Software Patents Under The European Patent Convention - Article 52 of The European Patent Convention

Article 52 of The European Patent Convention

The European Patent Convention (EPC), Article 52, paragraph 2, excludes from patentability, in particular

1. discoveries, scientific theories and mathematical methods;
2. aesthetic creations;
3. schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
4. presentations of information."

Paragraph 3 then says:

The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such." (emphasis added)

The words "as such" have caused patent applicants, attorneys, examiners, and judges a great deal of difficulty since the EPC came into force in 1978. The Convention, as with all international conventions, should be construed using a purposive approach. However, the purpose behind the words and the exclusions themselves is far from clear.

One interpretation, which is followed by the Boards of Appeal of the EPO, is that an invention is patentable if it provides a new and non-obvious "technical" solution to a technical problem. The problem, and the solution, may be entirely resident within a computer such as a way of making a computer run faster or more efficiently in a novel and inventive way. Alternatively, the problem may be how to make the computer easier to use, such as in T928/03, Konami, Video Game System.

The position in Europe can be contrasted with that of other countries such as the USA and Australia. In these countries, the mere use of a computer is sufficient to make a business method patentable even if the computer is not being used in a novel or inventive way and only the underlying business method provides the patentable features. Such a position has been specifically rejected by the EPO in decisions such as T258/03 (Hitachi/Auction method).