PATENTS Note concerning the Patentability of Computer-Related Inventions INTRODUCTION I.THE MAIN PROVISIONS OF THE EUROPEAN CONVENTION II. APPLICATION OF THESE PROVISIONS AND MAINSTREAM CASELAW OF THE EPO III.THE RECENT IBM DECISIONS (T1173/97 AND T935/97) IV.THE NEXT STEPS : a) REVISION OF THE EPO EXAMINATION GUIDELINES b) REVISION OF THE EUROPEAN PATENT CONVENTION c) PROPOSED EUROPEAN UNION LEGISLATION V.THE CONSEQUENCES ON THE CLAIM FEATURES AND ON THE DESCRIPTION VI.THE ENFORCEMENT OF RIGHTS VII.THE PRACTICE OF THE FRENCH NATIONAL PATENT OFFICE INTRODUCTION The European Patent Convention contains provisions limiting the type of computer- related inventions for which European patents can be obtained. Corresponding provisions are present in the national patent law of Contracting States to the European Patent Convention. After explaining these legal provisions, and their application by the EPO (as seen in classical EPO caselaw and some more recent developments), we shall report on two new decisions by the EPO Boards of Appeal which significantly extend the categories of claims which can be obtained in Europe for computer- related inventions. We shall then discuss proposed modifications of the European Patent Convention and proposed European Union legislation, as well as the consequences that all of these changes have on the drafting of patent specifications.
I. THE MAIN PROVISIONS OF THE EUROPEAN CONVENTION In the European Patent Convention (EPC), the legal provisions which deal with the patentability of computer- related inventions are those of Article 52(1),(2),(3)EPC: Article 52 (1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step. (2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information (3) The provisions of paragraph 2 shall exclude patentability of the subject-matter of activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such. According to this Article, programmes for computers shall not be regarded as inventions. However, these provisions exclude patentability of the subject- matter or activities referred to, only to the extent to which a European patent application or European patent relates to such subject- matter or activities as such. As explained below, this provision has been applied by the EPO in a manner allowing patenting of computer- related inventions in many circumstances. However, only limited categories of patent claims were accepted (typically claims covering a method or system functioning in a manner determined by the computer program). As indicated above, similar provisions can be found in the national law of each member state of the EPC. II. APPLICATION OF THESE PROVISIONS, AND MAINSTREAM CASELAW OF THE EPO II.1. Classical EPO Approach The EPO considers that the A.52(2)(c) exclusion on patentability of computer programs as such does not preclude the patenting of computer-related inventions, this exclusion only affects computer programs which are of a non- technical nature. The classical EPO approach has been to ascertain what is the real technical contribution which the claimed subject matter, considered as a whole, makes to the state of the art. Typically, claims are allowed where the computer program in question is applied to the
control of a technical process (for example control of a machine tool, or control of the internal workings of the computer in some new way) or to the processing of data which has a physical significance (for example, the digital filtering of an image signal). Claims are also allowed where the invention s contribution to the state of the art resides in a mixture of technical and non- technical features. In other words, the presence in the claim of non- technical features does not render the claim unacceptable, provided that some technical features are also present. II.2. Some examples of developments in mainstream EPO case-law a. A first interesting example is given in decision T 769/92 (Sohei) concerning European application EP- 205 507. In the patent application considered in this decision, the applicant claimed a computer system for plural types of independent management including at least financial and inventory management and a method for operating said system. Data for the various types of management, which could be performed independently from each other with this system, could be inputted using a single "transfer slip", in the form of an image displayed on the screen of the display unit of the computer system, for example. Financial and inventory management would generally fall under "methods for... doing business". Thus, the invention in question related to a computer program used to perform a method of a type excluded from patentability under A.52(2)(c). The Board held, however, that the invention was not excluded from patentability under Art. 52(2)(c) and (3), for the following reason. It was considered that the particular kinds of management mentioned were not decisive, but what was important was the fact that they were of different "specific" types to be performed "independently" of each other. The patent application contained the teaching to provide, in the memory unit of the computer system, certain files and processing means for storing and further processing the entered data and causing the processing unit to perform the various different specific functions. This teaching required technical considerations in order to be implemented. In the Board's view, although the claimed invention concerned the use of a computer program to perform a non- technical method, technical considerations were applied concerning particulars of the implementation of the method by the program. The very need for such technical considerations implied that there was at least an implicit technical problem to be solved and at least implicit technical features solving this problem. In the view of the Board, the fact that claim 1 was restricted to applications in financial and inventory management did not give rise to an objection under Art. 52(2)(c). This restriction was only a further, non- technical feature in the claim which, as such, would be excluded. However, as mentioned above it is established EPO practice to allow patentability for mixtures of technical and non- technical features.
