Software And Business Methods — Patentable Subject-Matter In Europe?

The CLS Bank case (CLS Bank Int'l v. Alice Corp. Pty. Ltd., 2011-1301) decision issued by the Court of Appeals for the Federal Circuit highlighted the difficulty that those working in the field of software patents in the US are having in deciding what constitutes patent eligible subject-matter (discussed in a prior Mintz Levin advisory). On the other side of the pond, a similar debate continues to rage, with possibly a small amount of ground having been gained by patentees in a decision issued by the England and Wales Court of Appeal (HTC Europe & Co. Ltd. v Apple Inc.[2013] EWCA Civ 451, dated 3 May 2013). We discuss this decision here, in the context of how the UK courts and the European Patent Office have been viewing this type of subject-matter over the last few years.

Unlike the situation afforded by US legislation, computer programs and business methods, along with, among other things, "mathematical methods", "mental acts", "games" and "presentations of information", are, at first glance, specifically excluded from patentability by the European Patent Convention and the UK Patents Act. Despite this rather unpromising start, a glimmer of hope lies in the fact that the legislation stipulates that these things are only excluded from patentability "for an application or patent that relates to these activities as such". So are they excluded or not? This combination of wording has resulted in the legislation being widely viewed as unclear, and as a consequence, as in the US, the patentability of this type of subject-matter is in practice determined with reference to the large and ever-increasing body of case law.

How does the European Patent Office handle computer-related subject-matter?

Having started out from the original premise that this sort of subject-matter is not patentable, the EPO has gradually adapted over the years, such that many inventions can be protected after all. For a start, it is now accepted that a computer-implemented method is not a computer program as such and therefore constitutes patentable subject-matter (T424/03 Clipboard formats/Microsoft). Another important milestone was the allowance of a claim to a computer program product as a claim category however, in order to meet the requirements of inventive step, the program needs to "produce a further technical effect which goes beyond the normal physical interactions between the program and a computer" (T1173/97 Computer program product/IBM). A third case (T641/00...