The current EPO examination guidelines specify that a computer program is patentable subject matter if, when executed on a computer, it produces a further technical effect which goes beyond the normal physical interactions between the program and the computer. This meaningless phrase has been introduced in 1998 by decision T1173/97 of the Boards of Appeal of the European Patent Office (EPO) with the intention to circumvent the European Patent Convention's restrictions on software patenting, by suggesting a far-fetched interpretation of the phrase "as such". Since then, the EPO has been issuing large numbers of software patents, while unsuccessful attempts have also been made to include the notion of further technical effect in laws such as the software patent directive.
Article 52(2) c of the European Patent Convention (EPC) states that programs for computers are not patentable inventions; however, Article 52(3) was used by EPO case law to render the exclusion meaningless. In order to be able to patent programs for computers, the EPO is using an interpretation of the EPC that allows computer programs to be not as such, and therefore to be patentable. The essential idea of this interpretation is that a computer program that produces a technical effect is not considered to be as such.
This, however, poses a problem: any computer program can be said to produce a technical effect when run on a computer; this technical effect is the physical changes (electric, magnetic, etc.) that occur in the hardware when the program is run. Thus, if the interpretation only mentioned a technical effect as a requirement for being not as such, then all programs would be not as such. Such an interpretation would be inconsistent, because it would mean that computer programs as such do not actually exist, whereas article 52 of the EPC presupposes their existence.
As a result, the EPO's interpretation of "as such" makes provision for that by distinguish computer programs into those that have a "further technical effect beyond the normal physical interactions between the program and the computer", and into those that don't have such a further technical effect. The latter are considered to be as such, whereas the former are considered to be patentable subject matter. In this way, virtually all software is patentable, as all that is necessary is that the applicant claims some kind of further technical effect, a task not particularly difficult, as the word "technical" is undefined.
The very essence of "further technical effects" is that these may be non "technical" in the classical sense. The teaching preempts a further weakening of the key dogmatic "technical" requirement in European patent law. As the permissive US pratice has no technical requirement and US delegations refuse to introduce such a requirement the weakening of technical aims to unilaterally harmonise EPO law with the US in the lights of cross-filed US applications.
T1173/97 invented the "further technical effect"
Until 1998, the EPO examination guidelines said that a computer program claimed by itself or as a record on a carrier is not patentable, irrespective of its contents. Patent application No. 91107112.4 (publication number 0457112) by IBM was refused by the patent examiners because it contained program claims, which violated the guideline. When IBM appealed, the Boards of Appeal, with decision T1173/97, introduced the notion of further technical effect, thereby allowing the patenting of pure software.
Interestingly, the rationale of the decision begins with discussions about the TRIPS agreements and alleged modern trends, as those are judged by the practices of the US and Japanese patent offices (which were already granting software patents), and seems to imply that the limitations imposed by Article 52 of EPC are a nuisance; it then goes on to investigate how to work around it, arriving, after several pages, at the suggestion of the further technical effect. That is, the authors of the decision have made little effort to conceal the fact that they are attempting to circumvent the law.
The decision also contains a list of older decisions which have played a role in the gradual lifting of many of EPC's limitations on patentability.
EPO about "Further Technical" effect (May 19, 2000)
In 2000 the EPO expected a deletion of "programs for computers" from the list of exclusions of EPC 52(2) by the diplomatic conference. They acknowledged that the notion of a "further technical effect"(T1173/97) was a preliminary solution for admitting software patenting, but in the lights of the expected deletion did not consider to apply it to examination pratices.
- This scheme [= patenting software as Computer-implemented inventions] makes no mention of the "further technical effect" discussed in T1173/97. There is no need to consider this concept in examination, and it is preferred not to do so for the following reasons: firstly, it is confusing to both examiners and applicants; secondly, the only apparent reason for distinguishing "technical effect" from "further technical effect" in the decision was because of the presence of "programs for computers" in the list of exclusions under Article 52(2) EPC. If, as is to be anticipated, this element is dropped from the list by the Diplomatic Conference, there will no longer be any basis for such a distinction. [this attempt failed at the Diplomatic Conference 2000] It is to be inferred that the BoA would have preferred to be able to say that no computer-implemented invention is excluded from patentability by the provisions of Articles 52(2) and (3) EPC. As to the lack of need to consider "further technical effect", this assertion is based on the proposition that according to the scheme put forward no patent would be granted which should have been refused for lack of further technical effect. This is because the existence of an objective technical problem overcome is itself sufficient proof of the requisite further technical effect. Further, it is to be remarked that this scheme of examination should not lead to refusals where previously a patent would have been granted, since the requirement for an objective technical problem is long-established. The only change is an explicit statement of the already implicit consequences of the lack of such a problem. Examiners should however be familiar with the concept of "further technical effect", since it may be employed by applicants or by parties in an opposition.
