EPO Referral main page (page 11)
3.4. QUESTION 4 (A) DOES THE ACTIVITY OF PROGRAMMING A COMPUTER NECESSARILY INVOLVE TECHNICAL CONSIDERATIONS?
(B) IF (A) IS ANSWERED IN THE POSITIVE, DO ALL FEATURES RESULTING FROM PROGRAMMING THUS CONTRIBUTE TO THE TECHNICAL CHARACTER OF A CLAIM?
(C) IF (A) IS ANSWERED IN THE NEGATIVE, CAN FEATURES RESULTING FROM PROGRAMMING CONTRIBUTE TO THE TECHNICAL CHARACTER OF A CLAIM ONLY WHEN THEY CONTRIBUTE TO A FURTHER TECHNICAL EFFECT WHEN THE PROGRAM ls EXECUTED?
Article 52(2) and (3) EPC defines a non-exhaustive list of subject-matter and activities which, as such, shall not be regarded as inventions. This list includes programs for computers. The Boards of Appeal have consistently grouped the excluded subject-matter and activities under the heading 'lacking technical character' (e.g. T 1173/97, Reasons, 5.2 and T 258/03, Reasons, 3.1).
What is not specified in the EPC is whether, or under which circumstances, the activity associated with creating programs for computers, i.e. programming a computer, is a technical activity which is in principle patentable, or a non-technical activity which is as such excluded from patentability.
The answer to this question affects the definition of person skilled in the art, and consequently the nature of problems that can be presented as the objective technical problem. Therefore, it is of key importance in the field of computer technology that there is clarity concerning the skills attributable to the skilled person.
II The diverging decisions
Decision T 1177/97 (13) was concerned with a computer implemented method of translation between natural languages. The Board found (Reasons, 3, 7th paragraph) that "implementing a function on a computer system always involves, at least implicitly, technical considerations". The reference to 'computer routines' makes clear that this implementation consisted of programming the computer (Reasons, 7, 3rd paragraph): "Choosing to apply one or the other [translation] principle has clearly consequences for the technical implementation ... since the computer routines have to work differently".
Furthermore, decision T 172/03 (14), emphasised (Reasons, 6 and 7) that the person skilled in the art is a technical expert, to whom it is inappropriate to attribute professional ! competence in non-technological fields. In this decision the Board defined the skilled person as a software project team, consisting of programmers (Reasons, 1 6)-.-The technical problem posed to this skilled person was the software implementation of the non- technical order management method (Reasons, 20 and 21).
Contrary to these decisions, T 833/91 (15) (Reasons, 3.2), T 204/93 (16) (Reasons, 3.2) and T 769/92 (17) (Reasons, 3.7, 5th paragraph) all considered that a programmer's activity, i.e. writing computer programs, falls within the exclusions set out in Art. 52(2)(c) EPC. The decisions consider programming to be a mental act of the programmer.
(13) T 1177/97 - No headword
(14) T 172/03 - Order management/RICOH
III The divergence
It seems that the former decisions view programming along the same lines as the configuration of a technical apparatus. This would of course hold even when the method that the computer is being programmed to carry out is non-technical in nature.
However, it has to be noted that modern (high-level) programming languages do their utmost to render technical considerations unnecessary. The term 'programming' is broad and ranges from writing in low-level languages (e.g. assembly language) which are intimately linked to the hardware being programmed, to high level languages which are truly isolated from any details of the hardware. Even such things as recording a macro (recording a sequence of steps to be carried out on a computer, often in the environment of an office application such as a word processor or spreadsheet) must be considered to be a form of programming, even though this would generally be carried out by an expert, or even a day-to-day user, of the office application rather than a technically skilled computer expert.
The latter decisions place more emphasis on the link between the resulting product, which is as such explicitly excluded from patentability, and the activity of producing it. Decision T 1173/97 also gives an indication (Reasons, 1 1.4-1 1.5) that it implicitly agrees with the point of view given in T 204/93. This is further supported by a statement by the United Kingdom delegation in the travaux préparatoires (18), according to which computer programs were to be understood as a 'mathematical application of a logical series of steps in a process which was no different from a mathematical method'.
If a computer program is deemed to lack technical character (i.e. it is a computer program as such), it could follow that the activity used to produce the program has to be considered similarly non-technical in nature.
The effects caused by a computer program (which may or may not contribute to its technical character) may occur when the program is executed (for instance how much memory it occupies, how quickly it carries out the tasks for which it was programmed, ' etc.). On the other hand, there may be effects relating to software development which affect the programmer ¡n his work (ease of maintenance of the program, flexibility, portability, reusability etc.). .
It seems important to consider the actual tasks performed by a programmer. Would he be responsible for the design of the technical system and the role that the computer program plays therein, and thus be solving technical problems, or would the design be the task of an engineer who would then pass on his (programming) requirements to the programmer?
Furthermore, does the answer depend on whether the considerations of a programmer involve any technical details of the particular computer on which the program will run?
(15) T 833/91 - No headword
(16) T 204/93 - No headword
(17) T 769/92 - General purpose management system/SOHEl (OJ EPO 8/1995, 525)
(18) Minutes of the 9th meeting of Working Party I, Luxembourg, 12-22 October 1971, BR 135 e/71 prk, p50, 96