It is the established case law of the boards of appeal that claimed subject-matter specifying at least one feature not falling within the ambit of Art. 52(2) EPC is not excluded from patentability by the provisions of Art. 52(2) and (3) EPC (T 258/03, T 424/03, T 1658/06, T 313/10).
In G 3/08 (OJ 2011, 10) (Question 2 of the referral), the Enlarged Board of Appeal stated that a claim in the area of computer programs can avoid exclusion under Art. 52(2)(c) and (3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium. It noted however that 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 since T 1173/97 that if a claim to program X falls under the exclusion of Art. 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 Art. 52(1) and 56 EPC. Merely the EPC Article applied is different. While the Enlarged Board was aware that this rejection for lack of an inventive step rather than exclusion under Art. 52(2) EPC is in some way distasteful to many people, it is the approach which has been consistently developed since T 1173/97 and since no divergences from that development have been identified in the referral the Enlarged Board did not consider it to be its function in this Opinion to overturn it, for the reasons given above.
The Enlarged Board of Appeal explained that neither T 931/95 (OJ 2001, 441) nor T 258/03 (OJ 2004, 575) dealt with the question whether a claim to a program on a computer-readable medium avoided exclusion. T 424/03 (extending the reasoning applied in T 258/03) held that claim to a program ("computer executable instructions" in the claim in question) on a computer-readable medium also necessarily avoided exclusion from patentability under Art. 52(2) EPC 1973. The decision in T 424/03 went on to note that the particular program involved had the potential of achieving a further technical effect when run and thus also contributed to the technical character of the claimed subject-matter. The Enlarged Board of Appeal stated in G 3/08 (OJ 2011, 10) that this fact was, however, not necessary to the conclusion that the claimed subject-matter avoided exclusion, since according to the reasoning of T 258/03 any technical means claimed was sufficient to overcome the exclusion of Art. 52(2) EPC. The question whether the program itself caused a "further technical effect" when run, and would therefore also qualify as technical means, only assumed importance for the question of inventive step.
The question whether the program itself caused a "further technical effect" when run, and would therefore also qualify as technical means, only assumed importance for the question of inventive step - in parallel to these decisions the board had been developing an approach to the appraisal of inventive step taking into account the fact that some of the features of a claim might, considered alone, fall under the exclusions of Art. 52(2) EPC (see T 154/04, OJ 2008, 46, for an exposition of the approach). For this approach it is important which features contribute to the technical character of the claimed subject-matter, since only such features are taken into account for the assessment of inventive step. In the particular case of T 424/03, both the computer-readable medium and the program itself were features which gave the subject-matter of the particular claim as a whole a technical character, and were both therefore to be taken into account for the assessment of its inventive step.