b. Another interesting example is given in Decision T 110/90. The patent application in question was related to a method of transforming a source document, in a first editable form, into target documents, in a second editable form. Data representing printer control codes in the documents were transformed from the first form into the second form. According to the Boards of Appeal, the claims dealt with a technical problem, the transformation of digital data representing printer control items cast in a first form into digital data, representing the same information, but in a second form. A communicative link was thereby created between two normally incompatible text processing systems. In other words, the Board ruled that control items included in a text represented in the form of digital data are characteristic of the word processing system in which they occur in that they are characteristic of the technical internal working of that system. Such control items therefore represent technical features of the word processing system in which they occur. Consequently, transforming control items which represent technical features belonging to one word processing system into those belonging to another word processing system constitutes a method of a technical nature. c. EPO approach concerning data processing. Concerning data processing, it seems, from the established EPO case law, that patentability may be conferred on a data processing invention, either because of the technical/physical significance of the data processed, or because of the processor steps performed on the data. For example, if the processor steps lack patentability because they are a purely mathematical method, patentability may however be derived from a physical significance inherent in the data. A well known example is one of images and data representing images. The EPO considers that inventions relating to the processing of image data have the necessary technical character regardless of whether the image data represents a physical object or a simulated object (such as in computer- assisted design). II.3. We are of the opinion that the criteria which have thus been established by the Boards of Appeal are quite clear and quite "client- friendly". The Boards of Appeal do not give a broad interpretation to the exclusion of computer programs from patentability, but tend to interpret it in a very strict way, to the benefit of Applicants. It must however be recalled that the technical effects, whatever their nature, that are relied on to escape the exclusion of A.52(2)(c) must be clearly explained in the description. II.4. Until now, no decision has had to be taken with regard to the problem of claims explicitly related to computer programs or to a medium carrying the instructions for working the computer program. It was even commonly believed that such claims would have no chance to be granted, in particular in view of Art. 52(3) EPC. The Guidelines (C- IV, 2.3), which can be considered as the interpretation of the EPC for the first instances of the EPO (Examining Divisions and Opposition Divisions, the Boards of Appeal not being bound by the Guidelines) even
mention that: " A computer program claimed by itself or as a record on a carrier, is not patentable irrespective of its content." Two recent and major Decisions issued by the Boards of Appeal have changed this interpretation. Top III. THE NEW IBM DECISIONS (T1173/97 AND T935/97) III.1. T1173/97 and T935/97 : the facts In both cases submitted to the Board of Appeal, IBM contested a decision by the Examining Division. In the first case (T935/97), the set of claims under study comprised following independent claims: 1 - A method in a data processing system for displaying information,... 5 - A data processing system for displaying information... 7 - A computer program product comprising a computer readable medium, having thereon computer program code means, when said program is loaded, to make the computer execute procedure to display information... 8 - A computer program element comprising computer program code means to make the computer execute procedure to display information... 9 - A computer program element as claimed in claim 8 embodied on a computer readable medium. 10 - A computer readable medium, having a program recorded thereon, where the program is to make the computer execute procedure to display information... In the second case (T1173/97), the set of claims under study comprised following independent claims: 1 - A method for resource recovery in a computer system running an application... 14 - A computer system comprising an execution environment for running an application... 20 - A computer program product, directly loadable into the internal memory of a digital computer, comprising software code portions for performing the steps of claim 1 when said product is run on a computer. 21 - A computer program product stored on a computer usable medium, comprising computer readable program means for causing a computer to perform an execution of an application... In both cases the Examining Division acknowledged patentability of method claim 1 and of system claims 5 and 14, but objected to the other independent claims (7 to 10 in the first case and 20, 21 in the second case) as directed to a computer program as such, and therefore excluded from patentability under Art. 52(2) and (3) EPC. III.2. The interpretation by the Board of Appeal a. In both cases, the Board of Appeal reinterpreted the provisions of Art.52(2) and (3)
EPC, and concluded that : A computer program claimed by itself is not excluded from patentability if the program, when loaded on a computer, produces a technical effect which goes beyond the "normal" interaction between a program and the computer on which it is run. b. The Board of Appeal confirmed the classical view that because the provisions under art. 52(2) and (3) EPC exclude computer programs from patentability only to the extent that the invention relates to a computer program "as such", this means that not all computer programs are excluded from patentability. Article 52(2)(c) does not exclude from patentability and does not concern computer programs having a technical character. The Board of Appeal stated that a technical character cannot be seen in the physical modifications usually resulting from a program when it is worked on a computer. Such modifications are common to all programs and cannot be used as criterion to distinguish computer programs "as such" from the patentable computer programs. It is necessary to look elsewhere for a technical character, for example in further effects: - having a technical character or causing the software to solve a technical problem - and deriving from the execution of a program. The Board of Appeal further stated that such a further effect may already be known in the art. When considering the patentability of an invention with regard to A.52(2)(c), the differences between the invention and the prior art, and the technical contribution over this prior art, are not to be considered, but only the question whether the computer program has a further technical effect. Assuming that a computer program running on a computer would cause such a "further technical effect", the program itself (for example when recorded on a computer readable medium) has the potential to produce this "further technical effect". The Board of Appeal considered this potential to produce a technical effect to be equivalent to an indirect technical effect inherent in the program sufficient to render the program per se patentable. Top IV. THE NEXT STEPS : IV.1. Revision of the Guidelines for Examination at the EPO The new principles established by the Boards of Appeal must now be implemented at the level of the EPO Examining and Opposition Divisions. This means that: A. From now on, the interpretation of the European Patent Convention which is contained in the Examination Guidelines at C- IV, 2.3 (see II.4. above) is obsolete.
B. A new version of the Examination Guidelines has to be issued. In the meantime, as indicated in A, and from now on, the former practice of the EPO is amended so as to conform to the new Board of Appeal decisions. The claim has now to be considered as a whole. The claim will be granted in the case where it provides a technical effect, or it provides a solution to a technical problem. As before, a technical effect will be assumed, e.g., in the case of a program- controlled working process, or of a program- controlled manufacturing process, or when technical data is processed (T208/84, VICOM). However, it must now be found that a program for a computer has a technical character if it causes: - a technical effect (which may be known in the art) - but which goes beyond normal interaction between a program and a computer. The last part of the sentence is to exclude computer programs which, although having a certain effect on a computer, do not have any other technical effect apart from the usual functions of the computer (for example a program for displaying information in a very common way). The technical effect of a computer program can be found in a process which is controlled by the program. It can also be found in the functioning of the computer itself, but not, as explained above, in the physical modifications of the hardware causing for instance electrical currents in the computer itself. Moreover, the technical effect of the computer program enables claims to be obtained not just for the combination of the program and the hardware upon which it is running but also for the program per se (see Section V.1 below). IV.2 Revision of the European Patent Convention. The European Patent Office has recently issued a proposition to revise the current provisions of Article 52(1)- (3) EPC (cited above, see Section I). In the proposed version, sub- sections 2 and 3 of Article 52 would be deleted, and sub- section 1 of Article 52 would be replaced by the following: European Patents shall be granted for any inventions in all fields of technology which are susceptible of industrial application, which are new and which involve an inventive step. With such a formulation, the European Patent Convention would be harmonised with Article 27(1) of the TRIPS Agreement.
This provision has the advantage of being very concise, and of containing a reference to a "technology". It would therefore allow, without the need for any interpretation, the granting of patents covering computer programs (having a technical character) either per se or loaded on a computer readable medium as well as when running on hardware. In order to be implemented, this proposed modification of the European Patent Convention requires a Diplomatic Conference (Art. 172 EPC), to be prepared and convened by the Administrative Council of the EPO. It has been proposed that such a Diplomatic Conference should be held in the course of 2000 with a view to implementing a modification of Article 52 EPC before 1st July 2002. IV.3 European Union Legislation The European Commission takes the view that computer programs in general should be patentable, provided that they meet the other criteria for patentability (notably regarding novelty and industrial application). The European Commission has expressed the intention to issue a "Directive" for harmonising all the national laws of the countries of the European Union with respect to the patentability of computer programs, in line with its opinion. Top V. THE CONSEQUENCES ON THE CLAIM FEATURES AND ON THE DESCRIPTION V.1. The features of the Claims In a European Patent Application, a computer program having a technical character may therefore be claimed: - by itself - and/or as a program product - and/or as a record on a carrier, (in addition to being claimed as part of the overall system or method in which it is used, if so desired). However, the Applicant must be aware that any claim directed to a computer program must define all the features leading to the technical effect which is invoked in support of the patentability of the program. The claim must also contain all the features which imply an inventive step. If no technical effect can be found for the program claimed, or if the program does not provide a solution to a technical problem, then an objection will be raised by the Examining Division either under existing Article 52(2)(c) EPC or, when it is in force, under the proposed new version of Article 52(1).
