mardi, novembre 23, 2010

European Union: EPO board considers patentability of computer-implemented inventions

EPO board considers patentability of computer-implemented inventions

Contributed by CMS Derks Star Busmann

 

Introduction
Admissibility of referral
Question 1
Question 2
Question 3
Question 4
Comment


Introduction

The European Patent Convention (EPC) excludes computer-implemented inventions "as such" from patentability under Articles 52(2) and (3). The European Patent Office (EPO) Technical Boards of Appeal have generally taken the position that claimed subject matter is patentable if it has a technical character. This has resulted in the exclusion from patentability being increasingly limited in the case of computer-implemented inventions. In a series of landmark decisions the boards of appeal appear to have become increasingly lenient in respect of the patentability of computer-implemented inventions, although the exclusion still continues to have a restrictive effect. In light of the case law of the boards, there has been broad debate about the legitimacy and scope of the exclusion.

During the EPC Contracting States Diplomatic Conference in November 2000, a proposal to delete the exclusion for computer-implemented inventions in Article 52(2) was rejected. Some years later, the European Parliament and Council made an unsuccessful attempt to harmonise the law on the patentability of computer-implemented inventions within the European Union by way of a directive.

Across the EU member states, there is still no uniform approach to computer-implemented inventions. In view of this, in Aerotel v Macrossan (Court of Appeal of England and Wales, October 27 2006) Lord Justice Jacob suggested referring the issue of patentability to the EPO Enlarged Board of Appeal. At that time, then EPO President Alain Pompidou dismissed this suggestion as unnecessary.

However, on October 22 2008 his successor, Alison Brimelow, took the opportunity to refer a set of questions concerning the patentability of computer-implemented inventions to the Enlarged Board of Appeal, because in her opinion, the boards of appeal had given different decisions.

On May 12 2010 the Enlarged Board of Appeal decided that the referral by the president was inadmissible. However, the reasons and grounds for this decision are relevant to the substantive law.

Admissibility of referral

Before addressing the question of the referral, the enlarged board emphasised that a referral by the EPO president under Article 112(1)(b) of the EPC is admissible only if at least two boards of appeal gave different decisions. 'Different' must be interpreted as 'divergent'. As a result, the scope for admissibility of a referral under Article 112(1) of the EPC now seems to be very limited, as the enlarged board must consider whether the divergent decisions merely reflect continued development in patent law, which may be ongoing. Where such development of the law means that older decisions lose their significance and can no longer be considered in the light of more recent decisions, such differences between older and newer decisions do not justify a referral by the president.

Taking this as the starting point, the enlarged board assessed the four questions raised in the referral.

Question 1

The first question read as follows: "Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?" In other words, if a claim directed to a computer program is excluded from patentability by Article 52(2), does this mean that other claims describing the computer-implemented invention in a different way are also automatically excluded?

The referral cites a divergence between board of appeal Decisions T1173/97 (July 1 1998) and T424/03 (February 23 2006). In T424/03 the board ruled that only a claim of the form 'computer program for method X' could possibly be excluded from patentability as a computer program as such, while claims of the form 'computer implemented method X' or 'computer program storing executable codes for method X' would not be excluded. On the other hand, T1173/97 placed the emphasis on the function of the computer program, rather than the manner in which it is claimed (eg, as a computer program or a computer-implemented method).

In general, claim formulations for computer-implemented inventions along the following lines are common:

·                          methods;

·                          systems (ie, computer systems);

·                          computer-implemented methods;

·                          computer programs; and

·                          computer program products and storing a computer program.

In T1173/97 the applicant sought not only to claim a computer-implemented invention as a method of operating a computer and for a computer adapted to carry out the method, but also as a program defined by the following two formulations:

"A computer program product directly loadable into the internal memory of a digital computer, comprising software code portions for performing the steps of (independent method) claim 1 when said product is run on a computer."

"A computer program product stored on a computer usable medium, comprising: computer readable program means for causing a computer to (carry out the various steps of method claim 1)."

