There might be an invention within the meaning of Art. 52(1) EPC 1973 if, for example, a technical effect was achieved by the invention or if technical considerations were required to carry out the invention (see T 931/95, OJ 2001, 441).
In G 3/08 (OJ 2011, 10) the Enlarged Board of Appeal could not identify a divergence in the case law of the boards of appeal, but noted that there was at least the potential for confusion, arising from the assumption that any technical considerations are sufficient to confer technical character on claimed subject-matter, a position which was apparently adopted in some cases (e.g. T 769/92).
In T 1173/97 the board noted that 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.
Thus, although it may be said that all computer programming involves technical considerations since it is concerned with defining a method which can be carried out by a machine, that in itself is not enough to demonstrate that the program which results from the programming has technical character; the programmer must have had technical considerations beyond "merely" finding a computer algorithm to carry out some procedure (G 3/08, point 13.5 of the Reasons).
In T 914/02 the involvement of technical considerations, however, was not sufficient for a method, which might exclusively be carried out mentally, to have technical character. In fact, other non-inventions listed in Art. 52(2) EPC 1973, such as scientific theories, but also computer programs, typically involved technical considerations. Technical character could be provided through the technical implementation of the method, resulting in the method providing a tangible, technical effect, such as the provision of a physical entity as the resulting product, or a non-abstract activity, such as through the use of technical means. The board rejected a claim directed to an invention involving technical considerations and encompassing technical embodiments (point 3 of the Reasons) on the grounds that the invention as claimed could also be exclusively performed by purely mental acts excluded from patentability under Art. 52(2)(c) EPC 1973.
In T 619/02 (OJ 2007, 63) the board stated that the prerequisite of technical character inherent to the EPC cannot be considered to be fulfilled by an invention, as claimed, which, although possibly encompassing technical embodiments, also encompasses ways of implementing it that do not qualify as technical. It followed that an invention is susceptible of patent protection within the meaning of Art. 52(1) EPC 1973 if, and only if the invention as claimed includes aspects that impart technical character to essentially all ways of performing the invention. An analogous condition applies in fact to the exclusions from patentability under Art. 52(2) EPC 1973, as illustrated by decision T 914/02 in which the corresponding board rejected a claim directed to an invention involving technical considerations and encompassing technical embodiments on the grounds that the invention as claimed could also be exclusively performed by purely mental acts excluded from patentability under Art. 52(2)(c) EPC (see also T 388/04 (OJ 2007, 16), point 3 of the Reasons).
In T 306/04 the board pointed out that the mere possibility of serving a technical purpose or of solving a technical problem was not sufficient to avoid exclusion under Art. 52(2) and (3) EPC 1973 (see also T 388/04, OJ 2007, 16; T 1410/07).
In T 471/05 the fact that the claimed method encompassed non-excluded implementations did not overcome the fact that the claimed method also encompassed excluded subject-matter (T 914/02, points 2 and 3; T 388/04, OJ 2007, 16; T 453/91 and T 930/05). Thus, as long as the claimed design method was not confined to physical, technical implementations, the claimed subject-matter encompassed embodiments excluded from patentability under Art. 52(1) to 52(3) EPC 1973 and was not entitled to patent protection under the EPC.