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3.1. QUESTION 1: CAN A COMPUTER PROGRAM ONLY BE EXCLUDED AS A COMPUTER PROGRAM AS SUCH IF IT IS EXPLICITLY CLAIMED AS A COMPUTER PROGRAM?

Comments please.

I. Background

In the 199Os, applicants stated to formulate claims for their computer implemented inventions in terms of the computer program, e.g. 'Computer program for carrying out method X, or 'Computer readable medium for storing a computer program for carrying out method X'. The later formulation and equivalents are referred to as a computer program product claims (CPPs). These formulations are clearly important for applicants as they are routinely included in patent applications in the field of computer technology.

In this field, claim formulations along the following lines are common:

computer program products, storing a computer program.

However, the substance of these claims, i.e. the underlying method to be performed by a computer, is often identical.

Recently, in the light of an England and Wales Court of Appeal judgement, the UK intellectual property Office issued a practice notice(2) stating that it seemed likely that few claims to programs or programs on carriers would avoid the exclusion from patentability of programs for computers as such. In practice they rejected nearly all such claims.

In response to a growing dissatisfaction from applicants, a set of test cases were constructed to have the issue decided by the UK courts, and the practice notice was overruled in this respect(3). Thus the importance of such claim formulations for applicants is apparent.

II. The diverging decisions

Regarding decision T1173/97 (4), the subject-matter of the application that was subject of the appeal related to recovering resources in a computer system. Independent claims defining a method for resource recovey in a computer system and a computer with means for carying out the method were found to be allowable by the Examining Division.

The application was refused only because of no further independent claims directed at a corresponding computer program product. The Examining Division followed the EPO Guidelines valid at the time which stated that a computer program claimed by itself or on a carrier, irrespective of its contents, is excluded from patentability under A. 52(2) and (3) EPC. The Division considered that economic considerations and international developments (e.g. TRlPS and new practices of other patent offices) could not be taken into account.

The Board was not bound by the Guidelines and in this decision it chose not to follow them. It noted that TRlPS may not be directly applied to the EPC; nevetheless it was taken into consideration and found not to preclude the patenting of computer programs. The Board then set about interpreting the exclusion from patentability of programs for computers as set out in the EPC.

From the combination of the two provisions (A. 52(2)(c) and (3) EPC), the Board decided that the legislator did not want to exclude from patentability all programs for computers (Reasons, 4). In other words, the Board found that of all computer programs, there existed a subset (computer programs as such) which was excluded from patentabi1ity. Those computer programs which were not in this subset were not excluded from patentability.

The Board further concluded (Reasons, 5.2-5.4) that programs for computers are patentable when they have technical character; technical character being an essential requirement for patentability. It considered this to be in line with the exclusion of A. 52(2)(c) EPC and the requirement that the exclusion be interpreted narrowly (n. 52(3) EPc).

Decision T 424/03 (MICROSOFT-clipboard formats) concerned an application disclosing a method of providing expanded clipboard formats for transferring data bemeen formats. The clipboard is a storage area used in the common computer commands 'cut', 'copy' and 'paste'.

In this decision, the Board distinguished a method implemented in a computer system from a computer program. The former was described as a sequence of steps that are actually performed on a computer and achieving an effect. The latter was described as a sequence of computer-executable instructions which just have the potential of achieving such an effect when loaded into, and run on, a computer. Thus a computer implemented method can never be a computer program as such. The Board then introduced a claim categoy of 'computer program' (Reasons, 5. 1).

III. The divergence

T 1173/97 placed the emphasis on the function of the computer program (does the claimed program have technical character) rather than the manner «źn which it is claimed , (e.g. as a computer program, a computer program product or a computer-implemented method). It noted that a computer program or computer program product does not directly disclose a technical effect in physical reality; this only becomes the case when the computer program is run on a computer. However, it saw no reason to distinguish between a direct technical effect and the potential to produce a technical effect (an indirect technical effect) (Reasons, 9.4).

On the other hand, T 424/O3 placed emphasis on the manner in which the computer program is claimed. One can consider the case of a method 'x' which is suitab1e to be implemented on a computer. Following the reasoning of this decision, only a claim of the form 'computer program for method x' could possibly be excluded from patentability as a computer program as such, whereas claims of the form 'computer implemented method x' or 'computer program product storing executable code for method x' would not be excluded (irrespective of the nature of the method x).

IV. Consequences

In the field of computer technology, innovation frequently lies in the particular method performed by a computer program while executed by conventional hardware.Consequently, the exclusion of computer programs as such under Article 52(2) and (3) EPC should be of key importance in this field. However, if one were to follow the reasoning of T 424/O3, overcoming the exclusion of programs for computers would become a formality, merely requiring formulation of the claim as a computer implemented method or as a computer program product.

References

(2) Practice notice dated 2 November 2OO6, point 14: http://www.ipo.gov.uk/patent/p-decisionmaking/plaw/p-law-notice/p-law-notice-subjectmaer.htm

(3) Practice notice dated 7 february 2OO8: http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter-2OO8O2O7.htm

(4) T11 73/97 - Computer program product IBM (OJ EPO 1 O/1 999, 6O9)

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