The board in T1173/97 took the standpoint that such a claim could be allowable:

"In the view of the Board, a computer program claimed by itself is not excluded from patentability if the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect which goes beyond the "normal" physical interactions between the program (software) and the computer (hardware)."

The T1173/97 decision teaches that a claim to a computer program has a "technical character" if, and only if, the computer causes a "further technical effect" when run.

The Enlarged Board of Appeal also recognised as established case law that the board in T1173/97 abandoned the so-called 'contribution approach', according to which the contribution to the state of the art given by the invention must comprise a technical effect to avoid exclusion under Article 52(2) of the EPC.

In view of T1173/97, a technical contribution to the prior art is no longer a determinant of whether the computer-implemented invention has a technical character. Determining the technical contribution of an invention with respect to the prior art is more appropriate for the purpose of examining novelty and inventive step than for deciding on possible exclusion under Articles 52(2) and (3).

Although T1173/97 can be regarded as a leading decision with regard to its definition of 'further technical effect' and its abandonment of the contribution approach as a test for exclusion, other opinions expressed by the board in its decision are not supported by the enlarged board – for example, that with regard to the exclusion, it makes no difference whether a computer program is claimed by itself or as a record on a carrier. In T1173/97 the board considered that a claim to a computer program product could not escape the exclusions of Article 52(2) merely by comprising a computer-readable medium.

However, in a later decision, T424/03, the board stated that the subject matter of a claim has technical character if it relates to a computer-readable medium (ie, a technical product involving a carrier). The latter decision is in line with the earlier T258/03 decision (April 21 2004), in which the board decided that any claim involving technical means was not excluded from patentability and, since a claim directed to a method of operating a computer involved a computer, it could not be excluded from patentability under Article 52(2) of the EPC.

Although the enlarged board acknowledged a difference between the positions taken in T1173/97 and T424/03 on this point, the enlarged board also held that a difference did not automatically constitute a divergence that would allow a question to be referred by the president. The enlarged board explained that the difference should be treated as a development of the case law and that, on the issue of the form of a claim, the board's position in T1173/97 was overruled by the later T424/03 decision.

In other words, when the subject matter of a claim relates to a computer-readable medium (ie, a technical product involving a carrier), this subject matter has technical character, even if the program would cause no "further technical effect when run".

The enlarged board summarised the present position of the case law by indicating that a claim in the area of computer programs can avoid exclusion under Articles 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable storage medium.

However, the enlarged board noted that it was also clear from the case law since T1173/97 that if a claim to program X falls under the exclusion of Articles 52(2) and (3), a claim which specifies no more than 'program X on a computer-readable storage medium' or 'a method of operating a computer according to program X' will always be unpatentable for lack of inventive step under Articles 52(1) and 56 of the EPC. The EPC article applied is merely a different one.

The enlarged board seemed to be surprised that the referral did not address any of its questions as to the validity of this method of judging an inventive step. Although the enlarged board was unaware of any divergence in the case law, it noted that in assessing whether an invention is inventive, several decisions cite T641/00 and T258/03. The enlarged board seemed to suggest that the EPO president missed an opportunity in this respect.

Question 2

The second question read as follows:

"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 held that the answer it gave in respect of the first question was also applicable to the second question. However, it explained in its answer to the second question that "claims for a computer program and a computer implemented method cannot be seen as having an exact identical scope". In the same line of reasoning, the enlarged board stated that the scope of a method claim would not automatically encompass a computer program for carrying out that method.

As formulations such as 'a program loaded on a computer' and 'a disk storing a computer program' are quite common in the art, the enlarged board considered that a skilled person would understand the word 'program' to refer to the sequence of instructions specifying a method, rather than to the method itself. The enlarged board examined whether divergence could be found in the case law of the boards of appeal, but concluded that this was not the case.

Question 3

The third question read as follows:

"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 identified two problems in relation to this question. First, the referred question related to individual features, rather than the claimed subject matter as a whole. The enlarged board held that the case law was consistent in considering all the features claimed; the boards have avoided approaches which involve the weighting of features or a decision as to which features define the 'essence' of the invention.

