European Patent Office

The European Patent Office (the EPO) is the primary organ of the European Patent Organisation (EPOrg). These were created by the European Patent Convention (EPC). The EPC has 36 signatory countries, including those that form the European Union.

The countries of the European Union are thus bound by the EPC, but the EU institutions have no control over the EPO's behaviour because the EPO (and the EPOrg) are not EU institutions.

The EPO approves thousands of software patents per year, but denies doing so.

A troubled institution

In September 2008, the staff of the EPO went on strike to complain about the decline in patent quality. The Staff Union of the EPO, SUEPO,[1] have a number of criticisms on their website.

In May 2009, the EPO President Alison Brimelow announced she would be stepping down after less than two years in the job.

Also in May 2009, the EPO office in Munich was surrounded by pigs and tractors in a protest against patents on biotech.

Key people

The EPO president, selected in March 2010, is Benoît Battistelli. Mr. Battistelli served s Deputy Chairman of the EPO's Administrative Council since 2006 Previous presidents were Alison Brimelow and Alain Pompidou.

David Sant also held a prominent position during the EU software patents directive.

Democratic problems

The EPO is a strange organisation because it's membership is very similar to the members of the EU, but it was formed before the EU and is not an EU institution. This means the EU has no control over the EPO. This creates a dangerous problem because the EPO is master of interpreting patent law. They can change the meaning of patent law without having to go through the usual democratic channels for changing legislation. Further, the EPO refuses to accept suggestions in any languages other than English, German or French, so people of other languages have reduced capacity to participate in the consultations of the EPO. This also favours large enterprises who can afford translators over SMEs and individuals.

The separation of powers in European patent governance has often been questioned. As patent attorney Rob J. Aerts says "under the intergovernmental EPC system it is difficult to speak of a functional separation of powers".[2]

Board Of Appeal decisions

Hartmut Pilch said that software patent granting in Europe is largely based on "adventurous landmark decisions of their Board of Appeal in 1986 and 1997".

Excerpt from the Aerotel v. Telco ruling

(See Aerotel v. Telco, page 11, 12)

The EPO's Board of Appeals have given various incompatible rulings. This is normal since the members change per board.

(1) The contribution approach

Ask whether the inventive step resides only in the contribution of excluded matter – if yes, Art.52(2) applies.

This approach was supported by Falconer J in Merrill Lynch but expressly rejected by this Court.

(2) The technical effect approach

Ask whether the invention as defined in the claim makes a technical contribution to the known art - if no, Art.52(2) applies. A possible clarification (at least by way of exclusion) of this approach is to add the rider that novel or inventive purely excluded matter does not count as a “technical contribution”.

This is the approach (with the rider) adopted by this Court in Merrill Lynch. It has been followed in the subsequent decisions of this Court, Gale and Fujitsu. The approach (without the rider as an express caution) was that first adopted by the EPO Boards of Appeal, see Vicom, IBM/Text processing and IBM/Data processor network.

(3) The “any hardware” approach

Ask whether the claim involves the use of or is to a piece of physical hardware, however mundane (whether a computer or a pencil and paper). If yes, Art.52(2) does not apply. This approach was adopted in three cases, Pension Benefits, Hitachi and Microsoft/Data transfer (the “trio”). It was specifically rejected by this Court in Gale.

However there are variants of the “any hardware” approach:

(3)(i) Where a claim is to a method which consists of an excluded category, it is excluded by Art.52(2) even if hardware is used to carry out the method. But a claim to the apparatus itself, being “concrete” is not so excluded. The apparatus claim is nonetheless bad for obviousness because the notional skilled man must be taken to know about the improved, excluded, method.

This is the Pension Benefits approach.T 931/95 Pension Benefit Systems Partnership

(3)(ii) A claim to hardware necessarily is not caught by Art.52(2). A claim to a method of using that hardware is likewise not excluded even if that method as such is excluded matter. Either type of claim is nonetheless bad for obviousness for the same reason as above.

