2.4.2 Patentability of computer programs

In T 1173/97 (OJ 1999, 609) (see also T 935/97) the board stated that within the context of the application of the EPC the technical character of an invention is generally accepted as an essential requirement for its patentability. This is illustrated, for instance, by R. 27 and 29 EPC 1973. The exclusion from patentability of programs for computers as such (Art. 52(2) and (3) EPC 1973) may be construed to mean that such programs are considered to be mere abstract creations, lacking in technical character. The use of the expression "shall not be regarded as inventions" seems to confirm this interpretation. This means that programs for computers must be considered as patentable inventions when they have a technical character.

Further, Art. 27(1) TRIPS provides that "patents shall be available for any inventions, whether products or processes, in all fields of technology". The board went on to state that it was the clear intention of TRIPS not to exclude from patentability any inventions, whatever field of technology they belong to, and therefore, in particular, not to exclude programs for computers as mentioned in and excluded under Art. 52(2)(c) EPC 1973. Thus, the board of appeal decided that the practice of the EPO under Art. 52(2) and (3) EPC 1973 should be changed in certain respects in relation to claims to computer programs. In these decisions it was held that the exclusion of computer programs "as such" did not encompass all programs for computers. The board held that a computer program product is not excluded from patentability under Art. 52(2) and (3) EPC 1973 if the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect which goes beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it is run.

The board stated that, according to the case law of the boards of appeal, a claim directed to the use of a computer program for the solution of a technical problem could not be regarded as seeking protection for the program as such within the meaning of Art. 52(2)(c) and (3) EPC 1973, even if the basic idea underlying the invention could be considered to reside in the computer program itself, as illustrated, for example, by decisions T 208/84 (OJ 1987, 14) and T 115/85 (OJ 1990, 30). The case law thus allowed an invention to be patentable when the basic idea underlying the invention resided in the computer program itself. The combination of the two provisions (Art. 52(2) and (3) EPC 1973) demonstrated that the legislators did not want to exclude from patentability all programs for computers. In other words the fact that only patent applications relating to programs for computers as such were excluded from patentability meant that patentability could be allowed for patent applications relating to programs for computers where the latter were not considered to be programs for computers as such. In order to establish the scope of the exclusion from patentability of programs for computers, it was necessary to determine the exact meaning of the expression "as such". This could result in the identification of those programs for computers which, as a result of not being considered programs for computers as such, were open to patentability.

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