The enlarged board added that it is a well-established principle that features which, when taken in isolation, would belong to excluded subject matter as meant in Article 52(2) of the EPC may nonetheless contribute to the technical character of a claimed invention, and therefore cannot be discarded in consideration of the inventive step.

Question 4

The fourth question read as follows:

"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 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?"

Decisions T1177/97 (July 9 2002) and T172/03 (November 17 2003) were considered. In these decisions the board of appeal stated that programming always involves technical considerations, and that the skilled person involved is a technical expert or a software project team consisting of programmers. In contrast, the board in T833/91 (April 16 1993), T204/93 (October 29 1993) and T769/92 (May 31 1994) considered the programmers' activity to be a mental act and thus excluded under Article 51(2) of the EPC.

However, the Enlarged Board of Appeal saw no contradiction between these positions, citing the example of designing a bicycle, which clearly involves technical considerations. Such a process, at least initially, takes place in the designer's mind (ie, it can be a mental act) and, to the extent that it is a mental act, it will be excluded from patentability.

Although the enlarged board did not recognise this as a divergence in the case law, it did see the potential for confusion: while T769/93 (May 31 1994) indicates that any technical considerations are sufficient to confer technical character on claimed subject matter, T1173/97 teaches that all computer programming involves technical considerations, since it is concerned with defining a method which can be carried out by a machine. However, the enlarged board concluded that such technical considerations occur in almost every computer program (ie, the construction of a procedure by the programmer to be carried out by a machine), and will not be enough to give that computer program technical character. Such technical character is guaranteed only if writing the program requires "further technical considerations" (ie, the programmer must have technical considerations beyond merely finding a computer algorithm to carry out a procedure).

Comment

Decision G03/08 of the Enlarged Board of Appeals confirms the patent-granting practice of the EPO and introduces no substantial changes, although clarifications on some legal aspects with regard to computer-implemented inventions have been provided.

Computer-implemented inventions must have technical character, but the threshold to satisfy this criterion is easy to meet – any claim to a computer-implemented invention comprising a computer-readable storage medium or technical means (eg, a computer) avoids exclusion under Article 52(2) of the EPC, even if the program itself causes no further technical effect.

The enlarged board confirmed that the contribution approach has been abandoned as an instrument to assess technical character – that is, all features of a claim to a computer-implemented invention, including features known from the state of the art, must be considered when assessing technical character.

If the computer program is claimed by itself (ie, not as a record on a carrier or involving technical means), it is not excluded from patentability if the program, when running on or loaded onto a computer, brings about a technical effect which goes beyond the normal physical interactions between the program and the computer on which it runs.

Moreover, technical considerations by a programmer in respect of computer-implemented inventions to be carried out by a machine bring about a technical effect if such technical considerations go beyond merely finding a computer algorithm to carry out some procedure.

Although the enlarged board admitted that a claim in the area of computer-implemented inventions can avoid exclusion under Articles 52(2) and (3) of the EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium, the technical contribution approach still plays an important role in assessing inventive step under Articles 52(1) and 56. If a claim to computer program X falls under the exclusion of Articles 52(2) and (3) (ie, it brings about no further technical effect), the enlarged board stated that claims specifying no more than 'program X on a computer-readable storage medium' or a 'method of operating a computer according to program X' will always be unpatentable for lack of inventive step.

G03/08 explicitly leaves the question of general interest open in regard to how those elements of a claim that relate to excluded subject matter should be treated when assessing whether an invention is novel and inventive under Articles 54 and 56 of the EPC. Unfortunately, the EPO president did not address these questions in her referral, although Lord Justice Jacob suggested doing so in his decision. The enlarged board emphasised that two decisions, T641/00 and T258/03, were cited extensively by the boards of appeal in a large number of decisions, both being directed to different approaches regarding the assessment of inventive step of computer-implemented inventions.

G03/08 is unlikely to be the enlarged board's final word on computer-implemented inventions.

For further information on this topic please contact Willem Hoorneman at CMS Derks Star Busmann by telephone (+31 30 212 1111), fax (+31 30 212 1333) or email (willem.hoorneman@cms-dsb.com).