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Two years ago a European judge devised a list of four questions related to software patentability in Europe. Under the European Patent Convention (EPC), a question can be referred to an Enlarged Board of Appeals when a judge perceives a conflict in previous cases that affects the current case. I have been following this closely since many of my clients seek patent protection in Europe and I wrote part of the response submitted as an amicus brief by the American Intellectual Property Law Association (AIPLA).

Yesterday, the Enlarged Board delivered their opinion, which you can find in full here: G 0003/08 (Programs for computers) of 12.5.2010. The following is a summary of the four questions and the answers provided by the Enlarged Board (which I will refer to as the EB below). Basically it is a big letdown, as the EB squandered a big opportunity to provide some clarification and opted not to answer anything.

Q1. "Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?"

Answer: There is no divergence in the case law, so the question is inadmissible. The EB rephrased the question as referring to whether software should be treated differently for determining patentability based on the form in which it is claimed. In U.S. practice, we often file claims for software related to methods (e.g., a set of steps), systems (e.g., a set of components that can perform various tasks), and computer-readable media (e.g., a disk or other storage containing software instructions). Each of these types of claims has different infringers. A method claim is often infringed by the user, since the user causes the steps to be performed. A system claim is infringed by the person that puts an infringing system together, which could be a software manufacturer (e.g., a competitor of the patent holder) or an IT staff member in an organization (who installs and assembles all of the pieces the make up the system). A computer-readable medium claim is infringed by a disk pressing company, someone who puts the software on a USB drive, and so forth. To a patent attorney these are each claims to very different things, and applications usually contain a mix of claim types for the same invention to cast a broad net to protect the invention.

The EB spends a lot of time considering whether they can even take the question. They can only get involved on a referral of questions of this type if there is a conflict of rulings that come from two separate lower courts. They distinguish between cases that come out differently because of "developments in the law" from those cases that come out differently because two lower courts disagree on the law. Here they find the conflict to be developments in the law, and thus claim there is no conflict and punt on the underlying question. As a result, the previous case law on the topic stands, which they describe as follows "a claim in the area of computer programs can avoid exclusion under Articles 52(2)(c) and (3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium. But no exposition of this position would be complete without the remark that it is also quite clear from the case law of the Boards of Appeal...that if a claim to program X falls under the exclusion of Articles 52(2) and (3) EPC, a claim which specifies no more than "Program X on a computer-readable storage medium," or "A method of operating a computer according to program X," will always still fail to be patentable for lack of an inventive step under Articles 52(1) and 56 EPC. Merely the EPC article applied is different."

The inventive step needs to include more as described by one case they considered, "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."

Q2. "(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 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?"

Answer: There is no divergence in the case law, so the question is inadmissible. The EB finds that the existing case law correctly distinguishes a computer program's instructions from the method the program performs. They point out that there is a difference between what something is versus what it is called, even though both use the same words. Here's a funny example: "Tigers eat meat. Meat is a word. Therefore tigers eat words." The problem with this statement is that "meat" is being used as what something is in the first instance and what something is called in the second instance. They apply this to computers as follows: "In the present case there is a logical distinction between a method carried out by a computer and the sequential list of instructions which specify that method."

Q3. "(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? (b) If Question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer? (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?"

Answer: There is no divergence in the case law, so the question is inadmissible. A technical effect is required, and previous cases do not care whether the "technical effects were on a physical entity in the real world" or not.

Q4. "(a) Does the activity of programming a computer necessarily involve technical considerations? (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? (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?"

Answer: There is no divergence in the case law, so the question is inadmissible. The EB summarizes the prior case law as follows: "all computer programs have technical effects, since for example when different programs are executed they cause different electrical currents to circulate in the computer they run on. However such technical effects are not sufficient to confer 'technical character' on the programs; they must cause further technical effects."

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By Mason Boswell

Mason Boswell - Seattle Software Patent Attorney

Mason Boswell is a patent attorney in Seattle that focuses his practice on software, semiconductor, and game companies. In this patent advice blog, you will find current thoughts on patent strategy, patent-related news, and other interesting intellectual property topics.