Past Diplomatic Conference 2000
The diplomatic conference did not delete "program for computers" from EPC 52(2) as expected by the EPO. Since then the EPO further applies the teaching to circumvent EPC 52(2) and case law developed around it.
In 2001 Bertil Hjelm, Principal Director DG2, European Patent Office presented a paper on the topic of "Recent Developements and challenges in the protection of intellectual property rights - software inventions and business methods" at a WIPO "international conference on intellectual property, the internet, electronic commerce and traditional knowledge" (Sofia, May 2001) in which he justifies the teaching of T1173/97 with the underlying assumption in his whole paper that scope has to be expanded.
- In the special case of computer-implemented inventions, the Boards of Appeal have specified that there must be a “further technical effect,” i.e. one going beyond the normal physical effects seen when programs are run. This requirement for a further technical effect is derived by the BoA from the fact that programs for computers, as such, are excluded from patentability by Articles 52(2)(c) and (3) EPC. Without the requirement for a further technical effect (as opposed to simply a technical effect, which every program has) this exclusion would be meaningless.
The rationale he gives why the teaching should not be applied to examination is that the teaching might also be used to make software unpatentable in the absence of a "further technical effect" and prefers a weakening of the classical interpretation of "technical" to get broad results.
- There is no need to consider whether the invention provides a “further technical effect” since if this examination scheme is followed no patent will be granted which should have been refused for lack of further technical effect. This is because the existence of an objective technical problem overcome is itself sufficient proof of the requisite further technical effect. A new solution of a technical problem implies a new “technical effect,” and in the case of computer-implemented inventions a new “further technical effect” (since by definition, the “normal physical effects” of running a program must be conventional). Hence, if an invention provides a new solution to a technical problem, it must satisfy the requirement for “technical character.”
He further mentions that the explicit modification of the substantive rules of EPC 52(3) c were not needed as it is possible to circumvent these matters of exclusion by the "further technical effect" case law teaching and expects further weakening of "technical":
- In the preparations for the [Diplomatic] Conference it was at length discussed to modify the listing of exclusions in Article 52(2) and, in particular, to delete the reference to computer programs. While finally no proposal
was made along these lines it is nevertheless clear as set out above that the approach discussed is not directly influenced by a deletion or not of “computer program” in the listing in Article 52(2)(c) and (3). The important development and any further change or modification as regards the practical approach when examining computer implemented inventions, including business methods, can rather be expected to come from the interpretation of the word “technical.”
As indicated by Hjelm the EPO sticks to the "further technical effect" teaching to circumvent EPC 52(2). In its current examination guidelines the EPO states
- While "programs for computers" are included among the items listed in Art. 52(2), if the claimed subject-matter has a technical character it is not excluded from patentability by the provisions of Art. 52(2) and (3). However, a data-processing operation controlled by a computer program can equally, in theory, be implemented by means of special circuits, and the execution of a program always involves physical effects, e.g. electrical currents. According to T 1173/97, such normal physical effects are not in themselves sufficient to lend a computer program technical character.
But if a computer program is capable of bringing about, when running on a computer, a further technical effect going beyond these normal physical effects, it is not excluded from patentability, irrespective of whether it is claimed by itself or as a record on a carrier. This further technical effect may be known in the prior art. A further technical effect which lends
technical character to a computer program may be found e.g. in the control of an industrial process or in processing data which represent physical entities or in the internal functioning of the computer itself or its interfaces under the influence of the program and could, for example, affect the efficiency or security of a process, the management of computer resources required or the rate of data transfer in a communication link. As a consequence, a computer program claimed by itself or as a record on a carrier or in the form of a signal may be considered as an invention within the meaning of Art. 52(1) if the program has the potential to bring about, when running on a computer, a further technical effect which goes beyond the normal physical interactions between the program and the computer. A patent may be granted on such a claim if all the requirements of the EPC are met;