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Computer Related Inventions

The Opinion G03/08 of the Enlarged Board of Appeal relating to the patentability of computer programs has been published. The conclusion may seem disappointing, but is a lot more helpful than it appears. Although the Enlarged Board refuses to answer the questions it still manages to confirm and clarify the practice that has developed over the last 10 or so years.

In its opinion, the Enlarged Board states

-   that it is bound by the EPC and will not be used for political reasons

-   that Board of Appeal decisions that appear conflicting may actually be consistent when examined more thoroughly

-   that differences between Board of Appeal decisions may be the result of a natural development, in particular in new technical fields

 

 

The text passages in italics are quotations from the opinion:

“For example, a presidential referral is not admissible merely because the European Parliament and Council have failed to adopt a directive on CII patenting or because consistent Board rulings are called into question by a vocal lobby”

 

“Hence the President has no right of referral under Article 112(1)(b) EPC simply in order to intervene, on whatever grounds, in mere legal development if on an interpretation of the notion of "different decisions" in the sense of conflicting decisions there is no need for correction to establish legal certainty.”

 

The Enlarged Board then explains why it is not within the power of the Enlarged Board to answer the questions, and in the process of doing so, answers some of them anyway and clarifies some important concepts, such as

What is a computer program and what are its main characteristics

What does technical consideration imply

 

 

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 Enlarged Board held this question inadmissible, stating that the apparent conflict between decisions T424/03 and T1173/97 should be seen as a natural development of practice related to an emerging technical field, rather than a real conflict. The Enlarged Board also notes that the different ways of reasoning underlying the decisions would be likely to give the same outcome in terms of what would be considered patentable.

Nevertheless, the Enlarged Board has chosen to comment on the established case law.

While the Enlarged Board is aware that this rejection for lack of an inventive step rather than exclusion under Article 52(2) EPC is in some way distasteful to many people, it is the approach which has been consistently developed since T 1173/97 and since no divergences from that development have been identified in the referral we consider it not to be the function of the Enlarged Board in this Opinion to overturn it

 

So, while apparently refusing to answer the questions, the Enlarged Board is taking the opportunity to confirm the practice that has been emerging over the last 10 or so years.

 

Question 2

"(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable storage medium?

(b) If Question 2(a) 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 Enlarged Board identifies a logical gap in the question itself, in the interpretation of what a computer program amounts to. The Enlarged Board points out that a computer program is a sequence of instructions, which is not identical to a method carried out by a computer. Hence, a computer program claim and a method claim do not have the same scope, although they may relate to the same method.

 

“In the present case there is a logical distinction between a method carried out by a computer and the sequential list of instructions which specify that method.”

 

“the Enlarged Board considers that the skilled person understands the word "program" to refer to the sequence of instructions specifying a method rather than the method itself.”

 

The Enlarged Board then proceeds to examine whether, given this interpretation, there is still a divergence of decisions and concludes that there is not. Therefore, the Enlarged Board does not answer question 2.

 

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 3(a) is answered in the positive, is

it sufficient that the physical entity be an

unspecified computer?

(c) If Question 3(a) 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 Enlarged Board holds that none of the decisions cited in the referral as conflicting on this point actually required there to be a technical  effect on a physical entity. They are all consistent on the requirement of a technical effect, but do not explicitly state that the effect has to be on a physical entity. Therefore, there is no conflict, and the Enlarged Board does not answer the question.

 

Question 4

"(a) Does the activity of programming a computer necessarily involve technical considerations?

(b) If Question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

(c) If Question 4(a) 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 Enlarged Board holds the opinion that programming involves technical considerations, but these technical considerations are not necessarily sufficient to confer a technical character to a program, and so the question becomes irrelevant as it is based on a miscomprehension.       

 

“However such technical effects are not sufficient to confer "technical character" on the programs; they must cause further technical effects. In the same way, it seems to this Board, although it may be said that all computer programming involves technical considerations since it is concerned with defining a

method which can be carried out by a machine, that in itself is not enough to demonstrate that the program which results from the programming has technical character; the programmer must have had technical considerations beyond "merely" finding a computer algorithm to carry out some procedure.”

 

For these reasons it is decided that:

The referral of 22 October 2008 of points of law to the

Enlarged Board of Appeal by the President of the EPO is

inadmissible under Article 112(1)(b) EPC.

 

And with this, we can all get back to business, confident that the practice developed in Europe allowing claims related to computer implemented inventions and in particular computer programs is not threatened.

 

 

The entire opinion can be found on

http://documents.epo.org/projects/babylon/eponet.nsf/0/DC6171F182D8B65AC125772100426656/$File/G3_08_opinion_en.pdf

 
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