3.2. QUESTION 2
(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 DATA 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?
It is established that if the subject-matter of a claim has technical character, then it is not excluded from patentability under Art. 52(2) and (3) EPC. However, in the case of claims in the area of programs for computers (worded, for instance, explicitly as programs for computers or as methods carried out by computers), there is uncertainty about when exactly features can confer technical character to such claims.
The very purpose of a computer program is to be executed by a computer, and to be executed by a computer it must be stored on a computer-readable data storage medium. Even though both the computer and the data storage medium are without doubt technical apparatus, the implicit use of a computer or data storage medium cannot be sufficient to avoid exclusion of computer programs as such. Otherwise the exclusion would be rendered void.
II The diverging decisions
T 1173/97 found (see section 3.1) that a computer program must be considered to be patentable when it has technical character (Reasons, 5.3).
In determining what constituted 'technical character' for a computer program, it was assumed that programs for computers cannot be considered as having technical character for the very reason that they are programs for computers (Reasons, 6.1). Thus the physical modifications of the hardware (causing e.g. electrical currents and the switching of transistors) deriving from the execution of the instructions given by programs for computers cannot per se constitute the required technical character. The technical effect had to be found in the further technical effects deriving from the execution (by the hardware) of the instructions given by the computer program.
Thus the conclusion of the Board was (Headnote): "A computer program product is not excluded from patentability under Art. 52(2) and (3) EPC if, when it is run on a computer, it produces a further technical effect which goes beyond the 'normal' physical interactions between program (software) and computer (hardware)". The Board further noted that (Reasons, 13, 5th paragraph), regarding the exclusions under Art. 52(2) and (3) EPC, it does not make any difference whether a computer program is claimed by itself or as a record on a carrier.
T 258/03 (6) (Headnote I) found that any method involving technical means is an invention in the sense of Art. 52(1) EPC - i.e. is not excluded from patentability under Art. 52(2) and (3) EPC. This position was supported by various subsequent decisions including T 424/03 (Reasons, 5.1, 2 d paragraph) and T 1284/04 (7) (Reasons, 2).
III The Divergence
Method claims are, in essence, a series of instructions or steps which are to be carried out by any capable entity (this could be a person, a machine, a combination thereof or indeed a computer). A computer implemented method corresponds to the specific case of the entity for carrying out the steps being a computer. In the same way a computer program is a series of instructions or steps, constituting a method, whereby the instructions or steps are carried out by a computer. Thus claims for a computer program and a computer implemented method can be seen as having identical scope. Following this line of thought, the scope of a method claim would encompass a computer program for carrying out that method. This was also the view given in T 38/86 (8) (Reasons, 14).
Regarding T 1173/97, in its analysis of TRIPS (Reasons 2.3) the Board noted that Art. 27(1) TRIPS states that 'patents shall be available for any inventions, whether products or processes, in all fields of technology'. It interpreted this provision as not excluding programs for computers. Consequently the Board must have equated programs for computers to either a product or a process.
Further on in the decision, the Board indicated that the substance of a computer program claim lies in the method which it is intended to carry outwhen being run on a computer (Reasons, 9.6, 2"d paragraph, lines 1-3). As such it must be assumed that the Board considered 'programs for computers' to be a type of method claim. This would also be in line with G 2/88 (9)(Reasons, 2.2) which defines the two basic types of claims as being physical entities and physical activities.
Unlike an apparatus, which could be infringing whether it is actually operating or not, a method is only (directly) infringed when the method is carried out, whether by a computer or another entity. As such, it seems illogical to distinguish between computer implemented methods and computer programs which will cause a method to be implemented.
The divergence arises when one considers the same method claimed in the form of a computer implemented method or as a computer program. Following T 258/03, the former _ claim form requires only that technical means are involved (the computer) in order for it to be considered as having technical character. For the latter claim form, on the other hand, ! this is not sufficient. In this case a further technical effect is required which must go beyond the normal technical effects resulting from the involvement of a computer. Thus different standards for deciding on patentability are applied to the same subject-matter.
(6) T 258/03 - Auction method/HITACHI (OJ EPO 12/2004, 575)
(7) T 1284/04 - Loan system/KING
(8) T 38/86 - Text processing/IBM (OJ EPO 9/1990, 384)
(9) G 2/88 - Friction reducing additive/MOBIL OIL III (OJ EPO 4/1990, 93)