It is not specified in the EPC whether, or under which circumstances, the activity associated with creating programs for computers, i.e. programming a computer, is a technical activity which is in principle patentable, or a non-technical activity which is as such excluded from patentability.
The President of the EPO referred to the Enlarged Board of Appeal the following point of law (see G 3/08, Question 4 of the referral): Does the activity of programming a computer necessarily involve technical considerations? The President of the EPO cited decision T 1177/97, where the board found that “implementing a function on a computer system always involves, at least implicitly, technical considerations”. The reference to ‘computer routines’ made it clear that this implementation consisted of programming the computer (see also T 172/03). Contrary to these decisions T 833/91, T 204/93 and T 769/92 (OJ 1995, 525) considered programming to be a mental act of the programmer.
In Opinion G 3/08 (OJ 2011, 10) the Enlarged Board of Appeal considered that the referral asserted correctly that T 1177/97 considered that programming always involved technical considerations, at least implicitly, and that T 172/03 assumed the same in that it considered the skilled person, who, it was emphasised, was a technical expert, to be a software project team, consisting of programmers. On the other hand, T 833/91, T 204/93, and T 769/92 (OJ 1995, 525), were said to consider the programmer's activity, programming, to be a mental act, falling within the exclusions of Art. 52(2) EPC.
The Enlarged Board stated that there was no contradiction between these positions, as may be seen by considering the same case in a non-controversial field, for example bicycle design. Designing a bicycle clearly involves technical considerations (it may also involve non-technical, e.g. aesthetic, considerations), but it is a process which at least initially can take place in the designer's mind, i.e. it can be a mental act and to the extent that it is a mental act would be excluded from patentability (cf. also T 833/91, T 204/93, T 769/92, T 914/02 and T 471/05). Hence the question did not satisfy the requirement for a divergence in the case law and was therefore inadmissible.
While the referral did not actually identify a divergence in the case law, the Enlarged Board of Appeal considered that there was at least the potential for confusion, arising from the assumption that any technical considerations were sufficient to confer technical character on claimed subject-matter, a position which was apparently adopted in some cases (e.g. T 769/92). T 769/92 (OJ 1995, 525) was an example of an invention which concerned the internal functioning of a computer caused by the programs running on it. According to this decision the fact that technical considerations were required in order to arrive at the invention was considered to lend sufficient technical character to the invention as claimed for it to avoid exclusion from patentability under Art. 52(2)(c) and (3) EPC 1973, whereas no importance was attributed to the specific use of the system as a whole.
However, T 1173/97 set the barrier higher in the case of computer programs. It argued 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. In the same way, it seemed to this board, that 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.
In T 1173/97 the board concentrated on the effect of carrying out an algorithm on a computer, noting that there were always technical effects, which led the board, since it recognised the position held by the framers of the EPC, to formulate its requirement for a "further" technical effect. Only if a computer program, when run, produced further technical effects, was the program to be considered to have a technical character. In the same way, it would appear that the fact that fundamentally the formulation of every computer program requires technical considerations in the sense that the programmer has to construct a procedure that a machine can carry out, is not enough to guarantee that the program has a technical character (or that it constitutes "technical means" as that expression is used in e.g. T 258/03). By analogy one would say that this is only guaranteed if writing the program requires "further technical considerations".