The Board of Appeal of the European Patent Office (EPO) rendered two important decisions relating to the patentability of software inventions in Europe. Both cases relate to patent applications filed by IBM Corporation. In these cases, the Board of Appeal decided in favor of computer program product claims (similar to those allowed in In re Beauregard, 53 F. 3d 1583 (Fed. Cir. 1995)). These decisions nullify, and reverse, a passage in the Guidelines for Examination in the European Patent Office, where it is stated that a computer program claimed by itself or as a record on a carrier is not patentable irrespective of its contents.
Under the reasoning 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) on which it is run. In addition, the Board said that it does not make any difference whether a computer program is claimed by itself or as a record on a carrier.
These decisions offer significant new patent protection for software, especially for a software-implemented invention which is supplied or downloaded over the Internet.
Background of the EPO Statutes on Computer Software
A threshold condition for patentability in the EPO is that the claimed invention must make a technical contribution to the prior art. Rules 27 and 29 EPC. In addition, Article 52 on "patentable Inventions" states in part that (1) "European patents shall be granted for any inventions which are susceptible of industrial application . . ."; (2) "The following in particular shall not be regarded as inventions within the meaning of paragraph (1): . . . (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;" (3) "The provisions of paragraph 2 shall exclude patentability . . . only to the extent to which . . . [a] European patent relates to such subject matter or activities as such." In the past these restrictions on "computer programs as such" have been the basis for the EPO refusal to grant claims to a computer program product on a computer-readable medium or on a carrier wave. Guidelines for examination in the European Patent Office C-IV, 2.3 indicate that "[a] computer program claimed by itself or as a record on a carrier, is not patentable irrespective of its content." These two IBM case decisions, however, allowed such claims.
Subject Matter in the IBM Cases
In one case, T 0935/97 - 3.5.1, the invention relates to detecting where a second window in a computer display overlies part of a first window, obscuring information in a portion of the first window. The invention in this circumstance detects the overlay and causes the information obscured by the second window to be displayed in another portion of the first window not obscured by the second window by moving the obscured data to a portion of the first window not covered by the second window.
In the other case, T 1173/97 - 3.5.1, the invention relates to resource recovery in a computer system, including implementing a commit procedure for a work request; in the event that the commit procedure fails, notifying an application that it may continue; and, while the application continues to run, resynchronizing the incomplete commit procedure.
The Decisions in the Examination Division
In both cases, the Examination Division accepted system and method claims directed to the invention but rejected computer program product and element claims.
In T 0935/97, the Examiners allowed claims 1-6 directed to method and apparatus claims, indicating that the requirements of the European Patent Convention, and in particular those of novelty and inventive step, were fulfilled. Claims 7-10 were rejected as computer program code stored on a computer-readable medium. The Examiners concluded that "the subject matter claimed was distinguished from the prior art only by the information pattern represented by the stored program code. Therefore," the Examiners reasoned, "the problem solved would merely be how to store the particular computer program on a data carrier; this problem was well known in the prior art, so was its solution. Neither would this problem be a technical problem nor would any technical effects be achieved by its solution, since a computer program stored on a data carrier in the form of bits and bytes would still be nothing more than a computer program as such which was explicitly excluded from patentability by Article 52 (2) and (3) EPC."
Under similar reasoning, in case T 1173/97, the Examination Division allowed method and apparatus claims 1-19 and rejected claims 20 and 21 related to computer program products stored in computer-readable memory.
The Board of Appeal Decisions
In these decisions, the Board noted that, in the context of the interpretation of the EPC, the technical character of an invention is an essential requirement for patentability, referring to Rules 27 and 29 EPC.
Construing the phrase "as such" in 52(3), the Board considered that the exclusions from patentability of programs for computers as such in Article 52(2) and (3) EPC mean that programs are considered to be mere abstract creations, lacking in technical character, which necessarily follows if they are "not to be regarded as inventions." The Board concluded that it follows from this logic that programs for computers must be considered as patentable inventions when they do have technical character.
The Board spent some time discussing the technical character of programs for computers and indicated that the normal physical modifications of the hardware (e.g., the generation of electric currents) deriving from the execution of the instructions given by programs for computers cannot per se constitute the technical character required for avoiding the exclusion of those programs. However, technical character can be found in further technical effects deriving from the execution (by the hardware) of the instructions given by a computer program. Apparently, such a further technical effect could have the necessary technical character where, for example, it causes the software to solve a technical problem (see, for example, the VICOM decision T 208/84, OJ 1987, 14), or where technical considerations are involved to arrive at the invention (see, for example, the SOHEI decision T 769/92, OJ 1995, 525).
As to computer program product claims, the Board said the central question is what "further technical effect" can lead to this subject matter not being excluded under Article 52(2) and (3) EPC. Where a computer program product produces such a further technical effect when run on a computer, the Board described such a computer program product as having the potential to produce such a further technical effect. Accordingly, in a case where a specific computer program product, when run on a computer, brings about such a further technical effect, the Board could see no good reason to distinguish between a direct technical effect and an indirect technical effect.
Using a line of reasoning similar to the VICOM decision, the Board found that it would be illogical to grant a patent for a method, and an apparatus adapted for carrying out the same method, but not for the computer program, which comprises all the features enabling the implementation of the method and which, when loaded in a computer, is indeed able to carry out that method.
Accordingly, the Board stated that "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) on which it is run." Also, referring to the findings in the BBC decision T 163/85, OJ 1990, 379, where it was held that a television signal was patentable, the Board concluded that it did not make any difference whether a computer program product is claimed by itself or as a record on a carrier.
As an interesting side note, IBM argued to the Board that a narrower interpretation of the "computer program as such" language would "accord with the TRIPS Agreement, especially Article 27," which says, "Patents shall be available for any inventions, whether products or processes, in all fields of technology." The Board noted pointedly that TRIPS is not directly applicable to the EPC, and that although TRIPS is binding on many of the EPC member states, not all of its members are so bound. Nevertheless, the Board recognized that cognizance of TRIPS and an interpretation of the EPC which is compatible with it is not inappropriate.
The Board of Appeal in these rulings has taken a giant step in bringing the treatment of computer program product claims in the European Patent Office in harmony with the treatment provided in the United States and Japan. Practitioners in the United States filing computer software applications must continue to be aware of the "technical effect" requirements of the EPO but should consider including computer program product claims in EPO filings, including, where appropriate, claims to a computer program product on a carrier wave, for example for a software-implemented invention supplied via the Internet.
Bearing in mind the restrictive EPO practice on claim broadening, it is recommended to U.S. practitioners that they include explicit basis in an application for a claim in Europe to a computer program product or computer program element which does not refer to any form of carrier.
Preferably such a basis would be as an independent claim, but at least as an independent statement in the summary of the invention (e.g., "In accordance with an aspect of the invention, there is provided a computer program product configured to be operable to . . . (followed by the minimum set of functions needed to solve a technical problem, for example)"). Preferably this should be included in a U.S. priority application as well as in a PCT or European application.