Comparing US, European Patent Law

It is easier to obtain patent protection for computer software and/or business method type inventions in the US as opposed to Europe, as the US criterion of a “useful, concrete and tangible result” is easier to meet than the corresponding European “technical effect” or “technical character” requirement.

An invention consisting of software that controls a machine, for example, would most likely meet the technical effect requirement in Europe and would also certainly be patentable subject matter in the US.

“Pure” business methods, without any computer software aspect, would not be patentable in Europe or the US. In Europe, a method only involving economic concepts and practices of doing business would not be patentable. The European Patent Office judges technical character in business method inventions with reference to the following issues:

* What is the technical (as opposed to the commercial) problem solved?

* What are the technical considerations involved in the solution offered?

* How does the claimed subject matter affect the technical functioning of the method/system claimed?

A business method that is implemented using computer software, such as a new Internet business model, will be patentable if it has the required technical contribution to enable the business model to work.

In the US, this kind of invention has, in recent years, certainly been easier to patent than in Europe. However, in the recent case of In re Stephen W Comiskey [2007] Fed. Cir. No. 2006-1286, the US Court of Appeals for the Federal Circuit held that a pure business method consisting only of a mental process, without a computer system component, is not patentable. This brings the US and European approaches closer.

To merely automate a known human transaction process using well-known automation techniques is not patentable. For example, to automate the filling in of a form would lack inventive content.

Other countries

The US and European positions represent the two major positions on patentability of computer software. The position in the UK is similar to that in Europe, although in recent times, following the UK Court of Appeal single judgment covering two cases in the Aerotel and Macrossan case (Aerotel Ltd v Telco Holding Ltd and Others, and Neal William Macrossan's application), the UK courts and Patent Office were taking a relatively restrictive view on software and business method patentability compared to the European Patent Office.

Specifically, the UK Patent Office has until recently had a policy of refusing patent applications with claims directed to a computer program, or to a computer program on a carrier.

However, in the recent Astron Clinica case, Astron Clinica [2008] EWHC 85 (Pat); [2008] WLR (D) 12, the UK High Court held that if claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable then, in principle, a claim to the program itself should also be allowable. The High Court stated that in these circumstances “the claim to the computer program must be drawn to reflect the features of the invention, which would ensure the patentability of the method which the program is intended to carry out when it is run”.

Accordingly, the UK Intellectual Property Office has issued an updated practice note, reflecting this thinking. This development aligns the UK Patent Office's approach more closely with US and European thinking.

Traditional approach

Most other “First World” countries such as Australia, Canada and Japan have followed a similar, but more conservative approach than the US. In Australia, the invention must be defined in a manner that is capable of technological implementation. A recent decision held that a patentable invention must have some physical aspect, which would not exclude software-related inventions.

New Zealand is in the process of amending its Patents Act 1953, with provisions based on the current Australian and UK Acts. The revised legislation does not exclude patentability of business method and software patents.

The position of the Japanese Patent Office (JPO) is similar to that of the EPO. The JPO was the first office to issue Examination Guidelines for examining computer software-related inventions. The recent guidelines were issued in 1993, and they provided that computer software-related invention is patentable on condition that “information processing by software is concretely realised by using hardware resources”.

Article 25 (2) of the Patent Law of the People”s Republic of China excluded “rules and methods for mental activities” from patent protection. This article used to be an obstacle to the protection of computer software inventions, but China has moved from this viewpoint and currently provides that a computer software invention will be patentable if the computer software described in the invention application constitutes a technical program.

According to Section 3(k) of the Indian Patents Act: “A mathematical or business method or computer programs per se or algorithms are not patentable.” However, for computer software, the Indian Patent Office followed the practice of allowing a patent claim if the computer software was incorporated in hardware (embedded software). This practice was given formal recognition by permitting “technical application of computer program to industry” or “a combination with hardware” as exceptions to non-patentability of computer programs.

It is a good idea for prospective patentees to review the current position in the countries of interest when preparing to file a patent application for inventions of this kind. As a rule of thumb, in order to patent a software or business method invention in most countries, it is necessary for the invention to have “technical character” more or less along the lines of the European requirements

Date published: 2009/03/17
Author: Chris de Villiers

Tags: us european patent law