Referral on software patents to the Enlarged Board of Appeal (EBA)


Benjamin Henrion
Rue rempart des Moines 14/6
B1000 Brussels
Email: gro.vedu|hb#gro.vedu|hb
Tel: +32-484-566109

Enlarged Board of Appeal of the EPO
Email: gro.ope|abe_yrtsiger3gD#gro.ope|abe_yrtsiger3gD
Fax: +49 89 2399 3014

Brussels, 30 April 2009

Subject: Software patents referral to the EPO Enlarged Board of Appeal (case G3/08)

In their reply, Philips seems to have got the general idea: (page 4)

[…] the claims define the invention in terms of the technical features […] is a technical feature if it has a technical effect. Whether this technical effect is on the computer or on the outside world, is irrelevant.


Dear Members of the Enlarged Board of Appeal,

I am writing to you in the context of the Brimelow referral to your administrative tribunal regarding the Technical Boards of Appeal (TBA) conflicting and disputed interpretations of the European Patent Convention (EPC). I am happy as a software developer and user to provide my input for this administrative decision, which, according to the press, could guide the hands of real courts in Europe in order to validate software patents EU-wide without a change in the legislation.

Objectives of this referral

Objective 1: Guide the hands of the courts in order to validate software patents

As mentioned in a press article entitled "EU Software Patent Issue Goes to Appeals Body" published in PCWorld, the EPO, which is an executive body, aims to guide the hands of the real courts to create the right case law:

"The answers to the questions are necessary to enable the further harmonious development of case law in this field," the EPO said.

Objective 2: Replace the legislator

There is a broad consensus within interested circles that the Convention needs amending legal clarifications, which was notably the purpose of the failed software patent directive and of the failed attempt to delete the exclusion of program from computers from the EPC. If the EPO was not pushing the Members of the EPC to remove the exclusion of computer programs in 2000, it meaned that this exclusion was problematic for them.

Since those clarifications can be only be made by the legislator, I don't personally think there is enough room for the Enlarged Board of Appeal to clarify the Convention without calling for more clarifications to the legislator. It has to be noted that the EPC is an international treaty, which still gives the room for the national legislators to clarify in their national laws parts of the Convention which are uncertain.

The current EPO administrative decisions regarding computer programs looks more then a game of words then other things.

The aim of the failed software patent directive was to export the administrative decisions of the Technical Board of Appeal into a piece of EU legislation, in order to give more certainty for patent applicants that they could claim methods implemented in the form of a computer program.

During a conference organised just after the release of the Commission directive proposal in 2002, I asked the question to Mr Anthony Howard, representative of the Commission, what was his definition of the word "technical" and if he could write it down, and he said that the interpretation of what was "technical" would be left to the competent courts.

It is clear that central focus point of the directive was the interpretation of what "technical" means in reality. It seems that the EPO TBA decisions considers a reduction of CPU consumption by a new piece of software (with a more performant algorithm) as a "technical" effect. In my point of view, this is totally unacceptable since shaking more or less electrons on a CPU is not a new thing, this is basically the role of a computer, and there is nothing new in this physical phenomena. The fact that the CPU might be consuming more or less energy with a different algorithm should not be considered a being "technical".


It is crucial for the rest of the exercise to have a clear definition of what is a computer.

The definition is crucial to know what kind of processes are done inside or outside of a computer.

Several definitions can be used in order to form the base of the interpretation of what is a computer, data processing, or a computer program:

Definition 1: Computer

A "computer" is a realisation of an abstract machine consisting of entities such as input/output, processor, memory, storage space and interfaces for information exchange with external systems and human users.

Definition 2: Data processing

"Data processing" is calculation with abstract component entities of computers.

Definition 3: Computer program

A "computer program" is a solution of a problem by means of data processing which can, as soon as it has been correctly described in a suitable language, be executed by a computer.

IBM decision T1173/97 is a piece of crap

The effect of running a "computer program" inside a "computer" is to put the electrons in different states. Every computer program will shake the electrons differently, and the replacement of the said computer program by another computer program does not change anything in the way the computer operates.

In their reply to this consultation, Philips seems to have got the general idea about where the "technical effect" should reside according to their business objective to obtain software patents: (page 4)

“[…] the claims define the invention in terms of the technical features […] is a technical feature if it has a technical effect. Whether this technical effect is on the computer or on the outside world, is irrelevant.

I completely disagree with the remark of Philips and the IBM decision in the sense that the contribution has to be made in the outside world. This "technical effect" doctrine is purely and simply misunderstood by some people who wants to see the "technical effect" as being made inside the computer, in order to be able to obtain patents on data compression/decompression methods, that contribute nothing in terms of contribution to the physical outside world. The only effect of those compression/decompression methods is for example, to reduce the CPU consumption, the bandwidth, or the memory, but those are normal operations of the computer, and contribute nothing to the outside world.

