents in Europe continues to be a priority for national courts, which are obliged to apply national case law (if any – something I sincerely doubt within Bulgaria for example) except in cases where a European patent application has been rejected or where a European patent has been revoked in opposition proceedings before the EPO, in which case the EPO has the final say on interpretation of EPK. It makes no sense to say that the national courts, in particular the Bulgarian court, are theoretically and practically far away from the high-tech topic "software patent" and therefore the danger of "extravagant", let's put it bluntly - incompetent decisions on the commented issue is high. In France, for example, a decision of the Court of Appeal in Paris in 2010. rejected a patent application on the grounds that the effect sought by the invention (in this case, remote authentication of the user of an online service through a telecommunications network operator) was not in itself of a technical nature, since "technical means are claimed to be used , which are already known" [15] . In November 2006 Neil Macrosan, an Australian entrepreneur and software developer, has lost his appeal against the rejection of his patent application by the UK Patent Office. He sought patent protection for a method of preparing documents "for use in creating a legal entity by means of a data processing system." On the same day, the UK Court of Appeal also dismissed an appeal against a registered software patent held by IT company Aerotel for a computer program that creates a new network infrastructure for a group of computers.

The two English judges presiding over the cases considered that the first case concerned a business method and therefore could not be patented, while the second was regarded as a patentable hardware change. That is why a third judge, in the person of Mr. Brimelow from the United Kingdom, called for a referral to the Appellate Chamber of the EPO to clarify the substantive legal framework regarding the patentability of software patents. "Different rulings by the EPO's Boards of Appeal have created uncertainty regarding the patentability of computer programs under the European Patent Convention (EPC)," the EPO said, adding that Judge Brimelow had referred the issues to the EPO to ensure legal clarity. The four guidelines given by the European Patent Office regarding the patentability of software patents, in order to unify the practice of national courts, is discussed in detail in the Anglo-Saxon post factum doctrine [16] .

That is why for more than a decade the question of a decisive supranational body for cases in the field of European patent law has been raised, which could be created within the framework of the proposals for a unitary patent of the European Union and accordingly for a Unitary Patent Court, but clearly legislative will and focus on the subject is missing in the European Parliament, as unlike the wonderful substantive legal decisions and the achieved Regulations on trademarks and designs, for a similar EU normative act, which would be modern and concern software patents, it is clearly "too early", despite the technological boom of artificial intelligence and robotics in the 21st century.



Author: Mr. Atanas Kostov - patent attorney




[2] Argument from the Berne Convention and Art. 3, para. 1, item 1 ZAPS;

[3] 2FFII, an NGO opposed to the patenting of software works, which provides statistical information has estimated that there may be around 30,000 such European software patents, based on a statistical analysis of the EPO's patent database. See:;




[7] Thus case No. T641/00, which is motivated by the conclusion that the invention can consist of a combination of technical and non-technical features. In such cases, the EPO usually applies the so-called "Comvik approach" to assess whether the invention has an "inventive step". Any non-technical function, i.e. one from an area excluded from patentability, according to Article 52, paragraph 2 and paragraph 3 of the EPC, cannot be taken into account in the examination regarding the "inventive step" criterion, unless it interacts with a technical object (subject of the patent application) which is aimed at solving a technical problem.

[8] See Case T 0641/00: "An invention consisting of a mixture of technical and non-technical features and having a technical character as a whole must be assessed against the requirement of an inventive step, taking into account all the features that contribute for the stated technical character, while features which do not contribute to it cannot support the presence of an inventive step". 

[9] In its practice on the subject, the European Patent Office constructs the following reasoning: EPO: "The term ``computer-implemented inventions'' is intended to cover claims that designate computers, computer networks, or other conventional programmable digital apparatus, where, at first glance, the new features of the claimed invention are realized by a new program or programs".

[10] In 1981 The Supreme Court of the United States makes a new interpretation of Article 35 of the American Patent Act (from English. Patent Act), in connection with a case concerning a software patent in the case "Diamond v. Diehr" (from English. Diamond v. Diehr, 450 US 175 (1981). The patent application at issue relates to a registered invention for casting and curing raw, synthetic rubber. The process uses a mold to precisely form and ripen the material under heat and pressure, followed by curing of the synthetic rubber in the mold so that the product retains its shape and is functionally operational after the process is complete.The best combination of time, temperature and curing, which is important for press opening, is calculated based on the Svante Arrhenius equation (Swedish physical chemist, winner of the Nobel Prize in Chemistry, creator of the theory of electrolyte dissociation.) The applicants point to the innovation of the claimed patent in their contribution to continuously monitor and measure the temperature inside the mold. These temperature measurements are made automatically by a computer that repeatedly recalculates the curing time according to the Arrhenius equation. The Supreme Court concluded that "patent claims cannot be unlawful simply because they contain a mathematical formula, computer program, or digital code," but rather, they are patentable if they apply to a structure or process that can are considered in their entirety as technically applicable, i.e. perform a technical function that patent laws consider as subject to protection.

[11] When the claimed invention does not offer a new technical solution, it fully fulfills the norm of Article 52, paragraph 2, proposal three of the EPC, and the same should be rejected as unpatentable. The practice of the EPO is quite consistent regarding the treatment of the various elements of the factual composition of Art. 52, paragraph 2 of the EPC, and mathematical methods are firmly excluded from patentability.

[12] In Article 2b of the Directive in question, it was proposed that the assessment of "technical contribution", which is a mixture of the traditional tests for inventive step and novelty, should be considered performed on the patent claim as a whole, so that innovative software running on non-innovative " technical" hardware, to be considered new and containing a technical result making it eligible for patent protection.

[13] In programming language theory and proof theory, the Curry–Howard correspondence (also known as "Curry–Howard isomorphism or equivalence", or interpreting proofs as programs and propositions or formulas as types) is the direct relationship between computer programs and mathematical proofs. The generalization of syntactic analogy between systems of formal logic and computer mathematical models was first discovered by the American mathematician Haskell Currie and logician William Alvin Howard. It is the connection between logic and computation that is usually attributed to Currie and Howard, although the idea is related to the operational interpretation of intuitionistic logic given in various formulations by L. Brouwer, Arend Hayting, and Andrey Kolmogorov (see "The Brouwer-Haying Interpretation- Kolmogorov") and Steven Klein (see Feasibility"). All this is important in view of the thesis that computer programs have their functionality, logic and in this case - technical applicability, which can be proved mathematically and logically through the "Curry-Howard isomorphism".

[14] This legal norm establishes the imperative rule that computer programs, regardless of whether they are source or object, are protected as literary works within the framework of the Berne Convention (as amended in 1971).

[15] See Bertrand WARUSFEL "La brevetabilité des inventions logicielles dans les jurisprudences européennes et américaine" Colloque AFDIT 2002, B. Warusfel, 2002-2003. p.4 and p.8;

[16] Thus Philip Leith, "Software and Patents in Europe," Cambridge University Press, UK, 2007, p. 212