Relevant Provisions in the EPC
The provision in the EPC that is the most relevant to the patentability of computer-implemented inventions is article 52 EPC (patentable inventions). This article defines patentable inventions. Although article 52 EPC is basically the core article relating to the patentability of computer-implemented inventions, it is nowadays rare to receive an objection under article 52 EPC. In the present practice of the EPO, most computer-implemented inventions that are rejected, are rejected under article 56 EPC (inventive step).
Article 52 Patentable inventions
Paragraph 1: Definition of patantable inventions
Paragraph 1 of Article 1 defines what are considered to be patentable inventions:
European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.
This paragraph lists four requirements for patentable subject-matter.
Invention
European patents shall be granted for any inventions, …
For something to be patentable, it is required to be an invention. The EPC does not define an invention though. Furthermore, the Boards of Appeal have never taken the step of defining an invention. However, the next phrase in paragraph 1 suggest that inventions are technical:
…, in all fields of technology, …
Again, the EPC does not define “technology” nor “technical”. This phrase was only introduced into Article 52 with the entering into force of the EPC 2000. The addition of the phrase was a necessity of the entering into force of the TRIPS-agreement. Article 27 TRIPS does not allow any of the WTO-states to exclude a field of technology. Around 1969–1970, German caselaw developed a definition of the concept technical:
the effect of harnessed natural forces and the controlled use of natural phenomena
This definition is now often quoted in the context of technicallity in European patent law.
Novelty
The second requirement for something to be patentable is the novelty requirement.
…, provided that they are new, …
Novelty is defined in Article 54 EPC. In practice, this requirement does normally not play a special role in software patent applications compared to other fields of technology. It is not completely irrelevant though. There has been debate whether subject-matter is excluded from patentablility under article 52 EPC if the only novel features of a claim are non-technical. This will be discussed furtheron.
Inventive step
Paragraph 1’s third requirement is the requirement of inventive activity.
…, involve an inventive step …
Inventive step is defined in Article 56 EPC. As most patent applications relating to software are nowadays refused under Article 56 instead of Article 52, this requirement plays quite a substantial role in the assessment of the patentablity of software. Inventive step will be the subject of later discussion.
Industrial application
The fourth requirement for patentablity from Article 52 paragraph 1, is the requirement of the invention being susceptible of industrial application.
… and are susceptible of industrial application.
Susceptibility of industrial application is defined in Article 57 EPC. This requirement is rarely an issue in examination proceedings before the EPO. As this is usually also the case with patent applications relating to software, this requirement will not be discussed any further here.
Paragraph 2: Exclusions from patentability
Although the requirement of the subject-matter concerning an invention to be patentable, is not defined in the EPC. Paragraph 2 provides a bit of help by providing a non-exhaustive list of subject-matter that is excluded from patentability:
The following in particular shall not be regarded as inventions within the meaning of paragraph 1:
- discoveries, scientific theories and mathematical methods;
- aesthetic creations;
- schemes, rules and methods for performing mental acts,
playing games or doing business, and programs for computers;
- presentations of information.
Paragraph 3 limits the exclusions of paragraph 2:
Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extend to which a European patent application or European patent relates to such subject-matter or activities as such.
in particular
The list of exclusions of article 52 is not exhaustive. This can be concluded from the words “in particular” in paragraph 2. It is unclear what further fields the article intends to exclude from patentability. However, it is generally believed that abstract, non-technical subject-matter is to be regarded to be unpatentable analogous to paragraph 2 sub a.