The European Patent Office, the core theory and "technical affects"

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Jozef Halbersztadt, an examiner at the Polish Patent Office, describes the way the practice at the European Patent Office practice evolved over the years, how Poland dealt with software patents until now and how in his view the directive should be amended to stop the EPO's misapplication of patent law to software.


Until 2004, Poland wasn't a member of the EPO and it was beyond the economic mainstream during last few decades. Nevertheless, we have a well established, 85 years old patent office. As many other smaller European countries such as Austria, Czechoslovakia and the Netherlands, Poland also followed German standards and traditions in patenting.

Until now patent applications on software are, with a few exceptions, only from abroad. Their number is not very high and the Polish Patent Office often is not following the EPO line. However, what exactly is the EPO line?

History of the EPC

The European approach to patenting, as all European ventures, is a mix: a synthesis of the former diversity. Two main builders of the common position were the Germans and the British.

As you probably know, in English "technicality" is not a clear term. In German and many other continental languages it means physicality, materiality; in English it is close to utility.

Maybe because of this the word "technical" is missing from the first paragraph of Article 52 of the original European Patent Convention. Instead the founding fathers attached an open list of non-technical activities as examples of non-invention subjects. I suspect that nobody at the birth of the European patents expected trouble. The list was seen, even with phrase "as such", as a solid barrier against unwelcome intangible subjects.

The barrier was however broken not because Englishmen (or Americans) cannot understand the true meaning of the word "technical". It can be problematic for them, but nevertheless I still do not know of any decision of the Boards of Appeal in which "technical" does not mean "physical", "material".

The broken prerogative

The barrier was broken in another place and the problem with technicality is only a by-product of this main event. The main "innovation" of the European patenting practice cannot be found in the European Convention. A trace of the new approach can however be found in the Implementing Regulations (note: these can be independently modified by the Administrative Council without requiring approval at a diplomatic conference).

But it is only a trace and one can wonder why a rule regulating the content of the description and obliging an applicant to indicate advantageous effects can introduce such a fundamental change:

The description shall . . . . . disclose the invention, as claimed, in such terms that the technical problem (even if not expressly stated as such) and its solution can be understood, and state any advantageous effects of the invention with reference to the background art;

(Rule 27 EPC)

The fundamental change which has arrived with the EPC (in Poland) is the "problem-solution-(effect)" approach. The invention can now be in any of them.

The "core" theory

Before the EPC arrival, the task of an examiner was to find essential features of the invention (in the claims) and to research and examine whether they are patentable. The Germans formalised this process in the so-called "core" theory.

The first stage of the "core" method applied to subject matter with technical and non-technical features meant weighing them to choose the group which prevailed. Only when technical features were more essential, the subject matter was potentially patentable.

At the first sight there isn't any change in the rule that the extent of the protection is determined by the the technical features in the claims:

The claims shall define the matter for which protection is sought in terms of the technical features of the invention.

(Rule 29 EPC)

The problem-solution-effects approach

However, the EPO replaced looking for the most essential features (the "core" theory) with looking for the objective task (problem) of modifying or adapting the closest prior art to provide the effects that the solution provides over the prior art.

In accordance with the EPO case law, the technical contribution to the art may lie either in the problem underlying and solved, or in the means constituting the solution of the underlying problem, or in the effects achieved in the solution of the underlying problem.

Practical consequences

After the EPO has dismissed the "core" theory, only subject matter with purely non-technical features became non-patentable per definition. Only one technical feature is enough to regard the subject matter as patentable. Even subject matter without any technical features is patentable if only it has the potential to produce a technical effect.

As one can observe in the attached examples, this required potential to produce a technical effect can be very vague. In the Karmarkar European Patent (a theoretical allocation method - a great sophisticated mathematical achievement) the claim that "industrial and technical resources" are allocated is the sole factor that is lending the algorithm its physicality.

Current EPO practice

This EPO decision is from 1990. As one can observe, the principle of the "further technical effect" was born very early. It took however until 2001 before it was written down to the EPO Guidelines. The Commissions Directive is now legitimising it. None of the amendments of the Parliament is addressing this issue, so there still is a need for a clear rule forbidding any post-solution claims, for example:

Once, in late 80's, the lending of technical character by the post-solution activity was explicitly forbidden by the Guidelines of the US PTO.

Today, if the EPO is finding that an application is essentially non-technical but there are some shades of technicality –as everybody suspects they are usually artificial–, it must prove that this technicality is known and obvious.

This is not easy because according to the case the law examiner is not allowed match any documents. The examiner must prove a link between them. And when in such a case an objection is raised, it's not because the subject matter lacks technicality. Such applications are rejected due to lack of inventive step.

Therefore, the purely non-technical COMVIK patent was revoked because of lack of inventive step. No amendment to the Directive is aimed at changing this situation.

Proposed solutions

It is however possible to do this, as proven by:

(1) The Polish version of art. 84 EPC (a recital could point to this fact)

This article is used to reject means-plus-function claims when they cover the non-technicality of the application;

(2) The Polish version of art 52 EPC, which was added to the law only in 2000, lacks the "as such" part. Furthermore the regulation of the Prime Minister was clearly modeled on the famous Red Dove / Disposition program landmark decisions' "tangibility clause", according to which a patent application should not be recognised as an invention when

(3) The earlier mentioned text about forbidding post-solution claims: