f) Technical considerations: programming a computer 

It is not specified in the EPC whether, or under which circumstances, the activity associated with creating programs for computers, i.e. programming a computer, is a technical activity which is in principle patentable, or a non-technical activity which is as such excluded from patentability.

The President of the EPO referred to the Enlarged Board of Appeal the following point of law (see G 3/08 date: 2010-05-12, OJ 2011, 10; Question 4 of the referral): Does the activity of programming a computer necessarily involve technical considerations? The President of the EPO cited decision T 1177/97, where the board found that "implementing a function on a computer system always involves, at least implicitly, technical considerations". The reference to 'computer routines' made it clear that this implementation consisted of programming the computer (see also T 172/03). Contrary to these decisions T 833/91, T 204/93 and T 769/92 (OJ 1995, 525) considered programming to be a mental act of the programmer.

In Opinion G 3/08 date: 2010-05-12 (OJ 2011, 10) the Enlarged Board of Appeal considered that the referral asserted correctly that T 1177/97 considered that programming always involved technical considerations, at least implicitly, and that T 172/03 assumed the same in that it considered the skilled person, who, it was emphasised, was a technical expert, to be a software project team, consisting of programmers. On the other hand, T 833/91, T 769/92 (OJ 1995, 525) and T 204/93, were said to consider the programmer's activity, programming, to be a mental act, falling within the exclusions of Art. 52(2) EPC.

The Enlarged Board stated that there was no contradiction between these positions, as may be seen by considering the same case in a non-controversial field, for example bicycle design. Designing a bicycle clearly involves technical considerations (it may also involve non-technical, e.g. aesthetic, considerations), but it is a process which at least initially can take place in the designer's mind, i.e. it can be a mental act and to the extent that it is a mental act would be excluded from patentability (cf. also T 833/91, T 769/92, T 204/93, T 914/02 and T 471/05). Hence the question did not satisfy the requirement for a divergence in the case law and was therefore inadmissible.

While the referral did not actually identify a divergence in the case law, the Enlarged Board of Appeal considered that there was at least the potential for confusion, arising from the assumption that any technical considerations were sufficient to confer technical character on claimed subject-matter, a position which was apparently adopted in some cases (e.g. T 769/92). T 769/92 (OJ 1995, 525) was an example of an invention which concerned the internal functioning of a computer caused by the programs running on it. According to this decision the fact that technical considerations were required in order to arrive at the invention was considered to lend sufficient technical character to the invention as claimed for it to avoid exclusion from patentability under Art. 52(2)(c) and (3) EPC 1973, whereas no importance was attributed to the specific use of the system as a whole.

However, T 1173/97 set the barrier higher in the case of computer programs. It argued that all computer programs have technical effects, since for example when different programs are executed, they cause different electrical currents to circulate in the computer they run on. 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 seemed to this board, that 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.

The board in T 1173/97 concentrated on the effect of carrying out an algorithm on a computer, noting that there were always technical effects, which led the board, since it recognised the position held by the framers of the EPC, to formulate its requirement for a "further" technical effect. Only if a computer program, when run, produced further technical effects, was the program to be considered to have a technical character. In the same way, it would appear that the fact that fundamentally the formulation of every computer program requires technical considerations in the sense that the programmer has to construct a procedure that a machine can carry out, is not enough to guarantee that the program has a technical character (or that it constitutes "technical means" as that expression is used in e.g. T 258/03). By analogy one would say that this is only guaranteed if writing the program requires "further technical considerations".

In T 598/14 the application related to a method for generating, from an input set of documents, a word replaceability matrix defining semantic similarity between words occurring in the input document set. The board considered that the translation, with the aim of enabling the linguistic analysis to be done automatically by a computer, could be seen as involving, at least implicitly, technical considerations. This was also in line with decision T 1177/97 or opinion G 3/08 date: 2010-05-12 (OJ 2011, 10). However, according to G 3/08 date: 2010-05-12, point 13.5 of the Reasons, this is not enough to guarantee the technical character of subject-matter otherwise excluded from patentability under Art. 52(2) and (3) EPC. The technical character would have to be established on the basis that those considerations constituted "further technical considerations". The board concluded that the subject-matter of independent claim 1 lacked an inventive step (Art. 52(1) EPC and Art. 56 EPC).

In T 2825/19, the board considered that opinion G 3/08 date: 2010-05-12, when compared to decision T 1173/97, reframed the interpretation of technicality with respect to computer programs. G 3/08 date: 2010-05-12 (point 13.5 and 13.5.1 of the Reasons), explicitly rejected the position that any technical considerations are sufficient to confer technical character on claimed subject-matter. Such a narrower interpretation of the term "technical" with respect to computer programs is a normal development for the interpretation of a legal provision open to interpretation (see opinion G 3/19), and this was the case for "programs for computers" "as such" in Art. 52(2)(c) and (3) EPC. The board understood opinion G 3/08 date: 2010-05-12 as taking a negative view on the technical character of the activity of programming a computer. Computer hardware is without any doubt a field of technology within the meaning of Art. 52(1) EPC. Consequently, the board saw no reason why considerations that specifically exploit technical properties of the computer system hardware to solve a technical problem related to the internal operation of the computer system, such as storing data in main memory instead of on a hard disk to be able to read the stored data with less delay, should not be viewed as "further technical considerations" in accordance with opinion G 3/08 date: 2010-05-12. Such considerations (and associated "further" technical effects) were not present in all computer programs. By contrast, the board saw no support for the appellant's view that the concept "further technical considerations" should be interpreted with a broader meaning that would also cover considerations aiming to solve problems "merely" relating to programming.