Computer Implemented Inventions in Europe, An Update

We blogged earlier on the 12 may 2010 G3/08 opinion of the Enlarged Board of Appeal  of the European Patent Office (EPO) on the referral of 22 October 2008 by the President of the EPO on the patentability of Computer Implemented Inventions (CIIs). The Enlarged Board confirmed the requirement that the claimed CII must have a ‘further technical effect’, as introduced by T1173/97 Computer program product/IBM, and refers to the ‘elaborate system for assessment of inventive step as laid down in T154/04 Estimating sales activity/Duns licensing associates’. We will now have a further look at the system for assessing CIIs.

T154/04 confirms that Art.52(1) EPC sets out four essentially separate and independent requirements to be fulfilled by any patentable invention, including CIIs and the sequence of the requirements: there must be an invention, and if there is an invention, it must satisfy additionally the three requirements of novelty, inventive step, and industrial applicability. The requirement of industrial applicability is normally no concern for CIIs and will not be discussed any further here.

A long debate has taken place on whether CIIs can be an invention and which criteria should be applied. The EPC does not provide a definition of an invention, however it does provide a non-exhaustive list of particular subject-matter and activities in Art.52(2), that shall not be regarded as inventions. Computer programs are one of the excluded items. Art.52(3) limits the exclusion to claimed subject-matter that only covers ‘computer programs as such’. This is interpreted that a claim needs at least one feature which could be seen as an invention to let the entire claimed subject-matter be an invention. This raises the issue of which claim features can be seen as an invention. The jurisprudence  of the boards of appeal is that having a technical character is an implicit requisite of an “invention” within the meaning of Art.52(1) (requirement of “technicality”). It was soon settled by the boards that if a claim included a feature which was trivially technical and new (e.g. a feature on a technical process) that the presence of a computer program feature (e.g. implementing part of the technical process) could not result in an objection of non-invention.

Two issues still needed to be settled:

  • Can a software feature in itself have technical character and thus make the claimed subject-matter an invention?
  • Can there be an invention if the only new feature in the claim is a software feature with no technical character? This is issues is known as  the ‘contribution approach’ and will be discussed in more detail in a further blog.

The first issue was mainly settled by T1173/97 and since then followed by the other boards. T1173/97 came to the conclusion that the exclusion from patentability of programs for computers as such (Art.52(2) and (3)) covers only programs considered to be mere abstract creations, lacking in technical character. Programs for computers should be considered as patentable inventions when they do have a technical character. The board also concluded that it must have been the intention of the legislator that programs for computers do not always have technical character, otherwise there would be no sense in having an exclusion clause. According to the board, this meant that physical modifications of the hardware (causing, for instance, electrical currents) deriving from the execution of the instructions given by programs for computers cannot per se constitute the technical character. Such modifications are a common feature of all those programs for computers which have been made suitable for being run on a computer, and therefore cannot be used to distinguish programs for computers with a technical character from programs for computers as such. The board ruled that a technical character could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. Where these further effects have a technical character or where they cause the software to solve a technical problem, an invention which brings about such an effect may be considered an invention, which can, in principle, be the subject-matter of a patent. So, a patent may be granted not only in the case of an invention where a piece of software manages, by means of a computer, an industrial process or the working of a piece of machinery, but also where a program for a computer is used for obtaining such further technical effect, for instance, a technical effect of that kind is achieved by the internal functioning of a computer itself under the influence of said program. In other words, on condition that they are able to produce a technical effect in the above sense, computer programs must be considered as inventions, and may be the subject-matter of a patent if the other requirements provided for by the EPC are satisfied.

The only issue left to decide was whether the particular formulation of the claim may influence the assessment of whether or not there is an ‘invention’ in the meaning of Art.52(1). As already mentioned in the previous blog on CIIs on this issue, the Enlarged Board rubber-stamps the approach of T424/03 Clipboard formats I/Microsoft. This board held that only a claim formulated as ‘a program’ might be excluded as such, whereas a claim to a ‘computer-readable medium with a program’ or a ‘computer implemented method’ would not be. Avoiding an objection under Art.52(2)(c), (3) is thus just a matter of explicitly mentioning the use of a computer or computer-readable medium in the claim.

Once it has been established that the claim as a whole is an invention (by at least one claim feature having a technical character), the claims needs to be examined under novelty and inventive step. In itself, it is legitimate to have a mix of technical and “non-technical” features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features “as such”, do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step.

However, it is often difficult to separate a claim into technical and non-technical features, and an invention may have technical aspects which are hidden in a largely non-technical context. The board in T258/03 Auction method/Hitachi argued that such technical aspects may be easier to identify within the framework of the examination as to inventive step, which is concerned with the technical aspects of an invention. This discussion on whether a feature is technical is thus usually done under inventive step, effectively skipping the discussion for novelty if the prior art does not disclose the possibly non-technical feature.

The assessment of inventive step under the EPC is normally based on the problem-solution approach. For the purpose of the problem-and-solution approach, the problem must be a technical problem which the skilled person in the particular technical field might be asked to solve at the relevant priority date. The technical problem may be formulated using an aim to be achieved in a non-technical field, and which is thus not part of the technical contribution provided by the invention to the prior art. This may be done in particular to define a constraint that has to be met (even if the aim stems from an a posteriori knowledge of the invention). This means that if an inventor comes up with a creative idea which does not solve a technical problem then the idea cannot be used to defend that the idea is inventive. The only way to argue inventive step must come from the way the idea is implemented. During the implementation the skilled man must be confronted with a technical problem which he solved in a non-obvious way. A routine programming implementation of a non-technical problem is thus not inventive.

Jelle Hoekstra, Delta Patents