Exclusion from patentability of computer programs

SHORT SUMMARY

In October 2008, the President of the European Patent Office (Alison Brimelow) referred a point of law concerning the application of the exclusion of computer programs as such to the Enlarged Board of Appeal (EBoA). On May 12, 2010, the EBoA published their Opinion, according to which the referral by the President was found inadmissible under Article 112(1)(b) EPC. Thus, the Opinion will not change the present EPO-practice regarding the patenting of Computer Implemented Inventions (CII).

THE REFERRAL

In October 2008, the President of the European Patent Office (Alison Brimelow) referred a point of law concerning the application of the exclusion of computer programs as such to the Enlarged Board of Appeal (EBoA) (Case Number G 3/08). The most relevant EPC article is Article 52 which reads as follows:

(1) 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 of industrial application.
(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information.
(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

The reason for the referral was that the President considered that diverging decisions of the boards of appeal had created uncertainty, and that some questions needed to be answered in order to enable a further harmonious development of case law in this field. The questions focused on different aspects of patentability: the first question on the relevance of the claim category, and the next three on where the line should be drawn between aspects excluded from patentability and aspects contributing to the technical character of claimed subject-matter.

Question 1: Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

The reason for question 1 was diverging decisions in T1173/97 and T424/03.

Question 2:

A. Can a claim in the area of computer programs avoid exclusion under article 52(2) (c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?
B. If question 2A is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

The reason for question 2 was diverging decisions in T1173/97 and T258/03-T424/03.

Question 3:

A. Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?
B. If question 3A is answered in the positive, is it sufficient that the physical entity be an unspecified computer?
C. If question 3A is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?

The reason for question 3 was diverging decisions in T163/85-T190/94 and T424/03-T125/01.

Question 4:

A. Does the activity of programming a computer necessarily involve technical considerations?
B. If question 4A is answered in the positive, do all feature resulting from programming thus contribute to the technical character of the claim?
C. If question 4A is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?

The reason for question 4 was diverging decisions in T1177/97-T172/03 and T833/91-T204/93-T769/92.

THE OPINION

Under Article 112(1)(b), the President of the EPO may refer a question to the EBoA in order to ensure a uniform application of the law, or if the question concern points of law of fundamental importance, where two Boards of Appeal have given different decisions on the referred question.

The EBoA states in the Opinion that the President is not allowed to use a referral as a means to replace rulings from the Boards of Appeal, or to refer a question because the European Parliament has not adopted any directive on CII patenting. Instead, the development of the law is an essential aspect, and it must be considered whether the different/divergent decisions are only a part of a constant development, in the course of which the older decision has less significance. According to the Opinion, such differences/divergences will not justify any presidential referral, since legal development is a principal duty of the Boards of Appeal. The President is thus only allowed to refer a question to the EBoA when there is a divergence or conflict in the case law making it difficult or impossible for the EPO to bring its patent granting practice into line with the case law of the Board of Appeal. A referral is not allowed in order to intervene in legal development.

In the Opinion, the EBoA cites T1173/97, IBM, 1999, in which the Technical Board of Appeal came to the conclusion that programs for computers must be considered as patentable inventions when they have a technical character, i.e. brings about a further technical effect which goes beyond the normal physical interactions between the program and the computer. According to this decision, it may be determined whether a claim to a computer program is excluded from patentability or not independently of the prior art. By taking this position, the so-called "contribution approach" was abandoned, which was a deliberate development of the case law.

As stated above, the reason for question 1 was diverging decisions in T1173/97 and T424/03 MICROSOFT, 2006, and according to the opinion of the EBoA, the conclusion in T 424/03 clearly contradicted the position taken in T 1173/97 on one point. While T 1173/97 declared "Furthermore, the Board is of the opinion that with regard to the exclusions under Article 52(2) and (3) EPC, it does not make any difference whether a computer program is claimed by itself or as a record on a carrier", T 424/03 stated "The subject-matter of claim 5 has technical character since it relates to a computer-readable medium, i.e. a technical product involving a carrier”.

However, it is pointed out in the Opinion from the EBoA that there was a period of seven years between the issuance of the two decisions T 1173/97 and T 424/03 cited above. Furthermore, the decision T 1193/97 has not been followed by any later decision, and the decision T 424/03 has not been challenged. Therefore, according to the Enlarged Board, even though a view expressed in T 424/03 deviates from a view expressed in T 1173/97, this is a only a legitimate development of the case law, that will not make the referral from the President admissible. Question 1 was therefore judged to be inadmissible.

Regarding the other three questions (Questions 2-4), the EBoA did not agree with the alleged differences in case law, and therefore also judged these questions to be inadmissible.

On May 12, 2010, the EBoA published their Opinion, according to which the referral by the President was found inadmissible under Article 112(1)(b) EPC. The Opinion will thus not change the present EPO-practice regarding the patenting of Computer Implemented Inventions (CII).

In the Opinion, the EBoA also clarifies the current EPO-practice regarding CII. A summary is given in the following:

1. A claim in the area of computer programs can avoid exclusion under articles 52(2) (c) and 52 (3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium, as any claim involving technical means avoids the exclusion. Thus, a claim which specifies “Program X on a computer-readable storage medium”, or “A method of operating a computer according to program X” avoids exclusion, while a claim to “Program X” falls under the exclusion. In other words, the presence of technical character is an absolute requirement for an invention.
2. Since T1173/97, a claim which specifies no more than “Program X on a computer-readable storage medium”, or a “A method of operating a computer according to program X” (i.e. no further technical effect is obtained when running the program X), will still fail to be patentable for lack of an inventive step under articles 52(1) and 56 EPC, as the only technical features in the claim are obvious. In other words, a patentable invention must provide a novel and inventive technical contribution to the prior art.
3. The list of excluded subject matters in article 52(2) EPC - including in particular programs for computers - is taken into account when assessing whether there is an inventive step. An elaborate system for how it is taken into account has been developed in the case law. This approach was defined in T641/00, COMVIK and in T258/03, Hitachi, and was summarized in T154/04, Duns. Novelty and inventive step can only be established on the basis of the technical features and aspects of the invention that contribute to the technical character of the claimed subject-matter. Thus, non-technical features or features that fall under the exclusions of Article 52(2) will not be taken into account when assessing whether there is an inventive step, unless they interact with technical elements so as to produce a technical effect e.g. by its application for the technical solution of a technical problem. Thus, a claim specifying a program X on a computer-readable storage medium, wherein program X achieves a further technical effect when it is run, is patentable if the further technical effect is new and inventive.