WORKING SESSION
Patentability of computer implemented inventions
Dai REES - Chairman of a board of appeal, EPO - Patentability of computer implemented inventions at the EPO
1. Relevant provisions of the European Patent Convention
1.1 Articles 52(2) and (3) EPC:
"The following in particular shall not be regarded as inventions ...:
(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."
"Paragraph 2 shall exclude the patentability ... only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such."
1.2 In addition there are references in Articles 18 and 19 to "technically qualified examiners", in Articles 21 and 22 to "technically qualified members" of boards of appeal, and in the Implementing Regulations to the "technical" field, problem and features of the invention (Rules 42(1)(a) and (c), 43(1) and 44, corresponding to Rules 27, 29 and 30 of EPC 1973).
1.3 As revised by the diplomatic conference of 2000, Article 52(1) EPC specifies that patents shall be granted for any inventions, "in all fields of technology". Since the revised Convention only came into effect in 2007, this amendment does not in fact apply directly to any of the cases to be discussed. However it is significant in that the diplomatic conference did not regard it as an amendment of the substance of the Convention. In other words it was considered that the granting of patents according to the EPC was already for inventions in "fields of technology".
2. Early case law
The early case law of the boards of appeal established a number of principles, most of which are still applied.
2.1 Early cases treated "non-technical" and "excluded by Article 52(2) EPC" as synonymous expressions (with the exception of the difficult case of programs for computers, this is still true). Moreover, they used the expression "non-technical features" to refer to any features which, taken in isolation, only specified something on the list of excluded matters.
2.2 However claims to inventions specifying features relating to the matters listed in Article 52(2), in particular programs for computers, but also for example mathematical methods, were not automatically excluded from patentability. The question to be decided was whether the subject-matter of the claim as a whole, without weighting or discarding any of the features, had a "technical effect". Such a technical effect might be for example improving the quality of recorded images (T 208/84, VICOM) or increasing the maintenance intervals of an X-ray machine (T 26/86, Koch & Sterzel). An early test applied was whether the same effect hypothetically achieved by means not involving anything on the list would be considered to justify granting a patent. Such a technical effect could also be seen in the improved or different functioning of a computer (T 6/83, Data processor network / IBM).
2.3 These early cases generally adopted what has come to be known as the "contribution approach". That is, while all the features of the claim were taken into account, if the contribution to the art lay solely in matters on the list of Article 52(2) EPC the claim would be refused under this provision. Thus to take an example (given in G 3/08) a claim to a cup decorated with a picture (assuming no effect beyond aesthetics or presentation of information was ascribed to the picture) would be rejected under Article 52(2) and (3) EPC. Cups are known, so there is no technical contribution to the art.
However this did not mean that if all the characterising features of a claim were on the list of excluded matters (were "non-technical features") the claim was necessarily not allowable. The contribution approach as applied by the boards of appeal measured patentability by the technical effect of the claimed invention compared to that of the prior art, not by whether the characterising features were "non-technical". The technical effect of a claimed invention arose from the combination of all the features specified. Thus in T 208/84 the allowable claims were distinguished from the prior art only by a new mathematical method implemented in a computer program and equally in T 26/86 the only apparent contribution in terms of features was a new control program. Nonetheless a technical effect was achieved in each case (improved image quality, longer maintenance intervals), so the claimed subject-matter was not excluded.
On the other hand, if the subject-matter of a claim did not achieve a technical effect different from that achieved by the prior art, there was no "technical contribution" and the claim was excluded from patentability by Articles 52(2) and (3) EPC, i.e. the European patent application or European patent was considered to relate to the subject-matter or activities specified by Article 52(2) as such. Examples of such cases are T 52/85, Listing of semantically related linguistic expressions / IBM, T 158/88, Siemens and T 603/89, Beattie.
The contribution approach as laid out above requires a comparison with prior art. However this was not done entirely consistently. Frequently cases discussed the technical effect of the invention without reference to any specific (at least explicit) prior art.
