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No.1
April 2008
International Association for the Protection of Intellectual Property
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Computer Implemented Inventions under the European Patent Convention and Practice in Japan
Michele Baccelli, European Patent Office and Prof. Mitsuyoshi Hiratsuka; Tokyo, Japan

1. Introduction
In our everyday life we are surrounded by a myriad of products comprising highly complicated components and we come in touch, often without realizing it, with the results or effects of a process resulting from the functioning of said products.

Users undoubtedly benefit from the advantages these products and their functioning bring in many fields of applications, like new way of communications, new way of handling information for providing new services, increased safety and comfort in vehicles, more advanced and effective medical applications, just to name a few examples. As one can imagine, benefits and advantages may have a more concrete nature, like increased comfort in a vehicle, or a less tangible nature, as provided for instance by new services in the field of information technology.

The progress in many areas of technology is surely linked to the high level of penetration of digital electronic components and to huge investments in the development of applications that exploit the power of electronics in order to produce advantageous effects. Such development of applications led to many new inventions implemented through software, i.e. through computer programs, resulting in increasing filing of patent applications seeking protection for the investments incurred during said development. However, the patenting of software has been a subject of debate due to concerns, related for instance to the effect of patents on technological progress, or due to other implications as outlined in the following.

The discussions in Europe and Japan have been more alive than in other countries, due to some peculiar provisions specific to inventions implemented through software. Said legal specifications combined with a not yet fully established case law (one should also acknowledge that the field is relatively young, al least when compared to mechanics, electricity or chemistry) contributed to the creation of a wrong perception, especially in Europe, that inventions implemented through software are completely excluded from patentability.

The same perception did not apply to the US, since the legal system in force there does not comprise any limiting clauses. It can be anticipated that under both the European and Japanese legal frames, patentability of computer implemented inventions is nowadays acknowledged. The exclusion applies only to certain specific areas, like business methods, which marks a clear line of difference with the US system where said inventions are not a priori excluded from patentability.

The present contribution tries to outline the current practice in the light of the now well established case law with a more detailed focus on the European system, where the debate has been more animate and sharper.

It is interesting to notice that the criteria of patentability of software inventions in Europe and Japan lead to results (i.e. patentable inventions) that are strikingly similar, when considering that said results stem from rather different legal provisions and principles.

2. The debate about computer programs in Europe: origin, economic considerations and policy
The debate about computer implemented inventions (in the following abbreviated to CII) can find the origin in the provisions of the European Patent Convention (EPC) as formulated in 1973, wherein Article 52(2) and (3) EPC state that patent protection should be excluded for computer programs as such.

Recognizing that the wording of the Convention is not self explanatory, in the following paragraphs a correct interpretation will be presented showing under which conditions patent protection for computer programs is indeed possible.

However, from a mere reading of Article 52 alone (i.e. without taking into account the case law) it could be incorrectly inferred that patent protection for computer programs is not allowed under the EPC. Such interpretation, combined with different practices at national level and with the initial lack of well developed case law and experience in the new field of technology, favored the growth of a debate across Europe regarding the patentability of computer implemented inventions.

Critics of computer patents often argue that patenting in this field hinders true technical progress, thus reducing the corresponding economical benefit, and that the monopoly resulting from patents is not justified in view of the allegedly low costs needed for developing computer programs. Following the arguments of this criticism, computer programs are abstract in nature and the costs necessary for their development are very low compared to other industries, since everything one needs is a computer and a network connection for co-operating with other programmers, willing to put their time and expertise available for different reasons and purposes [1]. The presence of patents would thwart the development of bigger software projects, which are instead based on re-use of already developed and tested software modules, according to further concerns of computer patents opponents.

The above reasoning seems founded when limiting the examples to pure abstract ideas, especially when those are already known or obvious and the computer implementation results in a mere automation. Such reasoning, however, neglects that achieving a technical effect may require an intensive development (and the corresponding sometimes under estimated costs, deriving from needed infrastructure and compensation for a team of highly qualified professionals) which culminates in the implementation in a computer code, wherein the computer code is often only one possible way of achieving the effect among different alternatives. It is in fact common technical knowledge that a certain technical effect can be achieved interchangeably by hardware implementation, when the speed of calculation and reliability are at stake, by software, when flexibility is more important, or by a combination of both. [1] further presents an analysis of the different business models followed in the software industry and tries to summarize the impact that software patents have on the business development and on the possible restriction of competition in the software industry. While recognizing that no such comprehensive study has been made — which would anyway be quite difficult to make in an objective and realistic way — the authors seem to conclude that "it does not seem that they" (i.e. software patents) "have had visible negative effects on the industry as a whole, nor has a positive effect being demonstrated" [1].

The debate has been also kept alive by the fact that at national level there is not yet a high degree of harmonization among the member states of the EPC [2].

The controversy was also brought before the European Parliament that was called to decide on a Proposal for a European Directive on the Patentability of CII, with the supporters of software patents hoping to establish a common policy for the industry and uniformity among member states and the opponents wishing to keep the status quo. Since such discussions do not bear any consequences on the EPC [3,4], the topic will not be further discussed herein being it outside the scope and focus of the present contribution, while reference is rather made to other literature [see, for instance, 5,6,7].

2.1. The exclusion of computer programs as such: the intention of the initial drafters and the review of the EPC 2000
Some studies on the Travaux Preparatoires [8] have been done trying to bring to light what was the intention of the drafters of the Articles. Although an exclusion of computer programs was not envisaged in the initial negotiation, it was then proposed with support of different delegations. Discussions followed with the aim of reaching an agreement about how to word and define the limitation to patentability so that this could be clearly applied.

From the analysis done by J. Pila [9] the reader may form the opinion that there was no concrete unanimity at that time about to which extent said exclusion should be made in view of the new field of technology.

When trying to clarify the restrictive interpretation of the terms computer program, the delegations could in fact not find a common agreement and reached the conclusion that the EPO would "simply have to be relied upon ... to interpret this expression unequivocally" [10].

One could conclude that, although the drafters of the EPC intended to exclude computer programs, they did not agree to exclude them entirely from patentability but only under certain circumstances. The Board of Appeal (hereinafter abbreviated to BoA) summarized the intention of the drafters in T0935/97 [11]:
"the combination of the two provisions (Article 52(2) and (3) EPC) demonstrates 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 are excluded from patentability means that patentability may be allowed for patent applications relating to programs for computers where the latter are not considered to be programs for computers as such".

The above is further confirmed by the Board in case T154/04 [12]:
"the application of Article 52(1) EPC presents a problem of construction as there was not a legal or commonly accepted definition of the term "invention" at the time of conclusion of the Convention in 1973". The Board further specified that exclusions shall be interpreted narrowly, in line with a general principle expressed by the Enlarged Board of Appeal [13] and as it can be inferred from the Travaux Preparatoires [14].

