More on that referral

The IPKat recently reported the EPO president's referral of a number of questions to the Enlarged Board relating to patentablity of computer-implemented inventions (for want of a better term).  This prompted an unusual (for this blog at least) number of comments from the IPKat's very knowledgeable (though sometimes rather argumentative) readership.  Much of the commentary relates to the, by now very familiar, arguments about whether computer software is a suitable subject for a patent.  

The referral has, of course, been widely reported elsewhere, even in the pages of the New York Times.  It is widely assumed, even by some apparently knowledgeable legal types (see here), as well as most commenters here, that the referral will result in some kind of clarification of the law.  One observant IPKat commenter, however, (as well as other knowledgeable legal types here) has pointed out that there is a good chance the referral will be thrown out by the Enlarged Board instead of being even considered in detail, on the grounds that it doesn't comply with the requirement of Article 112(1)(b).  The last time this happened was in 1995, when the Enlarged Board decided that there was no conflict in the case law on patentability of plant and animal varieties (G 3/95). The provision in question reads:

(1) In order to ensure uniform application of the law, or if a point of law of fundamental importance arises:
[...]
(b) the President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question.

The last time that questions on the subject of software patents were proposed (by Lord Justice Jacob, after his decision in Aerotel in October 2006), the then President replied that there was "insufficient legal basis for a referral under Article 112(1)(b) EPC. Leaving aside Board of Appeal case law the line of reasoning of which has been abandoned by later case law, I believe there are insufficient differences between current Board of Appeal decisions dealing with Article 52 EPC exclusions on important points of law that would justify a referral at this stage." (reported by the IPKat here).

The IPKat would like to know how the situation has changed since March 2007 to make such a referral admissible now, when it apparently wasn't before.  The case law cited by Ms Brimelow is all from before 2007 (the most recent one being T 424/03, from February 2006, which is alleged to be inconsistent with T 1173/97), so where are all the recent conflicting (or 'diverging') decisions? Do the decisions even diverge, or are they merely developments of the case law?  After reviewing the questions and their support in some detail, this Kat is of the opinion that the referral is not admissible and the questions cannot therefore be answered, at least not via this route.  The big question then becomes how will the Enlarged Board choose to let Ms Brimelow down, and how will the anti-patent lobbyists react when this happens?

As a public service, the IPKat will attempt to provide answers to each of the questions (with translations provided by an anonymous patent attorney):

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

Translation: Were we right to allow so-called 'media' claims?

The referral cites decisions T 424/03 (Microsoft/Clipboard Formats I) and T 1173/97 (Computer Program Product/IBM), which are alleged to be 'diverging' because, while T 424/03 placed emphasis on the way a computer program was claimed, T 1173/97 placed emphasis on the function of the computer program.  This argument is quite clearly wrong.  Not only does T 424/03 expressly approve the previous decision of T 1179/97 (so cannot therefore be said to be in conflict with it), but the emphasis on the way the program was claimed in T 424/03, i.e. in the form of a program on a carrier, was only in respect of overcoming the first 'technical character' hurdle specified by T 258/03 (Auction Method/Hitachi). This is all clear from point 5.3 of the reasons in T 424/03:

"Claim 5 is directed to a computer-readable medium having computer-executable instructions (i.e. a computer program) on it to cause the computer system to perform the claimed method. The subject-matter of claim 5 has technical character since it relates to a computer-readable medium, i.e. a technical product involving a carrier (see decision T 258/03 - Auction method/Hitachi cited above). Moreover, the computer-executable instructions have the potential of achieving the above-mentioned further technical effect of enhancing the internal operation of the computer, which goes beyond the elementary interaction of any hardware and software of data processing (see T 1173/97 - Computer program product/IBM; OJ EPO 1999, 609). The computer program recorded on the medium is therefore not considered to be a computer program as such, and thus also contributes to the technical character of the claimed subject-matter."

There is therefore no divergence in the approach taken in T 424/03 with respect to the way in which computer programs can be validly claimed. T 1173/97 further clarifies this at point 13:

"Finally, as has become clear from the above, the Board notes that it does not agree with the interpretation by the examining division of Article 52(2) and (3) EPC with reference to the Guidelines, C-IV, 2.3 (page 38 of the December 1994 edition) from which they concluded that a computer program claimed by itself or as a
record on a carrier is not patentable.
In the view of the Board, a computer program claimed by itself is not excluded from patentability if the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect which goes beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it is run.
"Running on a computer" means that the system comprising the computer program plus the computer carries out a method (or process) which may be of the kind according to claim 1.
"Loaded into a computer" means that the computer programmed in this way is capable of or adapted to carrying out a method which may be of the kind according to claim 1 and thus constitutes a system (or device or apparatus) which may be of the kind according to claim 14.
Furthermore, the Board is of the opinion that with regard to the exclusions under Article 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 (following decision T 163/85, OJ 1990, 379, "Colour television signal/BBC", as cited above)."

The answer to question 1, which can be determined from either of the cited decisions, is neither yes or no, but that it does not matter what form the computer program is claimed, provided the program has the potential for causing a 'further technical effect'. 

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?
Translation: Were we right to effectively move the assessment of exclusion from patentability from Article 52 to Article 56 (inventive step)?

Yes, but only to the extent that the 'technical character' test is passed by having a physical article in the claim (see Hitachi).  The patentability test is instead assessed under Article 56, with features of the claimed invention that do not contribute to the technical character not considered as part of the solution to the technical problem.  Otherwise, the simple (but incomplete) answer is no.

2.(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?

See answer to 2(a).

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?
Translation: Can a technical effect exist in just a programmed computer or must it act on some physical entity?

No - see T 208/84 (Vicom).

3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

Not applicable (see above).  If the computer is unspecified, this might be an issue of sufficiency or of added subject matter, but not of patentability under A52 or A56. 

3.(c) If question 3(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?

Yes - see Vicom again. It does not matter that the implementation is on a 'general purpose' computer, provided the effect provided goes beyond the normal interactions between software and hardware.

4.(a) Does the activity of programming a computer necessarily involve technical considerations?

Translation: Can a technical effect exist in just a computer program, or must it act on some other physical entity?

Yes - 'technical character', as defined by T 258/03, can involve something as simple as pencil and paper. Programming involves at least this, so is therefore inherently technical. This does not, however, mean that the result of the program possesses the further technical effect required for patentability.

4.(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

No - see answer above.

4.(c) If question 4(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 is executed?

Not applicable - see above.

In summary it seems that, once question 1 is answered, all the others simply fall away, leaving nothing to be decided that has not already been established by many Boards of Appeal decisions.  In the IPKat's view, these questions are very poorly drafted and seem to result from a very obvious (deliberate?) misreading of the case law of the EPO Boards of Appeal.  He has no doubt that, provided the Enlarged Board follow the meaning of Article 112, they will have little hesitation in refusing the referral.