This is Hitachi, expressly disagreeing with Pensions Benefits about method claims.T 258/03 Auction Method/Hitachi

(3)(iii) Simply ask whether there is a claim to something “concrete” e.g. an apparatus. If yes, Art.52(2) does not apply. Then examine for patentability on conventional grounds – do not treat the notional skilled man as knowing about any improved excluded method.

This is Microsoft/Data Transfer.[3]

List of important decisions

Oldest first:

• 1987, Vicom/Computer-related invention T0208/84:

  "a method for obtaining and/or reproducing an image of a physical object or even an image of a simulated object (as in computer-aided design/computer-aided manufacturing … systems) may be used e.g. in investigating properties of the object or designing an industrial article and is therefore susceptible of industrial application. Similarly a method for enhancing or restoring such an image, without adding to its informational content, has to be considered as susceptible of industrial application ... a claim directed to a technical process which process is carried out under the control of a program (… in hardware or in software) cannot be regarded as relating to a computer program as such …, as it is the application of the program for determining the sequence of steps in the process for which in effect protection is sought ... Generally claims which can be considered as being directed to a computer set up to operate in accordance with a specified program (whether by means of hardware or software) for controlling a technical process cannot be regarded as relating to a computer program as such … making a distinction between embodiments of the same invention carried out in hardware or in software [is] inappropriate"

• 1990, IBM Corp./Data processor network (1988) T06/83 - application upheld
• 1990, IBM Corp./Computer-related invention (1988) T115/85 - application upheld
• (year??), Sharp T1188/04
• (year??), File search method/Fujitsu T1351/04:

  "The claimed method requires the use of a computer. It is therefore technical in character and constitutes an invention within the meaning of art 52…"

• 15th November 2006, Duns Licensing Associates T 0154/04 - which was mentioned in Symbian v. Comptroller General (2008, UK) as having considered the Aerotel v. Telco (2006, UK) ruling
• (year??) T0154/04
• 29 June 2007, Gameaccount Ltd T 1543/06:

  "[A]n invention which as a whole falls outside the exclusion zone of [art 52(2)] (i.e. is technical in character) cannot rely on excluded subject matter alone, even if it is novel and non-obvious (in the colloquial sense …), for it to be considered to meet the requirement of inventive step. … [I]t cannot have been the legislator's purpose and intent on the one hand to exclude from patent protection such subject matter, while on the other hand awarding protection to a technical implementation thereof, where the only identifiable contribution of the claimed technical implementation to the state of the art is the excluded subject-matter itself. It is noted that here the term 'contribution' encompasses both means (i.e. tangible features of the implementation) and effects resulting from implementation"

• 2010: T354/07 (overview: Bad News For Meta-Methodists)

Art 52 consultation, 2008-2009

(See EPO EBoA referral G3-08)

In October 2008, the EPO's president referred a set of questions regarding software patents to the EPO's Enlarged Board of Appeal. A public consultation was held in early 2009 and there were almost one hundred briefs submitted to EPO EBoA G3-08. The decision of the EBoA, published in May 2010, was that the EBoA cannot answer this type of question. All questions were judged "inadmissible".

2008 protest of examiners

In September 2008, patent examiners from the EPO went on strike to protest the low quality of patents being churned out by the EPO's procedures. They also published results of an informal survey showing that only 6% of patent examiners had confidence in the President of the EPO, Alison Brimelow, and her team of Vice-Presidents.[4][5]

Related pages on ESP Wiki

• Do software patents exist in my area?
• EPO does grant software patents
• UPLS - a proposal from the European Commission which would create a centralised patent court that would probably uphold the EPO's software patents

External links

• EPO's official site: www.epo.org
• EPOrg's subpage on www.epo.org
• 2009 pamphlet: Patents for Software?
• October 2008 EPO PR: President of the EPO asks for clarification of exclusion
• CII e-learning module 1 (Gnash or other flash player required)
• CII e-learning module 2 (Gnash or other flash player required)
• EPO case law is not binding to member states, 2006 statement from the European Commission (see FFII's reaction)

Third party

• Wikipedia: European Patent Office
• Wikipedia: European Patent Organisation
• Is the demand for patents stifling reform?, May 2009 article about hesitations regarding expanding patent system cooperation
• The Political Legacy Of Ms Alison Brimelow, March 2010