The reliance on the EPO for interpreting and correctly delimiting the scope of an invention was also confirmed more recently during the preparatory work leading to the revision of the EPC. In fact, the Basic Proposal [15 pg. 43, par. 4] explicitly states that "it will remain incumbent on Office practice and case law to determine whether subject-matter claimed as an invention has a technical character and to further develop the concept of invention in an appropriate manner, in light of technical developments and the state of knowledge at the time".

From the above analysis it is legitimate to conclude that, when interpreting the exclusion of computer programs, reliance must be placed on the Board of Appeal of the EPO, which is the only legally competent body entrusted for the revision of decisions taken in the first instance and for the interpretation of the EPC (consequence of Art. 22 EPC).

3. Computer Implemented Inventions: definition and legal provisions
Rather than relying on the vague expression of "software patents", it appears appropriate to first define what a computer implemented invention is: it is an invention whose implementation involves the use of a computer, computer network or other programmable apparatus, the invention having one or more features which are realized wholly or partly by means of a computer program [16].

It should be anticipated at this point that claims to a method or to an apparatus can be also a form of CII, since the skilled person would recognize that certain steps of a method or certain features of an apparatus can be realized either by hardware means or by a computer program.

The assessment whether a claim is excluded or not should therefore be made for all types or claims, whether they relate to an activity or an entity. Special attention shall then be paid to claims directed to a computer program, signals or data structure, since it is often the applicant's interest to have protection also for other types of claim in order to more easily enforce the patent. The following of the present contribution will try to give guidance for assessing said points in the light of the BoA decisions and practice at the EPO.

3.1. Program listings are not CII protected by patents
A CII is distinguished from the listing of a computer program, i.e. the source code, which is not the subject of patent protection and is neither required nor necessary for the disclosure of the invention. With reference to the subject of patent protection, claims shall not contain program listings but shall instead comprise all the essential features necessary for defining the invention and for assuring its patentability (GL C-IV, 2.3.6; The EPO Guidelines are abbreviated with the acronym GL).

In those cases, as it will be illustrated later, where patentability depends on a technical effect, the independent claims shall clearly define all the technical features which are necessary for achieving the technical effect.

With reference to the disclosure of the invention [17], it is noted that the patent application should not rely on the program listing in a programming language as the sole disclosure of the invention. As in other fields of technology, instead, "the description ... should be written substantially in normal language, possibly accompanied by flow diagrams or other aids so that the invention can be understood by those skilled in the art who are deemed not to be programming specialists" (GL C-II, 4.15). Shorts excerpts from a source code can be accepted if they help to clearly illustrate an embodiment of the invention.

A CII is therefore to be regarded as an invention which can be embodied in a computer program, while a listing is an embodiment of the idea, the listing corresponding to the act of programming underlying the idea of the invention. Program listings should be protected not under a patent application but with a more appropriate form of protection, e.g. copyright.

3.2. Legal Provisions relevant to CII
The basic requirements for patentability, as already mentioned in the introductory part, are set out in Article 52(1) EPC:
"European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application" [18].

Out of the four listed basic requirements, the first (implicit) consists in that a patent should be directed to an invention. However, the Convention does not provide a definition of an invention in positive terms, rather it defines through exclusions what shall not be regarded as such. Article 52(2) EPC states:
"The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers".
(d) presentations of information".

Article 52(3) EPC further provides that the exclusion under paragraph (2) is not to be built in absolute terms, rather it should be applied only to "patent applications or patents that relate to said subject matter or activities as such".

Article 52 therefore excludes the inventions in the fields listed in paragraph (2), however provides that said restrictions to patentability should be narrowed to certain circumstances ("as such").

As already noted above in paragraph 2.1, it can be considered that the legislator intended to restrict the limitation to certain circumstances, however these are not directly following from the wording of the EPC.

Two main issues can be noticed, one related to the definition of invention and the other to the restriction of the exclusion of inventions from patentability (i.e. the meaning of "as such").

For what concerns the definition of invention, although the EPC does not provide a positive definition, it can be inferred from Rules 42 and 43 EPC one of its characteristics, namely that it must possess a technical character.

Rule 42(1) EPC [19] states that a description of a European patent application shall:
- "specify the technical field to which the invention relates" [Rule 42(1)(a)]
- "disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention" [Rule 42(1)(c)].

It is interesting to note the explicit reference between the invention as described and the invention as claimed: both the description and the claims need to have a technical character.

The required technical character of a claim is reinforced by Rule 43(1) EPC [20], which clearly specifies that the "claims shall define the matter for which protection is sought in terms of the technical features of the invention".

The technicality of an invention can also be inferred from another basic requirement of patentability, that of inventive step as outlined in Article 56 EPC.

The English text of the Article states that "an invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art". Following the reasoning in T641/00 [21], it is noted that the equally authentic German and French texts [22] are more detailed in that they specify that an invention implies an inventive step when "it cannot be derived in an obvious matter from the state of the technology". The additional information consists in that the state of the art is that of technology and not, for instance, that of abstract ideas, theories or business schemes.

Reference to the above provisions and to the requirement of technical character has been made constantly in the case law and is also incorporated in the Guidelines [23].

The requirement of technicality, furthermore, can also be linked to the second issue cited above, namely how to interpret the restriction "as such". In fact, the technical character of an invention is key to distinguish inventions that are patentable from inventions that are, for instance, mere abstract representations. This will become clearer from the analysis of the following paragraphs.

4. Assessing the technical character of an invention: some key decisions of the EPO Board of Appeal
Despite the lack of definition for an invention in positive terms, the EPC gives some guidance by introducing the technical character, as above introduced.

However, the problem is shifted from understanding what an invention is to establish when a technical character or a technical effect is present. Although the problem has been somehow confined to a narrower area, there is still a lack of guidance in the EPC provisions which does not allow providing a general definition that could then be systematically applied when judging the patentability of a claim. The way out is to make reference to some key decisions of the EPO Board of Appeal, where the issues of patentability of computer programs have already been considered and judged [24]. The decisions of the BoA are binding only on the individual case upon which the BoA has decided [25]. However, "in general there will be good reasons for the department of first instance to follow the decisions of the boards of appeal, in order to maintain a consistent practice and to avoid unnecessary appeals" [26].

For this reason, it is believed that the following decisions, although not binding on similar cases, are a good guidance for assessing the patentability of CII.

4.1. The underlying problem has a technical character: the VICOM case
The decision T208/84 VICOM is often regarded as a milestone decision for assessing technicality of an invention. The decision is particularly interesting, since it presents two faces: the claims as refused by the examining division, representing an abstract invention, and those as amended during the appeal, which are deemed by the board as relating to a technical process and apparatus and thus patentable.

Method claim 1, as initially refused by the Examining Division, is directed to "a method of digitally filtering a two-dimensional data array having elements arranged in rows and columns". The claim further defines steps that are worded using mathematical expressions (for instance, applying the convolution to a data array).

As the reader recognizes, there are two problems leading to the abstract nature of the claim in question: the fact that the claim itself is directed to a "method of digitally filtering data" and the use of mathematical expressions.

