Inventions involving programs for computers can be protected in different forms of a "computer-implemented invention", an expression intended to cover claims which involve computers, computer networks or other programmable apparatus whereby at least one feature is realised by means of a program. Claims directed to computer-implemented inventions may take the forms described in F-IV, 3.9 and sub-sections.
The basic patentability considerations in respect of claims for computer programs are in principle the same as for other subject-matter. While "programs for computers" are included among the items listed in Art. 52(2), if the claimed subject-matter has a technical character it is not excluded from patentability by the provisions of Art. 52(2) and Art. 52(3).
Technical character should be assessed without regard to the prior art (see T 1173/97, confirmed by G 3/08). Features of the computer program itself (see T 1173/97) as well as the presence of a device defined in the claim (see T 424/03 and T 258/03) may potentially lend technical character to the claimed subject-matter as explained below. In particular in embedded systems, a data processing operation implemented by means of a computer program can equally be implemented by means of special circuits (e.g. by field-programmable gate arrays).
A computer program claimed by itself is not excluded from patentability if it is capable of bringing about, when running on or loaded into a computer, a further technical effect going beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it is run (T 1173/97 and G 3/08). The normal physical effects of the execution of a program, e.g. electrical currents, are not in themselves sufficient to lend a computer program technical character, and a further technical effect is needed. The further technical effect may be known in the prior art.
Likewise, 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).
A further technical effect which lends technical character to a computer program may be found e.g. in the control of an industrial process or in the internal functioning of the computer itself or its interfaces under the influence of the program and could, for example, affect the efficiency or security of a process, the management of computer resources required or the rate of data transfer in a communication link. A computer program implementing a mathematical method that itself makes a technical contribution (see G‑II, 3.3) would also be considered to be capable of bringing about a further technical effect when it is run on a computer.
Whether a computer program can contribute to the technical character of the claimed subject-matter is frequently an issue separate and distinct from the technical character of the hardware components which may be defined in order to execute the computer program. When a computer program produces a further technical effect (T 1173/97), it is by itself considered technical and not excluded. In contrast, any claimed subject-matter defining or using technical means is an invention within the meaning of Art. 52(1) (see T 424/03 and T 258/03, and confirmed in G 3/08). This applies even if the technical means are commonly known; for example, the inclusion of a computer, a computer network, a readable medium carrying a program, etc. in a claim lends technical character to the claimed subject-matter.
If claimed subject-matter relating to a computer program does not have a technical character, it should be rejected under Art. 52(2) and Art. 52(3). If the subject-matter passes this test for technicality, the examiner should then proceeds to the questions of novelty and inventive step (see G-VI and G-VII).
In order to have a technical character, and thus not be excluded from patentability, a computer program must produce a "further technical effect" when run on a computer. A "further technical effect" is a technical effect going beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it is run. The normal physical effects of the execution of a program, e.g. the circulation of electrical currents in the computer, are not in themselves sufficient to confer technical character to a computer program (T 1173/97 and G 3/08).
Examples of further technical effects which confer technical character to a computer program are the control of a technical process or of the internal functioning of the computer itself or its interfaces (see G‑II, 3.6.1).
The presence of a further technical effect is assessed without reference to the prior art. It follows that the mere fact that a computer program serving a non-technical purpose requires less computing time than a prior-art program serving the same non-technical purpose, does not on its own establish the presence of a further technical effect (T 1227/05, T 1784/06, T 1370/11). Likewise, comparing a computer program with how a human being would perform the same task is not a suitable basis for assessing if the computer program has a technical character (T 1358/09).
A computer program cannot derive a technical character from the mere fact that it has been designed such that it can be automatically performed by a computer. "Further technical considerations" going beyond merely finding a computer algorithm to perform a task are needed. They have to be reflected in claimed features that cause a further technical effect (G 3/08).
If a claim is directed to a computer program which does not have a technical character, it is objected to under Art. 52(2)(c) and (3). If it passes the test for having technical character, the examiner then proceeds to the questions of novelty and inventive step (see G-VI and G-VII, in particular G-VII, 5.4).
"Computer-implemented invention" is an expression intended to cover claims which involve computers, computer networks or other programmable apparatus wherein at least one feature is realised by means of a computer program. Claims directed to computer-implemented inventions may take the forms described in F-IV, 3.9 and sub-sections.
A computer program and a corresponding computer-implemented method are distinct from each other. The former refers to a sequence of computer-executable instructions specifying a method while the latter refers to a method being actually performed on a computer.
Claims directed to a computer-implemented method, a computer-readable storage medium or a device cannot be objected to under Art. 52(2) and (3) as any method involving the use of technical means (e.g. a computer) and any technical means itself (e.g. a computer or a computer-readable storage medium) have technical character and thus represent inventions in the sense of Art. 52(1) (T 258/03, T 424/03, G 3/08).