EPO G3-08 brainstorming
When replying, it's important to think about the meanings of the following terms. They probably have specific meanings given to them by the EPO or by the legislative debate of 2003-2005, so you can't assume they mean what you think they mean.
- technical effect
- further technical effect
- a technical effect on a physical entity in the real world
- technical character
- technical considerations
- physical entity
- unspecified computer
To think about these, keep in mind that we aim to exclude Mp3 audio patents and patents about displaying information on a computer screen. We thus have to define terms like "a technical effect on a physical entity in the real world" in a way that doesn't allow the attachment of speakers or a computer screen to fulfil the criteria.
The referral says that the following four terms are synonyms: computer program, program, program for computer, and software. If defines these as "a series of steps (instructions) which will be carried out by the computer when the program is executed".
- 1. Can a computer program only be excluded as a computer program as such if it is explicity[sic] claimed as a computer program?
Suggested answer: No. A computer program, or more precisely an innovation in a computer program, cannot be patented. The type of claim does not affect this.
- 2.(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicity[sic] mentioning the use of a computer or a computer-readable data storage medium?
Suggested answer: No.
Philips' answer is again interesting, again mentioning that patentability is based on whether the innovative and non-obvious aspects of the application are "technical". Whether use of a computer is mentioned or not is not relevent.
- (b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?
Note: a further technical effect is always necessary, so the important part of this question is the second half, starting with "said effect...". The criteria mentioned in the second half is too narrow. This would allow patents which claim to increase software efficiency or reduce storage requirements.
- 3.(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?
That requirement is insufficient. Patents should not be granted on mp3 audio or on ways of displaying information on a computer screen. If use of speakers or a computer screen could constitute an effect on a "physical entity in the real world", then this would be allowing software patents.
- (b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?
It's probably impossible to give 3(a) a positive or negative answer, so we have to start the answer to this question with a clarification that we think 3(a) doesn't go far enough.
- (c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?
Features should only be able to contribute to the technical character of a claim if they contribute to effects that involve controllable uses of applied natural science. Known ways of using hardware should not be counted - i.e. making a speaker produce sound or making a screen display information or images.
- 4.(a) Does the activity of programming a computer necessarily involve technical considerations?
No. Writing software can be complex, just as writing a novel or composing music, but none of these acts are "technical" in the sense of patent law.
If any of these acts are considered "technical" in the sense of patent law, this is a mistake in the patent law and should be corrected.
- (b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?
No such features contribute to there being a technical character in a claim.
- (c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?
No features resulting from programming can contribute to there being a technical character in a claim.