The Board argues that such a "method for digitally filtering data remains an abstract notion not distinguished from a mathematical method so long as it is not specified what physical entity is represented by the data". Under these circumstances, the Board concludes that such a method is not susceptible of industrial application since the process is not technical but abstract. During the appeal proceedings the applicant submitted amended claims, where the only amendment to claim 1 reads as follows: "a method of digitally filtering images in the form of a two dimensional data array".

Such formulation, according to the Board, is susceptible of industrial application since a "method for obtaining and/or reproducing an image of a physical object or even an image of a simulated object (as in CAS/CAM) may be used e.g. in investigating properties of the object or designing an industrial article" [27 r. 3].

The Board sets out a fundamental difference between a mathematical method as initially claimed and a technical process as defined in the amended claims.

A mathematical method or algorithm operates on numbers providing results in a numerical form by the use of abstract concepts, represented by the algorithm, prescribing how to operate on the given numbers to produce the results. Such a method remains abstract in nature [27 r. 5].

A technical process, instead, is "carried out on a physical entity by some technical means implementing the method and provides as a result a certain change in that entity". The Board underlines that the physical entity can "be a material object but equally an image stored as an electric signal" [27 r. 5]. This is key to differentiate the technical process from an abstract method working on numbers, "whatever these numbers may represent".

The problem related to the definition of the method itself has been solved therefore by amendment.

Regarding the second issue, namely the use of mathematical expressions in the claim, the Board deemed admissible the wording of method steps by using mathematical expressions if the skilled person can understand the technical means necessary for carrying out the functions specified by said features. It appears that the Board endorses the argument of the appellant, namely that it is "entirely conventional to define filters in terms of mathematical operations" since the skilled person will be able to "reduce a mathematically specified filter to its circuit form". With regard to this point, one could add that implementing a filter through circuits or through hardware properly controlled by a computer program is also a matter of normal design for the skilled person.

The application further defines a claim directed to "an apparatus for carrying out the method in claim 1" comprising features of a computer apparatus necessary for carrying out the method. The Board states that such a claim is not a computer program as such as provided in Art. 52(2) and (3) EPC, since protection is sought for a device, i.e. a computer, "set up to operate in accordance with a specified program for controlling or carrying out a technical process".

The Board underlined that the implementations by means of hardware or software are regarded as different embodiments of the same invention, wherein the choice between the two possibilities (or by combining the two possibilities, one could also add) "is not of an essential nature but is based on technical and economical considerations which bear no relationship to the invention as such" [27 r. 16].

The Board stands on the point that inventions regarded as patentable under conventional patentability criteria should not be excluded for the mere fact that the same invention is implemented with modern means, like provided by a computer program.

The Board found illogical granting protection for a method carrying out a technical process but not for the suitably programmed computer when set up to carry out the same technical process [27 r. 16]. The Board therefore allowed both types of claims directed to a CII claimed as a method and as an apparatus, the apparatus being easily identified as a computer executing the steps of the corresponding method.

The teaching of this decision could be summarized in that a claim to a computer program directed to the mere mathematical calculation on numbers would not be patentable, in line with the above reasoning. On the contrary, a claim directed to a "technical process which process is carried out under the control of a program (whether by means of hardware or software)" or "a claim which can be considered as being directed to a computer set up to operate in accordance with a specified program (whether by means of hardware or software) for controlling or carrying out a technical process cannot be regarded as relating to a computer program as such" [27 hn II and III], i.e. such type of claims are patentable under the EPC.

4.2. Technical features and means for carrying out a method having a technical character
The case T110/90 [28] is interesting since it can give guidance for distinguishing subject matter of an abstract nature from one that possesses technical nature.

The claims as refused by the examining division were directed to a method "for transforming a source document cast in a first editable form which includes a plurality of input items therein, to a target document of a second form, comprising output items", further defining steps operating on said input and output items.

The application was refused on the basis that the method claim could also be exclusively executed mentally by a human being, e.g. a system designer, eventually with the use of appropriate decision tables. In response to doubts of the BoA concerning the patentability of claim 1 on file or a similar claim [28 summary of facts, III], the appellant amended claim 1 by specifying a "method of transforming text which is represented in the form of digital data", comprising a step of "digitally processing the text" by a series of further sub-steps substantially reflecting the wording of the original refused claim. The amendments limit the subject matter in that the claim can now "only be understood as meaning data in the form of digital electrical signals (bits and bytes)", wherein the "data in this form are processed by the processor of a computer system" [28 r. 4 "the mental acts issue"].

A further amendment related to the limitation introduced by the terms "input or output control items", replacing the original terms "input and output items". According to the Board, the terms can now not be interpreted as text items but "must be understood as acting on items of hardware such as a printer" [28 r. 4].

As a result, the amended method claim cannot be anymore "interpreted as being susceptible of being carried out exclusively by mental acts".

On this basis the Board concludes that "control items (e.g. printer control signals) included in a text which is represented in the form of digital data ... are characteristic for the technical, internal working of the system". Furthermore, "the problem to be faced is that the form of the data representing these control items is different in the source and target documents". The presence of technical features, the control items, for solving a technical problem provides the method claim with technical character [28 r. 4].

The Board further analyzed the issue of the method claim when implemented on a general purpose computer.

The Board stated that the method claimed made a contribution to the art which is not merely a matter of programming but is basically technical. "The steps of that method represent rather the algorithm on which the computer program is based than a computer program as such and the program must be considered to be the technical means for carrying out the (technical) method".

The Board concluded that, for the above reason, the method claim does not relate to a computer program as such [28 r. 5].

The crucial point of the decision lies therefore in that claims are not excluded from patentability when they define technical means for solving a technical problem.

4.3. Technical considerations: the SOHEI decision
One more interesting criterion for assessing the technical content of an invention was set out in T769/92 [29].

The appellant's claim 1 is directed to "a computer system for plural types of independent management including at least financial and inventory management", further defining different types of files and processing operations performed on data comprised in said files in order to produce output data to be visualized.

The financial and inventory management of claim 1, when taken alone, could be regarded as falling under the activity of business methods excluded, when claimed as such, from patentability under Article 52(2)(c) and (3) EPC.

However, it is not central to the invention the nature of the kind of management information or the type of data processed (e.g. debit, credit and commodity items), rather the fact that the system deals with different type of management to be performed [29 r. 3.5]. An effect of the invention consists in that "the system allows data necessary for one type of processing ... and data necessary for another type of processing to be performed independently ... to be input using a single, common form ... displayed to the user".

The single form of displaying claimed is regarded not as a mere representation of information since the Board acknowledges that a user interface requires technical considerations of the person implementing the invention [29 r. 3.7].