2.4 In cases where the board found that there was a technical contribution, claims to a method of operating a computer and to a computer adapted to perform the method, i.e. loaded with an appropriate program, were allowable. In particular this meant that at least in the case where there was a "technical contribution" the boards considered that a computer loaded with a new program was a new machine.
However, while no case explicitly decided the matter, it seems that the boards (and applicants) assumed that claims directed to a computer program, whether or not "on a computer-readable medium", would not be allowable, even if the corresponding method and apparatus made a "technical contribution".
2.5 Finally it should be mentioned that a small number of early cases (see T 38/86 and T 65/86, both Text processing / IBM) concluded that there must be an inventive contribution in a field not excluded from patentability, otherwise the claim would fail for lack of an inventive step. This line of reasoning was not developed for many years, but has latterly become of great importance.
3. Modern case law
3.1 T 1173/97, Computer program product / IBM
Presumably as a result of developments in the USA, where the USPTO had, in response to a CAFC decision, started granting so-called "Beauregard claims" to programs on a computer-readable medium, two test cases were put to the boards of appeal. They were T 935/97 and T 1173/97, both Computer program product / IBM. The reasoning of the respective decisions is more or less identical. The board in these cases came to a number of important conclusions.
3.1.1 It decided that program claims were patentable in some cases and that there was in fact no requirement to specify a carrier medium in such cases. (In fact it made the positive statement that it made no difference to the question of exclusion under Articles 52(2) and (3) EPC whether or not the program was claimed on a medium. This statement became relevant in G 3/08.)
3.1.2 Such claims were patentable when the program, when run, caused a technical effect, just as in the earlier case law (T 208/84, T 26/86, etc.).
3.1.3 However, noting the lack of consistency previously, and giving various theoretical reasons, the board concluded that the technical effect of claimed subject-matter should not be decided on the basis of a comparison with prior art. Whether there was a technical effect should be decided a priori.
3.1.4 This caused a problem, since the board acknowledged that every computer program, when run, caused technical effects in the computer it ran on, such as electrical currents running, reconfiguration of the electrical charges in memory, etc. The board therefore concluded that the technical effect required was something beyond these effects common to all programs. This has become known, perhaps confusingly, as the requirement for a "further technical effect". The "further" is not referring to a comparison to the prior art but to the requirement for an effect going beyond that of every computer program when run.
3.1.5 Having abandoned any comparison with the prior art for the determination of exclusion under Article 52(2) and (3) EPC, the board commented that this comparison, the determination of the "technical contribution", belonged to the consideration of whether there was an inventive step.
3.2 T 1194/97, Philips
3.2.1 This case concerned video data on a disk. Some of this data was functional in the sense that it defined picture line synchronisation, line numbers, etc. The board concluded that structural digital data in this sense was potentially patentable, referring back to an earlier case coming to the same conclusion for an analogue TV signal (T 163/85, Colour television signal / BBC). This decision thus extended the main result of T 1173/97, the potential patentability of programs, to functional data in general.
3.3 The "any technical means" approach
3.3.1 A series of three decisions explored the consequences of abandoning the "contribution approach" to exclusion under Article 52(2) and (3) EPC. In T 931/95, Pension benefit system, the board decided that a computer set up to carry out a program was not excluded from patentability, regardless of whether the program was patentable. T 258/03, Hitachi extended this conclusion to methods of operating a computer (thereby overturning the statement to the contrary in T 931/95), on the basis that the method involved the use of technical means (the computer). Finally, T 424/03, Microsoft brought this to the logical conclusion that a claim to a program on a carrier necessarily escaped the exclusion of Article 52(2) because it claimed the carrier, regardless of the fact that it also claimed the program.
3.4 The COMVIK / Hitachi approach to inventive step
3.4.1 A clear result of the "any technical means" approach is that by inclusion of some reference to apparatus, for example that a calculation is carried out on a computer, many claims which had previously been considered unpatentable could avoid the exclusion of Article 52(2) EPC. T 1173/97 had already suggested that the determination of the "technical contribution" belonged to the consideration of whether there was an inventive step. This fitted in well with the conclusion reached in some early case law, mentioned above, that there must be an inventive contribution in a field not excluded from patentability, otherwise the claim would fail for lack of an inventive step. This, then, became the important test - for a claimed innovation, was there an unobvious contribution to a "technical" field, or was rather any technical contribution to the art merely a consequence of implementing some non-technical idea? To take a hypothetical example, if a jazz drummer sets up his drum kit in a new arrangement and uses the new arrangement in producing a new drumming pattern, are the new arrangement of drums and the new drumming pattern patentable inventions?
