By Marilena Nikolaraki, Salaried Partner at A & K Metaxopoulos and Partners Law Firm
Software patentability remains a tricky issue, raising questions about a computer program’s inventive step and technical characteristics. However, a deep dive into the applicable legislation provides much-needed clarity for rights holders on Greece.
Legal protection for software is an increasing concern due to the development of new technology in recent years. The EU Computer Program Directive (2009/24/EC) dictates that member states must protect computer programs through copyright as “literary works” (within the meaning of the Berne Convention), provided that these are original – in the sense that they are the author’s own intellectual creations. Article 1(2) of the directive further specifies that protection applies to expression in any form of a computer program. Copyright protection is also afforded to computer programs through the Agreement on Trade-Related Aspects of Intellectual Property, which provides that they can be protected as literary works under the Berne Convention, either in source or object code.
Protection under the directive only covers a program’s code. Functionality, ideas or principles underlying its elements and interfaces, programming language or the format of data files used to exploit its functions do not constitute a form of expression and thus are not protected by copyright. The Court of Justice for the European Union adopted the advocate general’s opinion in SAS Institute v World Programming (C-406/10), saying that:
to accept that the functionality of the computer program can be protected by copyright, would amount to making it possible to monopolise ideas, to the detriment of technological progress and industrial development.
As well as affording copyright protection to computer programs, the directive also outlines other legal provisions that offer security, such as those concerning patent rights, trademarks, unfair competition and trade secrets.
In terms of patent protection, the European Patent Convention (EPC) provides in Article 52(1) that “European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible to industrial application”. While Article 52(2) expressly excludes computer programs from patentability, providing that they are not to be regarded as inventions, Article 52(3) states that patentability is excluded only to the extent to which a European patent application or European patent relates to the subject matter as such.
The same is also detailed in the Greek Patent Law (1733/1987), Article 5(1) of which provides that:
patents shall be granted for any inventions which are new, involve an inventive step and are susceptible of industrial application. The invention may relate to a product, a process or an industrial application.
Paragraph 2 of the same article similarly excludes computer programs from patentability, as they are not considered inventions.
How can computer programs be patented in Greece and Europe?
Generally, software-related inventions are patentable in Greece insofar as the EPO considers them patentable – as Greece follows the EPO’s practice on this matter. For software to be patentable, it must first have a technical character. In other words, it must involve technical teaching (eg, instructions for the person skilled in the art) on how to solve a technical problem using technical means.
The criterion of ‘technical character’ applies to all inventions in technical fields and is a requirement under both the EPC and Greek Patent Law. Computer programs are not regarded as inventions if claimed as such because their core components (algorithms and programming code) are not considered technical characteristics.
To examine whether the subject matter constitutes an ‘invention’, the EPO follows the so-called ‘any-technical-means’ approach: claims directed to a computer-implemented method, a computer-readable storage medium or a device are not objected under Article 52 of the EPC, as any method involving the use of technical means (eg, a computer) and any technical means themselves (eg, a computer or a computer-readable storage medium) have technical character and thus qualify as ‘inventions’.
However, according to the EPO’s practice and as explained in its guidelines (G II 3.6), a claim to a computer program avoids exclusion from patentability only if it produces a further technical effect when run on a computer. More specifically, the EPO’s guidelines, which the Greek Industrial Property Organisation also follows, explain that to have a technical character, a program must produce a “further technical effect” when run on a computer, namely one “going beyond the normal physical interactions between the software and the hardware on which it is run”. Normal and expected technical effects do not suffice in this regard. Such a further technical effect could include “the control of a technical process or the control of internal functioning of the computer itself or its interfaces”.
When it comes to inventions comprising both technical and non-technical features (mixed type inventions), as is often the case with software-related inventions, the technical features may attribute the necessary technical character in order for the invention to qualify as such.
Therefore, computer programs with a technical character in this sense do not fall under patentability exclusion. A computer program that implements a method making a technical contribution would also be considered to produce a further technical effect when run on a computer.
If the claimed subject matter is found to have technical character (ie, if it passes the first test to be considered as an invention), then the issues of novelty, inventive step and susceptibility of industrial application are examined.
The closest prior art is then defined to assess the invention’s novelty. If the invention is found to differ from the prior art upon comparison, it is considered new.
Upon its qualification as an invention and fulfilment of the novelty criterion, the subject matter undergoes further assessment to determine if it involves an inventive step (ie, one not obvious to a person skilled in the art). In cases of mixed-type inventions, all features that contribute to the invention’s technical character are considered in assessing whether an inventive step is present. According to the EPO’s Guidelines (G VII 5.4) these also include features that are not technical when considered in isolation, but in the context of the invention, indeed contribute to producing a technical effect serving a technical purpose. On the other hand, features which do not contribute to the technical character of the invention cannot support the presence of an inventive step (Enlarged Board of Appeal decision G1/19).
Therefore, claims related to a computer program may be considered to have the kind of technical character indicated above and, thus, can qualify as inventions. However, they may still be rejected for lack of an inventive step if their features do not make any technical contribution to the prior art.
Given this EPO practice, software-related patent applicants are encouraged to prepare their applications so as to highlight the technical features of the software, given that features which do not contribute to producing a technical effect cannot be relied upon to support their invention’s patentability.
