EPO Enlarged Board Referral On Software Patents
On 24 October 2008 a referral to the Enlarged Board of Appeal (EBA) by the President of the EPO Alison Brimelow concerning software patents was published.
The referral comprises four questions in an attempt to clarify the law, define the limits of patentability in this field, and importantly to give consistency as to how the law is applied at the EPO and throughout
The questions are as follows:
1 Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?
Under Art. 52(2)(c) EPC, claims to programs for computers are excluded from patentability, but Art. 52(3) EPC requires that this exclusion applies only to computer programs as such.
This first question seeks to clarify whether this exclusion can be overcome simply by changing the form of a claim, i.e., by formulating the claim as a computer implemented method or as a computer program product, rather than a computer program as such.
Claim as a whole
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 data storage medium?
It is established EPO case law that if the subject-matter of a claim has technical character, then it is not excluded from patentability under Art. 52(2) and (3) EPC.
Question 2(a) asks whether including a computer, or a program carrier onto which the program is recorded, in a claim gives the claim technical character and therefore overcomes the computer program exclusion. This question is based on decision T 258/03, in which a claimed method acquired a technical character simply by including a reference to technical means.
2(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?
If simply including a physical technical feature does not automatically give a claim to a program for a computer technical character, then what does? Under T 1173/97, computer programs are considered to be, in effect, methods and in order to have a technical character must demonstrate a further technical effect when run on a computer.
A further technical effect is defined in T 1173/97 as going beyond the "normal" physical interactions between program (software) and computer (hardware).
Question 2(b) seeks to clarify the divergence between decisions T 1173/97 and T 258/03 and proposes a minimum level of further technical effect with regard to computer programs.
Currently, EPO Examiners tend to construe the computer program exception very narrowly, meaning that almost any technical features in a claim confer the necessary technical character. However, although such claims are not objected to for being non-patentable subject matter, they are often objected to for lack of novelty or inventive step, because the technical features claimed amount to nothing more than well known computers or apparatus for recording computer instructions.
Individual features of a claim
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?
Question 3 overlaps Question 2 to a certain extent because they both ask if a technical effect is necessary for patentability. Question 3 focuses on the distinction between technical effects which have a physical effect either inside or outside the computer (for example; reduced power consumption, increase in processing speed), and technical effects within the computer program code itself (for example coding structures and architectures, making searching easier or faster, or using less memory for data storage).
3(b) If question 3 (a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?
If a technical effect in the real world is required, and this effect is within the computer on which the software is to be executed, does the computer need to be recited as a feature of the claim?
3(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?
On the other hand, if the technical effect can reside in the non-real world, for example improved data structures and programming architecture, can these effects be hardware independent? i.e., can the invention be claimed on its own without the computer or carrier medium?
The activity of programming
4(a) Does the activity of programming a computer necessarily involve technical considerations?
It is possible that technical character may also come from the activity associated with creating programs for computers, but it is not clear which activities could give rise to the necessary technical character.
Most modern high-level programming languages, particularly WYSIWYG * programming systems, are designed to move the programmer as far away from the technical low-level machine code as possible. It could be argued therefore that many (but certainly not all) programmers do not take technical considerations, such as memory and processor usage, into account because compilers will do the job of optimising the code for the hardware for them.
In order to answer this question the EBA will need to determine who the person skilled in the art of computer programming is and consider the actual tasks performed by the programmer and whether or not they are technical in character.
4(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?
In T 1177/97 the Board found that implementing a function on a computer system always involves, at least implicitly, technical considerations. If this is correct, does this mean that all the programming features count when assessing the technical character of the program?
4(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?
In contrast, T 833/91, T 204/93, and T 769/92 all considered the act of writing computer programs to be no more than performing a mental act and therefore excluded from patentability.
As can be understood from the foregoing, the issues that the questions in the referral address are complex and go to the heart of computer program technology and its implementation. The outcome of this referral and the EBAs answers to the questions will clarify what can be patented in the EPO in the computing arts, and provide for the scope of protection to be reduced, increased or substantially maintained as is depending on how the EBA answer the questions.
No doubt there will be considerable interest from many parties in this referral, and we expect amicus curiae briefs to be filed by a number of organisations and businesses. If you would like us to monitor this activity or submit an amicus curiae brief yourselves we would be happy to assist you. If you wish we can file a brief on your behalf without identifying you.
* What You See Is What You Get