3.4.2 In a number of decisions, particularly T 641/00, COMVIK and T 258/03, Hitachi, the boards (or rather one board, 3.5.01) considered how to apply the so-called "problem-and-solution approach" to answering this question. This is the approach generally used by the boards of appeal to determine whether a claimed invention involves an inventive step. It was concluded that only claimed features contributing to the "technical character" of the claimed matter were to be taken into account for the assessment of inventive step, and non-technical aims of the invention could be included in the formulation of the problem. The approach was laid out in detail, with theoretical justifications, in T 154/04, Duns.
4. G 3/08
In October 2008 four questions were referred by the President of the EPO to the Enlarged Board of Appeal (EBA) under Article 112(1)(b). In May 2010 the Enlarged Board issued its opinion. It found the questions inadmissible. In doing so it analysed the questions and came to a number of conclusions.
4.1 Analysis of the President's power of referral and the role of the EBA in such referral cases.
4.1.1 The power of referral is not exhausted by a previous decision not to refer a question.
4.1.2 The "different decisions" may come from the same board, in the sense of the organisational unit.
4.1.3 There must be a "divergence" in the case law - development of the case law, even contradictory, is not enough.
4.1.4 Divergence may arise through different reasoning, not just different conclusions - an important issue in the present case, where much of the controversy centres around which provision of the EPC should be used to refuse applications, rather than whether or not to refuse.
4.2 Examination of the questions
4.2.1 Questions 1 and 2 challenged the "any technical means" criterion of T 424/03. The EBA found one change of view, between T 1173/97 and T 424/03; T 1173/97 stated that it did not matter for the issue of exclusion from patentability under Article 52(2) EPC whether a claim specified a computer program on a carrier or on its own, whereas T 424/03 stated that a claim escaped exclusion as soon as it specified a carrier. However the EBA concluded that this did not qualify as a divergence since the view taken in T 1173/97 was inconsistent with other positions taken in the same decision and it had not been followed in later cases. The other arguments put forward in the referral in relation to this issue were not accepted - in particular, the EBA disagreed with the assertion that a program claim and a claim to a method of operating a computer had the same scope.
4.2.2 Question 3 asked whether a feature of a claim had to have "a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim". A follow-up question asked whether an "unspecified computer" qualified as a physical entity. The EBA dismissed Question 3 immediately as inadmissible, pointing out that the cases alleged to diverge did not refer to individual features and did not even require that the totality of the features had "a technical effect on a physical entity in the real world". Without analysing this possible criterion in detail, the EBA also pointed out that individual features relating to excluded subject-matters might well contribute to the technical character of a claim (T 208/84, VICOM).
4.2.3 Question 4 asked whether the activity of programming a computer necessarily involved technical considerations. Interpreting "programming a computer" in this question as referring to an intellectual rather than a physical activity, the EBA agreed that it appeared that certain decisions seemed to assume that programming always involved technical considerations. The referral argued that this was in contradiction to other decisions that found that programming was a mental activity and therefore excluded under Article 52(2). The EBA did not accept that there was a contradiction, since a claim to a mental act could be rejected even if that mental act involved technical considerations. The question was therefore also inadmissible. The EBA however commented that there did appear to be some potential for confusion in this area, since some decisions (e.g. T 769/92, Sohei) might give the impression that technical considerations on the part of the applicant were sufficient to guarantee the technical character of a claim to the outcome of those considerations. The EBA took the position that the question whether computer programming always involved technical considerations could be answered either way, but for consistency with T 1173/97 and in order to follow the intention of the framers of the Convention, one would have to say that a claim to a computer program would have technical character only if "further" technical considerations, i.e. considerations beyond that of formulating an algorithm executable on an unspecified computer, were involved.