The Board referred to the principle of technical consideration also in r. 3.3, wherein it is stated that "the non-exclusion from patentability also applies to inventions, where technical considerations are to be made concerning the particulars of their implementations. The very need for such technical considerations implies the occurrence of a (at least implicit) technical problem to be solved (Rule 42 EPC) and a (at least implicit) technical feature (Rule 43 EPC) solving that technical problem" [29 r. 3.3].

The principal of "technical considerations" needed for solving a technical problem forms a further guidance point when assessing patentability of a claim.

4.4. Computer program claims: trying to set the minimum threshold of technical character
The previous milestone decisions provide some guidelines for assessing the technical character of an invention. One question however still remains unsolved, namely what are the minimal requirements an invention shall have for being considered as having a technical character.

The Board in decision T258/03 [30 r. 4] reasons that the contribution approach is not an appropriate way for determining the technical content of a claim [31] and that the degree of banality of the technical features of a claim are not a criterion for deciding whether the claim has technical character or not. The Board gives a relatively wide understanding of the term invention, by specifying that said term shall include also "activities which are so familiar that their technical character tends to be overlooked, such as the act of writing using pen and paper".

Such a broad interpretation may lead to the (in the opinion of the authors, inappropriate and rash) conclusion that the mere use of a computer, certainly technically "more advanced" than standard pen and paper, would then render an otherwise abstract claim patentable thus escaping the exclusion of Article 52(2) and (3) EPC.

It should however be pointed out that the Board in T258/03 was deciding upon a claim wherein the technical features were not limited to only a standard computer but included at least a server and clients. The difference is rather relevant, since a computer as such is excluded from patentability, while a server inter-relating with clients, although nowadays regarded as a trivial technical feature, is not excluded from patentability (as also pen and paper). When focusing on the matter decided by the Board, therefore, it should be avoided to extrapolate and depart from the subject matter under Appeal.

A first answer to the question is given in T692/92 [29], where it is stated that: "if, for instance, a non-patentable (e.g. mathematical, mental or business) method is implemented by running a program on a general purpose computer, the fact alone that the computer consists of hardware does not render the method patentable if said hardware is purely conventional and no technical contribution to that (computer) art is made by the implementation".

The reasoning of T769/92 emphasizes a principle the Board had previously outlined in T110/90, namely that "the mere fact that a method for performing mental acts as such, as normally excluded from patentability under Art. 52(2) and (3), is carried out by a suitably programmed computer, generally speaking, does not make that method a technical method" [T110/90, r. 4]. It is worth noting that the same consideration was upheld in later decision T931/95, r. 3. In the authors' view, such interpretation of technical character seems more reliable and more consistent throughout the Board's decisions than the broader interpretation that one could infer from the reasoning of T258/03.

The more recent decision T1227/05 [32], supporting this conclusion, refers to T258/03 when stating that computer implemented claims may have a technical character [r. 3]. At the same time, however, the Board explicitly applies the test of "further technical effect" from T1173/97 (see following paragraph) and concludes that the computer program of the claims subject of the Appeal have "the potential for a technical effect going beyond basic hardware/software interaction in a computer" [r. 3.3]. In practical terms, a computer program alone is patentable only if it passes the "further technical effect" test, even though when taken alone could be regarded as a technical feature.

Without such considerations, any subject matter would be rendered patentable by the mere introduction of one trivial technical feature referring to a computer implicitly or explicitly.

4.5. Computer program claims and the further technical effect: T1173/97
The narrower interpretation of technical content of an invention discussed in the previous paragraph is in line with the milestone decision T1173/97 [33], which defines a more reliable test for assessing patentability of a CII: if a claimed invention shows a further technical effect which is achieved through the claimed features, then the test of exclusion of patentability is positively passed.

The patent application subject of the appeal comprised multiple independent claims, one directed to a method (claim 1), one to a computer system (claim 14) and two to a computer program product (claims 20 and 21).

Claim 20 defined a computer program product "comprising software code portions for performing the steps of claim 1". Said claim, often referred to as of the short form type, did not define all the list of features making up the computer program product but relied on reference to a method claim. Claim 21, instead, is directed to a computer program product explicitly defining all the program means corresponding to the steps of method claim 1.

The decision of the Examining Division acknowledged the patentability of claims 1 to 19 (i.e. to all claims directed to a method or a system). However, the patent was refused on grounds that claims 20 and 21 were directed to a computer program as such.

The guidelines in force at that time supported such conclusion of the Examining Division.

The decision is particularly interesting since its scope is directly and only linked to the admissibility of claims directed to a computer program.

The Board makes reference to the provision already discussed above and supported the requirement that an invention shall have technical character.

The problem is, however, how to interpret "technical character" with specific reference to programs for computers.

One could argue that a computer program possesses technical character since computer instructions cause modifications in the hardware (for instance, electrical currents flowing in the circuits in response to a given software instruction).

However, the Board notes that such reasoning is not correct since said effect is a common feature to all computer programs, regardless of the kind of application or invention they are implementing, and therefore cannot be used to distinguish program for computers with a technical character from program for computers as such.

The way out to this problem is summarized by the Board according to the following:
"the technical character [of a computer program] could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program. When said further effects have a technical character of where they cause the software to solve a technical problem, an invention which brings about such an effect may be considered an invention which can, in principle, be the subject-matter of a patent".

Such conclusion is also in agreement with the case law, as reviewed in T1173/97 r. 7, since "to the Board's knowledge, there are no decisions in which a board of appeal has attributed a technical character to a computer program for the sole reason that the program is used in an apparatus, namely a computer".

One should also note that the computer program product itself does not disclose the (further technical) effect in physical reality. It only discloses the effect when being run and consequently only possess the potential to produce said effect.

The Board concludes that computer program products having the potential to provide a further technical effect in the above sense are not in principle excluded from patentability and thus the claims should be allowed under Article 52(2) and (3).

It is worth noting that the claims at issue are directed to a "computer program product". However, the same reasoning could be applied to a claim directed to a computer program, as it appears from the fact that the Board often referred to "computer programs", see also the last paragraph of r. 13. The same is supported by the guidelines for examination, from where it appears that claims directed to computer programs are allowable under Article 52(2) and (3) when they present a further technical effect.

5. Scheme for examining patentability
In the VICOM case it was clarified that all the steps and features were indeed technical.

More often, however, claims result from a combination or mixture of technical and non technical features.

An examination scheme had to be developed in order to properly assess the patentability of such claimed inventions.

5.1. Overcoming the old contribution approach
When dealing with claims comprising a mixture of technical and non technical features or steps, the initial positions of the BoA followed the so called contribution approach, based on the reasoning that "the invention has a technical character if it provides a contribution to the state of the art in a field not excluded from patentability under Art. 52(2) EPC" [34 p. 1].

Such approach was followed in several decisions of the Board (see, for instance, T121/85, T38/86, T603/89, T77/92 [34 p. 1]) and implied that first the prior art needed to be assessed, then the contribution the invention makes over the prior art can be established and finally it can be judged, based on said contribution, whether the subject matter of the invention under examination is to be excluded under Art. 52(2) and (3).