This drawn between "technical" and "non-technical" might be the contribution to the knowledge in the physical world. This is basically the approach taken by the german BGH at two occasions:

BGH Kommunikationsloesung 2004:
"The problem is not technical, because it does not require use of controllable forces of nature to achieve a causally overseeable success."

BGH ABS 1980:
The computer-aided anti-lock braking system is a technical solution, because it involves "use of controllable forces of nature for the immediate achievement of a causally overseeable success".

This is the line that was adopted in the first reading by the European Parliament in 2003:


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For example one might differentiate between software as such and software which is running on a computer.
The computer would be the object with which software normally interacts, but it would be considered to be outside the scope of the software as such.

However this view is difficult to reconcile with the wording of paragraph 3. Because every piece of software is determined to run on a computer, this understanding excludes nothing at all and voids the exclusion in paragraph 2 of all meaning. However you draw the line: a totally one-sided observation contradicts the wording "only to the extent that …".

If the contribution to the known art resides solely in a computer program then the subject matter is not patentable in whatever manner it may be presented in the claims.

Composition of this Enlarged Board of Appeal

"[…] the claims define the invention in terms of the technical features […] is a technical feature if it has a technical effect. Whether this technical effect is on the computer or on the outside world, is irrelevant."

Technical soup

There is no need to consider whether the invention provides a “further technical effect” since if this examination scheme is followed no patent will be granted which should have been refused for lack of further technical effect. This is because the existence of an objective technical problem overcome is itself sufficient proof of the requisite further technical effect. A new solution of a technical problem implies a new “technical effect,” and in the case of computer-implemented inventions a new “further technical effect” (since by definition, the “normal physical effects” of running a program must be conventional). Hence, if an invention provides a new solution to a technical problem, it must satisfy the requirement for “technical character.”

Further technical soup

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 (3). However, a data-processing operation controlled by a computer program can equally, in theory, be implemented by means of special circuits, and the execution of a program always involves physical effects, e.g. electrical currents. According to T 1173/97, such normal physical effects are not in themselves sufficient to lend a computer program technical character. But if a computer program is capable of bringing about, when running on a computer, a further technical effect going beyond these normal physical effects, it is not excluded from patentability, irrespective of whether it is claimed by itself or as a record on a carrier. This further technical effect may be known in the prior art. 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 processing data which represent physical entities 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. As a consequence, a computCFPHer program claimed by itself or as a record on a carrier or in the form of a signal may be considered as an invention within the meaning of Art. 52(1) if the program has the potential to bring about, when running on a computer, a further technical effect which goes beyond the normal physical interactions between the program and the computer. A patent may be granted on such a claim if all the requirements of the EPC are met;


13. The same goes for the cognate word 'technical'. A number of surveys in the context of patenting have shown that, not only is there no agreement about the meaning of the word, but that most informed respondents agree that "trying to define the words 'technical' or 'technology' is a dead-end" [8]. That 'technical' is vague has implicitly been recognised in our courts too. For example, in Gale's Application [1991] RPC 305, 328 Nicholls LJ said that Mr Gale's algorithm did not solve a 'technical' problem lying within the computer. He continued:

I confess to having difficulty in identifying clearly the boundary line between what is and what is not a technical problem for this purpose. That, at least to some extent, may well be no more than a reflection of my lack of expertise in this field.

But for my part I think Nicholls LJ was too modest. I believe his difficulty arose, not through lack of expertise, but because of the inherent vagueness of the concept itself. In Fujitsu Limited's Application [1997] EWCA Civ 1174, [1997] RPC 608 Aldous LJ said:

I, like Nicholls LJ, have difficulty in identifying clearly the boundary line between what is and what is not a technical contribution.

Likewise the German Federal Court of Justice in XZB 15/98, "Sprachanalyseeinrichtung", 11 May 2000.
14. I mention this near the outset of this judgment because it is important. If you look at the case law on the subject, both here and in Munich, you will find many references to "technical contribution", "technical result", and so on, being touchstones by which these cases are decided. The use of the word 'technical' as a short-hand expression in order to identify patentable subject-matter is often convenient. But it should be remembered that it was not used by the framers of the Patents Act 1977 or the European Patent Convention when they wanted to tell us what is or is not an 'invention'. In any case the word 'technical' is not a solution. It is merely a restatement of the problem in different and more imprecise language. I am not claiming that it is wrong to decide cases with reference to the word 'technical'. It happens all the time. What I am saying is that it is not a panacea. It is a useful servant but a dangerous master.