Legislative Implementation of Flexibilities - European Patent Office (EPO)

Title:	Article 52 (2) (c) and (3) of the European Patent Convention
Field of IP:	Patents
Type of flexibility:	Patentability or exclusion from patentability, of software-related inventions
Summary table:

Provisions of Law

Article 52

Patentable inventions

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

GUIDELINES FOR THE EXAMINATION OF THE EPO, Part G, Chapter II-5, Rule 3.6

3.6 Programs for computers

Programs for computers are a form of "computer-implemented invention", an expression intended to cover claims which involve computers, computer networks or other programmable apparatus whereby prima facie one or more of the features of the claimed invention are realised by means of a program or programs. Such claims may e.g. take the form of a method of operating said apparatus, the apparatus set up to execute the method, a readable medium carrying a program (see T 424/03) or, following T 1173/97, the program itself. The examiner should disregard the claim category and concentrate on its content in order to determine whether the claimed subject-matter, considered as a whole, has a technical character.

Moreover, insofar as the scheme for examination is concerned, no distinctions are made on the basis of the overall purpose of the invention, i.e. whether it is intended to fill a business niche, to provide some new entertainment, etc. Technical character should be assessed without regard to the prior art (see T 1173/97, confirmed by G 3/08).

Features of the computer program itself (see T 1173/97) as well as the presence of a device defined in the claim (see T 424/03 and T 258/03) may potentially lend technical character to the claimed subject-matter as explained below.

The basic patentability considerations in respect of claims for computer programs are in principle the same as for other subject-matter. While "programs for computers" are included among the items listed in Art. 52(2), if the claimed subject-matter has a technical character it is not excluded from patentability by the provisions of Art. 52 (2) and (3).

Moreover, 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 (for the procedure at the search stage, see B-VIII, 2.2). However, 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. 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 computer program 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; see in particular Art. 84, 83, 54 and 56, and G-III, 3 below. Such claims should not contain program listings (see F-II, 4.12), but should define all the features which assure patentability of the process which the program is intended to carry out when it is run (see F-IV, 4.5.2, last sentence).

Moreover, following T 769/92, the requirement for technical character may be satisfied if technical considerations are required to carry out the invention. Such technical considerations must be reflected in the claimed subject-matter.

Any claimed subject-matter defining or using technical means is an invention within the meaning of Art. 52(1) (see T 424/03 and T 258/03, and confirmed in G 3/08). Therefore the mere inclusion of a computer, a computer network, a readable medium carrying a program, etc. in a claim lends technical character to the claimed subject-matter.

If claimed subject-matter does not have a prima facie technical character, it should be rejected under Art. 52 (2) and (3). If the subject-matter passes this prima facie test for technicality, the examiner should then proceed to the questions of novelty and inventive step (see G-IV and VII).