However, later decisions when confronted with the same question did not follow the contribution approach providing reasons as to why this is not appropriate.

In decision T931/95 [35] the Board stated that there is no basis in the EPC for distinguishing between new and known features when assessing whether the invention complies with Art. 52 EPC, rather all features of the claim, known and unknown, should be examined in their entirety for the purpose of Art. 52(1) EPC [35 hn IV]. The decision refers and confirms a position already taken by the Board in cases T1173/97 [33] and T935/97.

Following these lines, the Board in case T1173/97 [33 r. 8] underlines that "determining the technical contribution an invention achieves with respect to the prior art is therefore more appropriate for the purpose of examining novelty and inventive step than for deciding on possible exclusion under Article 52(2) and (3)".

The outlined positions were confirmed by the Board in several other decisions, including also more recent ones. In T258/03 [30 r. 3.1], for instance, it is again underlined that assessing an invention with respect to Article 52(2) and (3) should be done "without any knowledge of the state of the art".

The Guidelines, as final confirmation of the present status, do not reflect the contribution approach [36].

It is reasonable to conclude that the contribution approach is not regarded as the appropriate way to assess whether a claim complies with Article 52 EPC and that all features of a claim should instead be considered for that purpose.

One possible consequence of the denial of the contribution approach is that claims comprising at least one technical feature related to a computer could not be objected to under Article 52(2) and (3) EPC. However, in the light of the discussion from the previous paragraphs, it should be clear how to treat these cases [see par. 4.4, 4.5].

5.2. Inventions comprising mixture of technical and non technical features
Decision T641/00 [37] is one of the latest decisions formulating in a more systematic way an examination approach to be applied when assessing mixed inventions comprising a mixture of technical and non technical features.

Making reference to the interpretation of an invention and as to its technical character, the Board reaches the main conclusion that "an invention consisting of a mixture of technical and non technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step" [37 hn I].

One central point in the application of the problem solution approach is that the problem must be a technical problem as actually solved by the solution claimed taking into account all the claimed features. The Board then details that "where a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect it has no significance for the purpose of assessing inventive step" [37 r. 6].

Such statement is a fundamental help in the assessment of a claim, since it defines a more specific and easy to assess method for the examination of a claim.

Such approach is also reflected in the Guidelines for Examination: where the invention lacks a technical character, then it should be rejected under Article 52(2) and (3) [38].

When examining CII, however, "it may be more appropriate to proceed directly to the questions of novelty and inventive step" [GL C-IV, 2.3.6].

5.3. Summary of the Examination Scheme at the EPO
Bearing in mind the principles set out in the EPC and the interpretation of the BoA of the EPO, a scheme can be made presenting a more systematic approach for assessing the patentability of a claim, which can turn helpful to applicants when drafting or amending claims directed to computer implemented inventions. The following scheme reflects that presented in the Guidelines for Examination [GL C-IV, 2.3.6] and that more recently published in the EPO Official Journal [39].

The first step to perform consists in assessing the technical character of an invention a priori, i.e. without taking the prior art into account but examining the claims as a whole. If the claim as a whole does not define any technical feature, e.g. it defines a pure abstract mental activity, then the claim will likely fail to meet the requirements of Article 52(2) and (3) EPC [37, see also the paragraph 5.2 above].

In most of the cases, however, a claim will present a combination of technical and apparently non technical features. Therefore, it is advisable to identify all those features or activities that, when taken alone, would fall in one of the categories listed in Article 52(2) EPC. These identified features or activities are the apparently non technical aspects of the claim. The next step consists in deciding, on a case by case basis and making reference to the entire content of the application, whether the apparently non technical aspects are purely non-technical or not purely non-technical.

The previous paragraphs and references to relevant decisions provide an important support when making such judgment. Therefore, an apparently non-technical aspect may be regarded as not purely non-technical if, for example, is capable of causing a change in the physical nature or technical functioning of the clearly technical aspects of the same claim (keeping in mind that where the only clearly technical aspect is a standard computer, the "special technical effect" test should be answered positively) or if it implies that technical considerations are requested for carrying out the invention [29].

When it is determined that the apparently non technical aspects are not purely non-technical, then it may be concluded that all aspects of the claim contribute to a technical solution or provide a technical effect. The examination should thus proceed to the assessment of novelty and inventive step of the whole claim. If it is concluded that the apparently non technical aspects are indeed purely non-technical, it follows that those aspects do not contribute to the technical character of the subject matter. In most cases such features or activities constitute solutions to problems in non technical fields, e.g. problems in business administration. The examination should thus proceed to the assessment of novelty and inventive step of the subject matter remaining after stripping off all the purely non-technical features. However, the "purely non-technical aspects which define an aim to be achieved in a non-technical field and which therefore do not contribute to the technical character of a disclosed invention, may appear in the formulation of the technical problem in the form of a requirements specification provided to the person skilled in a technical field as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met" [39 with particular reference to T 641/00, OJ EPO 2003, 352; T 1053/98].

5.4. Excluded subject matter and the European Search Report
Special care should be directed to claim drafting, since if the subject matter is not allowable under Article 52(2) and (3) EPC, the application may also result in a no search [40]. As a consequence, non searched subject matter cannot be examined and shall be removed from the patent application. The applicant has however the possibility to amend the non-searched claims in order to overcome the deficiencies that led to a non meaningful search. If the examining division is of the opinion that the initial deficiencies have been corrected by amendment or by convincing arguments provided by the applicant, it still can perform an additional search which may result in new prior art relevant for the claimed subject matter [41]. Since amendments shall be based on the application as originally filed [Article 123(2) EPC], it is very important to ensure that the technical character of the invention is clearly disclosed in the application documents as originally filed.

If uncertainties during patent prosecution are to be avoided and a speedy prosecution of the patent is desired, it is crucial to draft claims supported by the description, wherein the technical character in the sense discussed above is evident.

If such technical content or application is not disclosed in the patent application, it would be difficult to argue in favor of patentability of the subject matter in question and a refusal of the patent application may be quite likely.

6. Type of claims
A CII, as already outlined, can be claimed in different forms, for instance as method or apparatus, wherein the skilled person would recognize that the method or apparatus could be realized by means of a computer program.

Patent applicants started submitting claims directed not only to a method or an apparatus, but also in other forms in order to more easily enforce the rights against alleged infringers. In fact, if more independent claims in different forms are present it could be easier to demonstrate a direct infringement by a third party. However, under the EPC the number of independent claims should be limited to one per category, thus limiting the possibility of applicants.

In the following, an overview of the possible different forms of claims will be presented having in mind the requirement of conciseness under the EPC.

6.1. CII claimed as method or apparatus
Examination of method and apparatus claims should be carried out in the same way and treated without any difference.