V.2. Inventive Step Analysis. The inventive step analysis which will be carried out by the Examining Division for this kind of claim will be exactly the same as for any other kind of claim : - First, the difference between the claim and the closest prior art will be identified. - The objective technical problem corresponding to this difference will then be formulated. It will be decided whether this objective technical problem is inventive or not. - If it is not, it will be decided whether the solution to this objective technical problem is within the skill of a man skilled in the art, or not. V.3. The Description. The description will have to disclose the technical functions which are implemented by the computer program. In particular, not only the result achieved by the program has to be described, but also the way it is achieved by the program. A technical problem to be solved must also be identified in the description. It will be appreciated that, in view of the criteria for patentability (see IV.1 above), all the explanations concerning the technical problem and its solution by the invention are very important, and may be even more important than in other fields of technology. The terminology used has to be consistent and understandable. A situation in which the Examiner would face expressions or terminology which are used or known only by the Applicant would certainly lead to an objection under Article 84 EPC (lack of clarity). Great care should be therefore taken, when drafting an application, to choose the appropriate terms of the art. It is highly recommended to include flow charts and examples. At present, the EPO Examination Guidelines (C- II, 4.14a) instruct Examiners to object to the presence in a European patent application of complete program listings. The content of such listings is not considered by the Examiner to provide enabling disclosure, nor to provide a basis for later amendments of the application. The presence in the application of excerpts of programs is tolerated. However, it is unsafe to rely on these excerpts as providing enabling disclosure. In our view, there is no strong and explicit basis in the EPC for a prohibition on the inclusion of complete program listings in a European patent application. Thus, it is possible that the Boards of Appeal may override this Guideline C- II 4.14a also, as practice under Article 52 EPC develops.
However, for the time being the EPO authorities have expressed no intention of amending examination practice in this regard. Thus, it is important to ensure that all relevant features of a computer program are described fully in the European patent application in natural language and/or by flow charts and diagrams. V.4. Summary The two IBM decisions referred to above change the explicit subject- matter for which European patent protection can be sought : a computer program can now be claimed, either as such or recorded on a computer readable medium (in addition to being claimed as part of the overall system/method in which it is used). The form of the claims which can be granted for a computer related invention is now clarified and any objection based on the current formulation of Article 52(1)- (3) EPC can now, in principle, be overcome, provided there is the basis in the application for asserting that the invention provides a "further technical effect". In view of the evolution of this technology, in particular in the field of networks, we are of the opinion that it could be useful to include in the application a description and a claim for a signal carrying the instructions for running a computer program. The information which is recorded, e.g. on a CD ROM is "frozen" and therefore a claim to such recorded information could not cover the transmission through a network of information concerning a computer program. Top VI. THE ENFORCEMENT OF RIGHTS VI.1. Infringement and Contributory infringement A claim directed to a computer program or a computer- readable medium will of course allow the patentee to enforce his rights against anybody offering for sale or selling or using or making a program or a CD ROM (or any other type of computer readable medium) with the corresponding instructions loaded on it. With regard to contributory infringement, we recall here the conditions set out in Art. L. 613-4 of the French Intellectual Property Code (noting that other Contracting States to the EPC have similar provisions): It shall also be prohibited, save with the consent of the owner of the patent, to supply or offer to supply, on French territory, to a person other than a person entitled to work the patented invention, means, relating to an essential element of the invention, of implementing the invention, on that territory, where the third party knows, or it is obvious from the circumstances, that such means are suited and intended for putting the invention into effect. Under French law, a contributory infringer is therefore someone who supplies or offers to supply, on French territory, an essential element of the invention.
Another condition for contributory infringement is that there is an act of infringement committed or planned by another third party, to whom an essential element of the invention is supplied. Since a computer readable medium like a CD- ROM can now be the essential element of a claim, it can form, in principle, a basis for contributory infringement, just as any other essential features of any other kind of claims. The same remark holds for a computer program, not necessarily loaded on such a computer readable medium. VI.2. However, we do not yet know how the judges, at national levels, will evaluate the validity and the scope of claims explicitly reciting computer programs and computer readable medium. Therefore, for the time being, we would recommend that in European patent applications you should maintain an independent process claim and an independent system claim, with appropriate additional claims directed to a computer program and/or computer readable medium and/or signal carrying or representing the instructions for a computer program. Top VII. THE PRACTICE OF THE FRENCH NATIONAL PATENT OFFICE Concerning national French Applications, the French Patent Office regrettably still raises objections against claims explicitly reciting computer programs either per se or stored on a computer readable medium. We do not know yet whether this practice will be changed in view of the change in practice at the European Patent Office. Anyway, and as already mentioned above (see IV.2), legislation at European Union level will soon harmonise all national laws of EU member states in the same way, in line with Art. 27 of the TRIPS Agreement. Pascal MOUTARD CABINET BEAU DE LOMENIE, APRIL 1999