Computer programs lack technical character, further technical effect is required

Print this page 02-07-1998
IPPT19980701, TBA-EPO, IBM

PATENT LAW

 

No direct applicability of TRIPs: Apart from any other considerations TRIPS is binding only on its member states. The European Patent Organisation itself is not a member of the WTO and did not sign the TRIPS Agreement.

 

"2.1 To a large extent the Board shares the appellant's opin-ion about the significance of TRIPS with regard to the case under consideration. However, for the time being it is not convinced that TRIPS may be applied directly to the EPC. Apart from any other considerations TRIPS is binding only on its member states. The European Patent Organisation itself is not a member of the WTO and did not sign the TRIPS Agreement.
2.2 Nor has the Board been able to find any justifica-tion under the Vienna Convention on the Law of Treaties for the direct application of TRIPS to the EPC."

 

Computer programs as such: lacking technical character

 

"5.2 The exclusion from patentability of programs for computers as such (Article 52(2) and (3) EPC) may be construed to mean that such programs are considered to be mere abstract creations, lacking in technical charac-ter. The use of the expression "shall not be regarded as inventions" seems to confirm this interpretation.
5.3 This means that programs for computers must be considered as patentable inventions when they have a technical character."

 

Computer programs: further technical effect

 

"6.2 This means that physical modifications of the hardware (causing, for instance, electrical currents) de-riving 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.
6.3 Although such modifications may be considered to be technical, they 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."

 

It is necessary to look elsewhere for technical character in the above sense: It could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. Where said 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 subjectmatter of a patent

 

"6.4 It is thus necessary to look elsewhere for technical character in the above sense: It could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. Where said 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.

6.5 Consequently a patent may be granted not only in the case of an invention where a piece of software man-ages, by means of a computer, an industrial process or the working of a piece of machinery, but in every case where a program for a computer is the only means, or one of the necessary means, of obtaining a technical effect within the meaning specified above, where, 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, all computer programs must be considered as inventions within the meaning of Article 52(1) EPC, and may be the subject-matter of a patent if the other requirements provided for by the EPC are satisfied."

 

Potential further technical effect: A computer program product may therefore possess a technical character because it has the potential to cause a predetermined further technical effect in the above sense.

 

"9.4 (...) This means that a computer program product may pos-sess the potential to produce a "further" technical effect. Once it has been clearly established that a spe-cific computer program product, when run on a computer, brings about a technical effect in the above sense, the Board sees no good reason for distinguishing between a direct technical effect on the one hand and the potential to produce a technical effect, which may be considered as an indirect technical effect, on the other hand. A computer program product may therefore possess a technical character because it has the poten-tial to cause a predetermined further technical effect in the above sense. According to the above, having tech-nical character means not being excluded from patentability under the "as such" provision pursuant to Article 52(3) EPC. This means that a computer pro-gram product having the potential to cause a predetermined further technical effect is, in principle, not excluded from patentability under Article 52(2) and (3). Consequently, computer program products are not excluded from patentability under all circumstances."

 

IPPT19980701, TBA-EPO, IBM

 

T 1173/97 - 3.5.1