This statement is not superfluous, since the Board in T931/95 [35] and the old Guidelines as published in 2005 make a distinction as to the examination scheme to be adopted for the two types of claims. The Board in [35] stated that "a feature of a method which concerns the use of technical means for a purely non-technical purpose and/or for processing purely non-technical information does not necessarily confer a technical character to such a method" [35 hn II], while "an apparatus constituting a physical entity or concrete product, suitable for performing or supporting an economic activity, is an invention within the meaning of Article 52(1) EPC" [35 hn III]. The Guidelines as published in 2005 [GL, C IV-2.3.6] corresponding to the EPC 1973 support the view of T931/95 and seem to distinguish between the examination of method and apparatus claims, in that an apparatus claim is not excluded by Article 52(2) and (3) by the mere introduction of a standard computer, while the same rule seems not to apply to a method. The old Guidelines state in fact that "a computer system suitably programmed for use in a particular field, even if that is, for example, the field of business and economy, has the character of a concrete apparatus, in the sense of a physical entity or product, and thus is an invention within the meaning of Art. 52(1)".

Under such broad interpretation, it appears possible to escape the exclusion of patentability by the mere introduction of trivial computer features thus obtaining at least a patentable apparatus claim.

However, in the light of the above discussions, it should be clear that such circumvention is not in line with other more systematic approach of the BoA. This is supported also by later decisions of the Board, like in [30 hn I; r. 4], where it concluded that the reasoning applied to mixed inventions is independent from the category of the claim.

Finally, the Guidelines from 2007 [GL, C IV-2.3.6] do not comprise anymore the reference to T931/95 and follow instead the examination approach as in T258/03.

Thus, it can be reasonably concluded that method and apparatus claims should be equally treated during examination.

6.2. CII claimed as computer program
As already outlined above [see par 4.5 and decision 33] a claim directed to a "computer program product" or "to a computer program" shall be allowed if the claimed inventions brings a further technical effect that goes beyond the normal functioning of a computer. There are two possible ways of formulating the claims, the so called long form and short form.

The long form consists in defining, following for instance the wording from [33], a "computer program product ..." further defining all the features corresponding to an allowable method or apparatus claim.

The short form consists in defining, following for instance the wording from [33], a "computer program product ..." further defining means adapted to perform all the steps or features as defined by an allowable method or apparatus claim. The short form is therefore formulated in a concise way by making reference to all the steps or features defined by another allowable claim.

The short form or the long form appear also to be both allowable, under the condition that they clearly define explicitly or by reference all the technical features necessary for obtaining the further technical effect in the meaning outlined in [33].

6.3. Signal and Data Structure claims
Inventions typically result in entity or activity being performed or located in one place, therefore patent infringement is regulated by the scope of patent protection and the legal framework valid in that place.

However, in fields like telecommunication, several co-operating entities are typically placed in different sites: a server may be operating in a first country, inter-related clients in a second country and the exchanged signals necessary for carrying out the invention can travel along further different countries. Enforcing a patent can be quite difficult, especially when the server is moved to a country where no patent is in force. Claiming the patent rights from several clients can be an expensive and lengthy procedure not necessarily leading to a fair compensation of damages, due to the multiplicity of alleged infringing clients each contributing only in small parts to the overall damage suffered by the patent owner.

Faced with this problem, patent applicants started submitting also claims to signals since in this way infringement can be claimed, for instance, also from the operator of the server that is producing the signal. In such a way the patent owner could charge the alleged infringer through direct infringement, thus enhancing his or her possibilities to enforce the rights.

When considering claims directed to signals a distinction should however be made, following the reasoning of [42], between signals merely carrying information and signals carrying information representing a technical system and bringing the technical effect of that system.

Following the Board, "a TV system solely characterized by the information per se, e.g. moving pictures, modulated upon a standard TV signal, may fall under the exclusion of Article 52(2)(d) and (3) EPC".

On the other hand, a TV signal complies with Article 52(2) and (3) when "the TV signal as claimed inherently comprises the technical features of the TV system in which it is being used and if it is considered to present information then it represents exactly that kind of information which exhibits the technical features of the system in which it occurs" [42 r. 2].

The Board further discusses whether signals should be generally considered as abstract representation, and concludes that "the TV signal as claimed would also not fall under this more general interpretation of the exclusions of Article 52(2) and (3) EPC, because it is a physical reality which can directly be detected by technological means and, therefore, cannot be considered as an abstract entity, despite its transient character".

The signal claim in question clearly exhibited technical means bringing a technical effect. Therefore, one could reasonably expect that the same reasoning applies to other type of signals, i.e. not only to TV signals, when said technical character is claimed or directly follows from the claim's formulation.

Another claim type sometimes chosen by applicants is that directed to a record carrier or a medium for recording information. The same distinction as with signals needs to be made here between record carrier or medium storing data for merely presenting information (e.g. pictures or films) and record carrier or medium storing information or data structure inherently comprising the technical feature of the system [43 hn I and II]. Therefore, such a type of claim comprising the technical character would also not be excluded from patentability under Article 52(2) and (3) EPC.

6.4. Conciseness of claims - Rule 43(2) EPC
When drafting claims the applicant should however limit the independent claims to the minimum strictly necessary number.

Rule 43(2) EPC (Rule 29(2) under the EPC 1973) in fact provides that a patent application shall normally comprise only one independent claim per category, wherein the given categories are listed as product, process, apparatus or use.

Rule 43(2) provides that in peculiar situations more than an independent claim in a given category may be allowed, if for instance two or more products are inter-related - like in the case of a server / client co-operating when carrying out the invention [Rule 43(2)(a) EPC].

The motivations behind the provision introduced in 2001 lay in a simplification and shortening of the time needed for examining the entire set of claims.

Two more exceptional situations are foreseen by the same provision, namely when the invention involves "different uses of a product or apparatus" or "alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim". If protection is desired not only for an apparatus but also for a computer program product and/or for a recorded medium, the applicant should ensure that the claims relate to inter-related products or to different solutions of the same invention.

A way to ensure the latter condition [Rule 43(2)(c)], for instance, it to define the program product as comprising all the technical feature of the corresponding apparatus claim, in the same way as a method claim defines all the steps corresponding to the features of the equivalent apparatus claim.

In order to reduce the burden of examination in line with the spirit of Rule 43(2) and to reduce the risk of objections from the examining division, the applicant is suggested to use the short formulation by making a clear reference to all the features defined in a corresponding method claim.

7. Software patent and innovation thereby promoted in Japan
7.1. Examination guidelines for computer software related invention
It is well known that the definition of an invention provided by the Patent Law in Japan is "a highly advanced creation of technical ideas by which a law of nature is utilized" (Article 2, paragraph 1). As to the computer software related invention, the guidelines for examination provide a test of whether or not the application filed after January 10, 2001 constitutes the above invention in law. More specifically, in the application, there is tested if information processing of software is realized in a concrete manner by use of hardware resources. Such a synergistic relationship between software and hardware is now construed as being equivalent to the utilization of a law of nature.

