EPO Referral main page (page 9)

3.3. QUESTION 3 (A) MUST A CLAIMED FEATURE CAUSE A TECHNICAL EFFECT ON A PHYSICAL ENTITY IN THE REAL WORLD IN ORDER TO CONTRIBUTE TO THE TECHNICAL CHARACTER OF THE CLAIM?

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(B) IF (A) IS ANSWERED IN THE POSITIVE, IS IT SUFFICIENT THAT THE PHYSICAL ENTITY BE AN UNSPECIFIED COMPUTER?

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(C) IF (A) IS ANSWERED IN THE NEGATIVE, CAN FEATURES CONTRIBUTE TO THE TECHNICAL CHARACTER OF THE CLAIM IF THE ONLY EFFECTS TO WHICH THEY CONTRIBUTE ARE INDEPENDENT OF ANY PARTICULAR HARDWARE THAT MAY BE USED?

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I Background

Regardless of the question whether exclusion under Art. 52(2) and (3) EPC can be avoided simply by choosing an appropriate form of claim, it will always be necessary to evaluate the effects caused by individual features or combinations of features to determine whether they contribute to the technical character of a claim. Determining this contribution is always relevant for evaluating the further requirements of the EPC (such as inventive step). It is noted that no distinction is made here between those physical entities or hardware that are inside a computer and those that are outside.

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II The diverging decisions

Decision T 163/85 (10) was concerned with a claim directed at a television signal which inherently comprised the technical features of the TV system. The Board considered that the non-exhaustive list of exclusions under Art 52(2) and (3) EPC could be generalised to subject-matter which is essentially abstract in nature, which is non-physical and therefore not characterised by technical terms. The Board found that the signal as claimed was a physical reality which could be directly detected by technological means, which therefore was not an abstract entity. Also in T 190/94 (11), the claimed system was found to make a contribution to the art in a field not excluded from patentability because the difference (of the claimed subject-matter over the prior art) manifested itself in the real world in a technical effect on a physical entity.

Decision T 424/03, which was concerned with the transfer of data on a computer via a clipboard, considered the method itself to have technical character (i.e. not only because it was claimed as a computer-implemented method). This was because functional data structures were used independently of any cognitive content in order to enhance the internal operation of a computer system with a view to facilitating the exchange of data among various applicat¡on programs (Reasons, 5.2). According to claim 1 (Facts and submissions, IV), these data structures (clipboard formats) are defined by their purpose ('text', 'file contents' and 'file group descriptor'). It is further specified that the selected data is converted into the file contents clipboard format and stored as a data object, and that the 'file group descriptor clipboard format' is used to hold a file group descriptor holding descriptive information about the data object.

Following a similar line to decision T 424/03, decision T 125/01 (12) concerned a control unit for a telecommunications apparatus, e.g. a car radio, whereby the characterising portion of the claim related to how the microprocessor operated in response to user input via buttons. The features of the claim that were novel over the prior art consisted of the use of a single table for permitted operating states, rather than a plurality of tables (Reasons, 3.3). The Board accepted that the corresponding problem, as cited in the patent at issue, was the ease of modification and therefore flexible applicability of the control module. It likened the situation to that of a hardware interface, for which a similar problem would clearly be seen as technical.

10) T 163/85 - Colour television signal/B8C (OJ EPO 9/1990, 379)

11) T 190/94 - No headword

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III The divergence

According to decisions T 163/85 and T 190/94, a technical effect on a physical entity in the real world was required. This was however not the case in T 125/01 and T 424/03. In these decisions the technical effects were essentially confined to the respective computer programs.

For T 125/01 this consisted of writing a program in such a way - via the choice of single or multiple tables - that it can be easily extended. This did not affect the modification of the hardware (a physical entity), but merely simplified the process of (re)programming the control module to adapt the program to work with the modified hardware.

In T 424/03, the various clipboard formats which were seen as functional data structures bore no relation to any technical features of the system in which they were used. The effect of simplifying data transfer between or within applications is also an effect independent of the hardware used.

In the case of features related to computer programs whose effects are confined to the internal working of the computer, there is uncertainty about where the line is to be drawn between technical effects and effects lying solely in the field of programs for computers, in particular if the aspects relating to programming are claimed in any detail.

Following the reasoning of the latter decisions, it would appear that an inventive step could be based on a programmer's choice of elementary programming constructs (tables, loops, subroutines, objects) which solely serve the efficient execution of the program or indeed simplify the programmer's work (e.g. using a subroutine rather than repeating lines of code). It is therefore difficult to contemplate which aspects or effects of a computer program could fall within the exclusion.

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12) T 125/01 - Gerätesteuerung/HENZE _