Computer programs appear on Article 52(2)(c) of the European Patent Convention (EPC), of 1973 as a subject matter excluded from the meaning of invention. However, in 2005, the European Patent Organization (EPO) had already granted over thirty thousand patents related to computer programs and, currently, computer-implemented inventions are the object of approximately 35% of European patent applications.
The justification lies on the rule contained on no. 3 of the mentioned article, that foresees that computer programs, as well as all the matters predicted in the same no. 2, will not be excluded of patentability unless «a European patent application or European patent relates to such subject-matter or activities as such».
The determination of the limits of patentability regarding computer-implemented inventions in Europe derives, essentially, from the decisions of the Technical Boards of Appeal (TBA) of EPO and the interpretation fixed on them, of the relevant provisions.
Although TBA’s decisions are not binding besides the instance in which they’re issued, they are taken as a guide by the examiners and other TBA.
Complementarily, when a specific interpretation becomes stable in TBA’s jurisprudence, the same is transposed to the Guidelines for Examination of EPO, becoming enforced in practice. Equally or more importantly, apart from the national intellectual property institutes, courts from the European countries, when confronted with already examined cases by the TBA in the light of EPC, also try to interpret and apply the law in accordance with the same values. Given this importance, this text makes a reference to some important decisions of the TBA in this matter.
a) The interpretation of the Technical Boards of Appeal from the VICOM case to the IBM cases dated 1998 and 1999
Although EPC dates from 1973, EPO only started to receive European patent applications in 1977. Approximately ten years later, a decision from a TBA would arise, which would constitute the foundation of the evolution of EPO’s jurisprudence regarding inventions implemented by computer. That decision was taken in case T 208/84 VICOM – computer related Invention, of July 15 of 1986, which we will start this analysis with.
Since this decision, for over more than two decades, until the case T 1173/97 IBM – Computer program product, from July 1st of 1998, prevailed an agreement in the TBA’s jurisprudence, as we shall see below, usually designated by «technical contribution approach». Accordingly, this point will address three decisions issued on this stage.
As mentioned, it is usually considered that these (among others) first decisions from TBA constitute the designated phase of «technical contribution approach». This denomination is due to the reference in some of the decisions above presented that the article 52 of EPC only allowed patentability of inventions that had a technical contribution in an area not excluded from patentability. That is to say, in this phase, in the exclusion analysis via art. 52(2), the requirements of patentability of the novelty and inventive step would be considered, so the contribution was assessed.
b) The IBM cases from 1998 and 1999
The end of the «technical contribution approach» was set on the case T 1173/97 IBM – Computer program product, from 1998, giving way to the «whole contents approach», that can be presented as the non-exclusion by force of the article 52(2) of EPC, of claims that consist in a combination of excluded and not excluded elements, and in which the relevance of the excluded and not excluded elements is subsequently treated in the analysis of the novelty and inventive activity requirements.
Finally, TBA mentioned the inevitable question of claim admissibility aimed to computer program products. Regarding this question, TBA considered that, as far as a computer program - when executed on a computer - produces a technical effect, there will be no justification to distinguish a direct technical effect from an indirect technical effect, in other words, the possibility to produce a technical effect. Therefore, a computer program would have technical character for having the possibility of causing a predetermined additional technical effect. In these terms, a computer program product that implicitly comprises every characteristic of a patentable method won’t be, presumably, excluded.
The invention object of the European patent application no. 96305851.6 (EP0767419), from 9th August of 1996, consisted of a method and system for the exhibition of information previously hidden in a windowing environment of data processing system. In these case, besides repeating the held considerations by TBA in the previous decision, it was fixed that the determination of the technical contribution that an invention confers to the state of the art would be a matter of analyzing the novelty and inventive activity requests, not revealing in the analysis of exclusion provided in art. 52 of EPC.
Clearly resulting from these cases is the abandonment of the technical contribution approach and the adoption of «whole contents approach». Therefore, from these decisions, in the identification exercise of an invention under the provisions of article 52nd of EPC, it would be enough to identify the technical characteristics of the claimed matter, not being necessary to verify new and inventive characteristics, since this task should be reserved for the patentability requirements analysis, to be held in a subsequent phase.
Additionally, from the above presented IBM cases resulted that the claims aimed to computer program products should be allowed as long as, when executed on a computer, produce a technical effect. However, the technical effect regarding computer programs must be an additional technical effect, besides the physical interactions’ effect that usually occur between the program and the computer.
c) The interpretation of the Boards of Appeal after IBM cases from 1998 and 1999
If in the previous cases the «technical contribution approach» has been abandoned, the newly adopted «whole contents approach» would be developed in the subsequent cases, expanding itself, and gaining a new designation as «any means approach». If the matter of patentability of inventions implemented by computer now centered itself mainly in the analysis of the inventive activity requirement, the following cases dwell, essentially, on the application of this requirement.
The analysis of the inventive activity is the heart of the patentability of computer-implemented inventions. This is so, because the identification of an invention doesn’t offer big obstacles, as far as it’s enough to identify the technical elements. The analysis of the inventive activity, in accordance form what resulted from the case COMVIK, shall be measured having in consideration only the technical characteristics of an invention, in other words, the ones that contribute for the technical character of the invention (do not confuse with the contribute for the technique status), being possible for the non-technical characteristics to appear in the formulation of the technical problem as part of the framework of the technical problem to be solved.
This evolution hereby presented culminated in the decision of the Enlarged Board of Appeal G/08 – Computer programs, of May 12th of 2010, that little added to these decisions, reaffirming them.