According to some theories in Japan, the above requirement for invention serves a function of discriminating inventions, based on the premise that the underlying purpose of the patent system consists in contribution to industrial development [44]. For example, a pure business method would not meet the requirement (of the synergistic relationship between software and hardware), that is, it might be developed only on the market principles, but might inhibit the industrial development when overprotected by the patent system. On the other hand, some software would meet the requirement, that is, it might promote the industrial development when protected by the patent system, but might hardly be developed only on the market principles.

In this manner, a pure business method or a pure mathematical method, for example, have been discriminated against on the basis of the above requirement for invention, prior to being examined on the basis of the requirement of patentability such as novelty or inventive step.

7.2. Keeping patent trolls away in Japan
In general, enforcement of software patent rights would have a large influence on a society. For this reason, a great care is now being taken by use of Article 2, paragraph 1 as a "discriminator" in order to avoid software application that might hinder innovation.

Especially in the information technology (IT) industry in Japan, some people are worried that patent trolls may become prominent with the aid of software patents of low quality or issued inappropriately just as is the case of the U.S. There are now indicated several factors that can keep patent trolls away in Japan [45]. At all events, it can be considered that it will be possible to keep patent trolls away from to some extent by adjusting the threshold of the above "discriminator".

Note that one of the factors behind the KSR decision is considered as being a problem of patent trolls in the U.S. [46]. It is expected that adjusting the threshold of non-obviousness will be able to serve as a deterrent against patent trolls to some extent in the U.S.

7.3. Promotion of innovation in Japan
Up to this point, there is described that software patents could be discriminated on the basis of the requirement for invention, and thereby the patent trolls will be able to be kept away from to some extent, which may result in the promotion of innovation in Japan. However, this is limited to the case that software patents held by patent trolls appear to be invalid. In Japan, other measures against patent trolls with the aim of promoting innovation have recently been discussed as described below [47].

It can be considered that software is intrinsically a technique in which patent can be in line with innovation. That is, by forming a "common region" through a blanket licensing agreement and the like for example, software patents can promote innovation.

There occurs possibly an event that patent trolls are involved in the above common region, which results in the inhibition of innovation. This is likely to be prevented in the future by the creation of legal system for protecting licensee.

Furthermore, to the limited cases, there is a possibility that the notion of abuse of right provided in Civil Code is applied as a last resort.

However, companies concerned in the agreement have to note that the above creation of legal system for protecting licensee is not yet sufficient in terms of international harmonization, and that easy application of the notion of abuse of right may impose limitations on the future management of their own patent rights.

8. Conclusions
In the previous analysis it has been shown that patent protection for computer implemented inventions is indeed allowed under the European and Japanese patent systems.

It has also been shown under which conditions said patent protection is excluded a priori and it can be concluded that the exclusion under both systems applies to inventions which are, for example, purely abstract or related to non technical fields like business administration. This conclusion is valid under both jurisprudences, although they derive from different basic legal provisions and principles. The different legal frameworks imply that, however, during patent prosecution the needed amendments and the line of argumentation are substantially different, thus leading to possibly distinct scopes of protection for the same invention.

It is finally very important to specify that if an invention is not excluded from patentability a priori, it still needs to comply with other fundamental requirements like those of novelty and inventive step. Therefore, if a patent application is deemed as having technical character but comprises only trivial features or activities, it may still be refused under lack of novelty or inventive step in the light of the prior art. The correct application of these requirements is a further essential key to discriminate between trivial inventions that may contribute to patent trolls and inventions that truly protect and favour technical progress. In the authors view, the level of quality of examination with that respect should be a main concern shared by the public in order to guarantee that patent protection will continue to positively foster technological progress.

