The long and winding code – a short history of European software patentability through the lens of pop culture
We’re taking you on a journey through the history of software patents in Europe, through the lens of pop culture. By zooming out and looking at the big picture of what the EPO has taught us over the years, we’ll be building up a clear vision on what you need to do to improve the success of your software patents at the EPO. At each step along the way through history, we’re stopping to see a case where the EPO redefined the law in a way that is still applied today.
In our first decade travelling through software patents in Europe, we have seen software patents looking to be killed off from birth when the European Patent Convention (EPC) seemed to exclude them from protection as set out in “European software patentability: A new hope”. We then had to wait until 1986 to see our story back on track, when we were taught in Vicom that software patents could be granted if they were “technical”, as discussed in “European software patentability: That’s not technical, this is technical”. Our story now takes us to a new decade – the 1990s.
Instalment III: The rise of the further technical effect
Europe in the 90s was a time of hedonism not seen since the 60s. In 1998, nearly a decade after the fall of the wall, Berlin and Frankfurt saw themselves at the centre of the European Techno scene. The newly unified Germany had become the new mecca of dance music following Detroit’s rein in the late 80s and early 90s slowly fading. Whilst over the English channel in the UK, super-clubs were all the rage with world-renowned clubs like Cream, Fabric, Gatecrasher, and Ministry of Sound at the centre of the global clubbing scene. With the election of Gerhard Schroder in Germany and Tony Blair in the UK the preceding year, there was also a political buoyancy across Europe. The music, the drugs, the political climate and overall positive spirit was taking Europe further, some might say to another level.
That same year, it would seem that this positivity was rubbing off on the EPO too, as they issued the landmark IBM decision, which clarified what we had been taught in Vicom. The EPO wanted more, they wanted to see software patents taken to another level too. In the IBM decision the EPO showed that for software to be patentable it needed to produce a “further technical effect”. So what do we mean by a “further technical effect” and why is the concept useful?
This decision was so useful because from Vicom, we were taught that software may be patentable if it is “technical”. But what does “technical” mean? Obviously, software needs to be run on a computer. If we add the computer to the claim, does that make it “technical”? Well IBM told us that simple additions such as the addition of hardware components to the claim is not enough. A “further technical effect” needs to be seen. This concept is described well in the EPO’s Guidelines for Examination (G-II, 3.6)
“A "further technical effect" is a technical effect going beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it is run. The normal physical effects of the execution of a program, e.g. the circulation of electrical currents in the computer, are not in themselves sufficient to confer technical character to a computer program”.
This defines what a “further technical effect” is not, so what is one? Helpfully the EPO Guidelines are on hand to help with that too by providing a whole host of useful examples (G-II, 3.6.1). In this section of the EPO’s Guidelines it is stated that:
“a computer program which specifies a method of controlling an anti-lock braking system in a car, determining emissions by an X-ray device, compressing video, restoring a distorted digital image, or encrypting electronic communications brings about a further technical effect when it is run on a computer”.
These are the clearer cut examples. It goes onto provide arguably more borderline, and arguably therefore more useful, examples such as “computer programs implementing security measures for protecting boot integrity or countermeasures against power analysis attacks”, software for “processor load balancing or memory allocation”.
In general, showing that a further technical advantage is achieved, whether it be increased processing speed, reduced processing or memory resource, reduced bandwidth, or improved security, is usually a step in the right direction for showing that there is a “further technical effect”. Another way to think about this point, is that for there to be a “further technical effect” there needs to be a technological improvement in the real world. Will better mathematics be patentable? No. Will better mathematics for implementing a better pension scheme be patentable? Still no. It is in the real-world, but it is one excluded area (mathematical methods) applied to another (methods for doing business). Will better mathematics for processing images? Maybe. Well, it probably wouldn’t be excluded, but don’t forget that you have to then show that the invention is also novel and inventive. The same logic is applied by the EPO when dealing with AI inventions. Is better AI patentable? No. Is better AI for image analysis? Maybe, provided it is also novel and inventive.
The IBM case itself sums this up rather neatly, stating that
“A computer program product is not excluded from patentability”… “if, when it is run on a computer, it produces a further technical effect which goes beyond the "normal" physical interactions between program (software) and computer (hardware)".
On our journey through European software patent history, it has taken over 20 years from 1977 to 1998 to get to this point, but IBM, marks the beginning of the EPO providing real clarity on software patentability in Europe. We now know that the exclusions from patentability set out in the European Patent Convention (EPC) don’t apply if the invention is “technical”, and that for the invention to be “technical” it has to produce a “further technical effect”.
By zooming out and looking at the history of software patents in Europe, we are starting to build up a picture of not just how the EPO treats software patents, but how it has got to where it is.
Next, we’re going to see the BIG SPLIT, which breaks up software patent claims… forever!