  • Dominique Guellec and Bruno van Pottelsberghe de la Potterie, The economics of the European Patent System - IP Policy for Innovation and Competition, Oxford University Press, February 2007. Particular reference is made to pp. 125-129.
  • J. Hill, UK: recent decisions on computer-implemented inventions, World Focus: IP & High Technology, October 2006, www.ipworldonline.com
  • When dealing with policy and legislative initiatives within the EU, it should be borne in mind that the EPC is a set of law "self-executing and independent of national laws for its implementation" (J15/80). The EPC should, further, be regarded as independent from deliberations of the EU Parliament, since the Convention is based on an agreement contracted by states independently from the EU frame. The EPC, as evidence of this fact, comprises states like Switzerland that are not represented within the EU. The EU deliberations would help the member states in redrafting the Articles and Rules of the EPC, but it should be stressed that they do not have any implications on the functioning of the EPO and ruling of the BoA until the principles of such deliberations are reflected in the Articles and Rules of the EPC.
  • J15/80: Decision of the Legal Board of Appeal of the EPO. Decisions from the EPO Board of Appeal are also retrievable from the EPO web site at: http://www.epo.org/patents/appeals/search-decisions.html
  • J. Pila, Dispute over the Meaning of "Invention" in Art. 52(2) EPC — The Patentability of Computer-Implemented Inventions in Europe, IIC: International Review of Intellectual Property and Competition Law Vol. 36 No. 2, 2005, pp. 173-191.
  • A. Pfeiffer, The EU-Directive of Patentability of Computer Implemented Inventions. Comedy, Drama or a Nuisance? Probably all of it!, EPI information, 2/2005, pp. 59-66
  • Special Edition of the EPO Official Journal 2005: 12th European Patent Judges' Symposium — Brussels, 22-24 Sept. 2004, pp. 16-31.
  • The terms Travaux Préparatoires designate the historical documentation, a collection of documents relating to the preparation and to the works of the Diplomatic Conference that led to the European Patent Convention. This term also generally refers to documents relating to following modifications made to Articles and/or Rules of the EPC.
  • J. Pila, Article 52(2) of the Convention on the grant of European Patents: what did the framers intend? A study on the Travaux Preparatoires, International Review of Intellectual Property and Competition Law, Vol. 36, No. 7/2005, pp. 755-888. With reference to the limitation of computer programs, see particularly section B, par. 6 and 8.
  • J. Pila, as in [9] above, with particular reference to section B, par. 9, and therein cited references [92-93].
  • T0935/97, r. 4.1: Decision of the Technical Board of Appeal of the EPO.
  • T0154/04, Decision of the Technical Board of Appeal of the EPO, Appellant: DUNS LICENSING ASSOCIATES, Title: Method of estimating product distribution.
  • The Board in T0154/04, r. 6, refers to the decisions of the Enlarged Board of Appeal G5/83, G1/98, G1/04 and G1/98 as support for the conclusion that limitation to patentability should be interpreted narrowly and should not be "a matter of judicial discretion, but must have a clear legal basis in the EPC".
  • The Board in T0154/04, r. 6, underlines that the provision of the Article 52 were amended in order not to give a too broad interpretation of excluded subject matter. The Board refers to the Travaux Preparatoires document M/11, Vol. 35E, No. 21 and document M/PR/I, Vol. 42E, No. 42.
  • MR/2/00, Basic proposal for the revision of the EPC, October 2000: it was proposed to delete the exclusion of computer programs from Article 52(2). However, the deletion was not agreed upon and it was reintroduced during the preparatory works and finally adopted by the Diplomatic Conference, thus leaving the substance of Article 52(2) unchanged. All documents related to the revision of the EPC (EPC 2000) can be found on the EPO web site at: http://www.epo.org/patents/law/legislative-initiatives/epc2000.html
  • The definition is based on the Guidelines for Examination (abbreviated to GL) in the EPO, Part C, IV-2.3.6, December 2007, and on the notice published in the EPO OJ 11/2007, pp. 594-600: Examination of computer implemented inventions at the EPO with particular attention to computer-implemented business methods. In the present paper, references will be made to the Guidelines relating to the EPC 2000 as in force from December 2007, unless otherwise indicated.
  • Article 83 EPC deals with the disclosure of the invention: "The European Patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art".
  • In the present paper reference will be made to Articles and Rules relating to the EPC 2000 entered into force in December 2007, unless otherwise indicated. With what concerns Article 52(1) the only substantial difference with the old Article consists in the addition of the wording "in all fields of technology", now bringing the formulation of the Article in line with the TRIPS agreement (see also MR/2/00 [15] and MR24/00). The amendment stresses that an invention needs to have a technical character, as it will be apparent also from the following discussion in this paper.
  • Rule 42(1)(a) and (c) EPC 2000 correspond to Rule 27(1)(a) and (c) EPC 1973 (the modification consisting simply in the renumbering of the Rule).
  • Rule 43(1) EPC 2000, corresponding to Rule 29(1) EPC 1973 (the modification consisting simply in the renumbering of the Rule).
  • T641/00, Decision of the Technical Board of Appeal, Appellant: COMVIK GSM AB, Title: Method in mobile telephone systems in which a subscriber identity module (SIM) is allocated at least two identities which are selectively activated by the user.
  • Article 177(1) EPC: "This Convention, drawn up in a single original, in the English, French and German languages, shall be deposited in the archives of the Government of the Federal Republic of Germany, the three texts being equally authentic". Following Article 33(3) of the Vienna Convention about interpretation of treaties, all terms in each of the three texts should have the same meaning. For this reason the BoA takes into consideration the version of the same Article in all three languages in order to establish the correct interpretation of the meaning intended originally by the member states.
  • See, for instance, the Guidelines, C-IV, 2.1.
  • Art. 21(1) EPC: "The Boards of Appeal shall be responsible for the examination of appeals from decisions of the Receiving Section, the Examining Divisions and Opposition Divisions, and the Legal Division". As confirmed by G1/97, "the Boards of Appeal are the second and final judicial instance of the EPO" and are recognized as international judicial authority.
  • As a consequence of Article 111 EPC (1973 and 2000), the decision of a BoA is binding only for the individual case the Board has decided upon. There are no provisions explicitly binding first instances to take the same conclusion in similar cases.
  • J27/84, r. 4. The same decision, in r. 5, adds that: "there may be cases in which the public has a legitimate expectation that the first instance will not deviate from the established case law. This might be accepted if this case law had become part of consistent practice of the department of first instance, in particular if this had been made known to the public by published Guidelines, Legal Advice or Notices from the EPO". The Guidelines and the EPO Official Journal are therefore irreplaceable references for patent examination.
  • T208/84, Decision of the Technical Board of Appeal of the EPO, Appellant: VICOM.
  • T110/90, Decision of the Technical Board of Appeal of the EPO, Appellant: IBM, Title: Methodology for transforming a first editable document form prepared with a batch text processing system to a second editable document form usable by an interactive or batch text processing system.
  • T769/92, Decision of the Technical Board of Appeal, Appellant: Sohei, Title: Computer system for plural types of independent management and method for operating a general purpose computer management system.
  • T258/03, Decision of the Technical Board of Appeal, Appellant: Hitachi, Title: Automatic Auction Method
  • The contribution approach, as it will be outlined in a following paragraph presenting the examination scheme, consists in establishing the technical character of an invention by assessing the technical contribution the invention makes over the prior art.
  • T1227/05, Decision of the Technical Board of Appeal of the EPO, Appellant: Infineon Technologies AG, Headword: Circuit simulation I, Published in the EPO OJ 11/2007, pp. 574-588.
  • T1173/97, Decision of the Technical Board of Appeal of the EPO, Appellant: IBM, Title: Asynchronous resynchronization of a commit procedure.
  • Case Law of the Board of Appeals of the European Patent Office, Fifth Edition 2006, Published by the EPO, Retrievable on the Internet at: http://www.epo.org/patents/law/legal-texts/case-law.html
  • T931/95, Decision of the Technical Board of Appeal, Appellant: Pension Benefit Systems Partnership, Title: Improved pension benefits system
  • Neither the Guidelines from 2005 (EPC 1973) nor the Guidelines from 2007 (EPC 2000) reflect the contribution approach. The public should therefore expect that the EPO will not follow said approach anymore.
  • T641/00, Decision of the Technical Board of Appeal, Appellant: COMVIK GSM AB, Title: Method in mobile telephone systems in which a subscriber identity module (SIM) is allocated at least two identities which are selectively activated by the user.
  • If no technical problem can be derived from the application itself, then an invention does not exist within the meaning of Article 52 EPC as confirmed also by the decision T26/82.
  • Notice published in the EPO OJ 11/2007, pp. 594-600: Examination of computer implemented inventions at the EPO with particular attention to computer-implemented business methods.
  • Guidelines for Examination, Part B, Guidelines for Search, Published by the EPO, Dec 2007 (EPC 2000), GL B, X-8(iii): in cases where the subject matter of all claims is not patentable under Article 52 EPC, the search report will be substituted by a declaration that a meaningful search could not be carried out, following the provisions of Rule 63 EPC 2000. If the subject matter of some of the claims is patentable, then the search report will be limited only to the patentable claims (partial incomplete search report with accompanying declaration). See also GL B, VII-1 regarding non meaningful searches. The same applied also under the EPC 1973 provisions and corresponding Guidelines published in 2005.
  • GL C, VI-8.2 EPC 2000, corresponding to GL C, VI-8.5 EPC 1973
  • T163/85, Decision of the Technical Board of Appeal of the EPO, Appellant: BBC, Headnote: colour television signal.
  • T1194/97, Decision of the Technical Board of Appeal, Appellant: Philips, Picture retrieval system
  • H. Sakai Y. Iguchi, and Cao Yong, Patent, Vol. 58, No. 10 (2005) pp. 16-34 (Japanese).
  • J. Brennan, Hui-Wen (Fiona) Hsueh, M. Sahashi, and Y. Ohkuma, CASRIP Newsletter, Spring/Summer 2006, Vol. 13, Iss. 2.
  • KSR International v. Teleflex Inc., US. Supreme Court No. 04-1 Teleflex Inc., US. Supreme Court No. 04-1350.
  • M. Hiratsuka, Chizai Kanri, in press (Japanese).
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