Changes to the EPC with the EPC 2000

On 13 December 2007, EPCⁱ 2000 entered into force. Some of the articles relevant to computer-implemented inventions were amended. Furthermore, the Guidelines were also amended to include more recent case law.

The changes in EPCⁱ 2000 are discussed below.

Articles of the EPCⁱ

Article 52 – Patentable inventions

Article 52 was amended as follows:

(1) European patents shall be granted for any inventions which are susceptible of industrial application, in all fields of technology, provided that they are new and which, involve an inventive stepⁱ and are susceptible of industrial application.

(2) 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.

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

(4) Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body shall not be regarded as inventions which are susceptible of industrial application within the meaning of paragraph 1. This provision shall not apply to products, in particular substances or compositions, for use in any of these methods.

The only substantial amendment was made to paragraph 1, which now includes that patents are granted for inventions in all fields of technology. Although this amendment appears to be quite substantial, it is not expected that this change will alter the practice of the EPO, specifically with regard to computer-implemented inventions, as the EPO only regards this provisions to be an obstacle for the patentability of an invention in very rare cases. The amendment is considered to be a cosmetic amendment to bring the article in line with the present case law.

The amendments to paragraph 3 are nothing more than rephrasing of the text. Paragraph 4 has been moved to article 53 EPCⁱ (Exceptions to patentability), but it does not relate to computer-implemented inventions. Therefore, these amendments are not relevant to computer-implemented inventions.

Article 53 – Exceptions to patentability

In spite of its name, has no relevance to the patentability of computer-implemented inventions.

Article 54 – Noveltyⁱ

This article has been amended as follows:

(1) An invention shall be considered to be new if it does not form part of the state of the artⁱ.

(2) The state of the artⁱ shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

(3) Additionally, the content of European patent applications as filed, of which the dates of filing of which are prior to the date referred to in paragraph 2 and which were published under article 93 on or after that date, shall be considered as comprised in the state of the artⁱ.

(4) Paragraph 3 shall be applied only in so far as a Contracting State designated in respect of the later application, was also designated in respect of the earlier application as published.

(5) (4) The provisions of paragraphs 1 to 4 Paragraphs 2 and 3 shall not exclude the patentability of any substance or composition, comprised in the state of the artⁱ, for use in a method referred to in Article 52, paragraph 4 53(c), provided that its use for any such method referred to in that paragraph is not comprised in the state of the artⁱ.

(5) Paragraphs 2 and 3 shall also not exclude the patentability of any substance or composition referred to in paragraph 4 for any specific use in a method referred to in Article 53(c), provided that such use is not comprised in the state of the artⁱ.

The amendments to article 54 EPCⁱ only influence colliding applications and medical use claims and have no direct influence on computer-implemented inventions.

Article 56 – Inventive stepⁱ

This article has been amended as follows:

An invention shall be considered as involving an inventive stepⁱ if, having regard to the state of the artⁱ, it is not obvious to a person skilled in the artⁱ. If the state of the artⁱ also includes documents within the meaning of Article 54, paragraph 3, these documents are shall not to be considered in deciding whether there has been an inventive stepⁱ.

This amendment is only a minor rephrasing of the article and has no influence on computer-implemented inventions.

Guidelines

2.3.6 Programs for computers
Programs for computers are a form of "computer-implemented inventionⁱ", an expression intended to cover claims which involve computers, computer networks or other conventional programmable apparatus whereby prima facieⁱ the novel 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 conventional apparatus, the apparatus set up to execute the method, or, following T 1173/97 (OJ 10/1999, 609), the program itself.

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.

The basic patentability considerations here 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). However 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. But 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, 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 computer 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 EPCⁱ are met; see in particular Art. 84, 83, 54 and 56, and IV, 4.4 5.3 below. Such claims should not contain program listings (see II, 4.14a 4.15), 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 III, 4.4 4.5, last sentence).

Moreover, following T 769/92 (OJ 8/1995, 525), the requirement for technical character is may be satisfied if technical considerations are required to carry out the invention. Such technical considerations must be reflected in the claimed subject-matter.

When considering whether a claimed computer-implemented inventionⁱ is patentable, the following is to be borne in mind. In the case of a method, specifying technical means for a purely non-technical purpose and/or for processing purely non-technical information does not necessarily confer technical character on any such individual step of use or on the method as a whole. On the other hand, 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) (see T 931/95, OJ 10/2001, 441). Any claimed subject-matter defining or using technical means is an invention within the meaning of Art. 52(1) (T 258/03, OJ 12/2004, 575). If a claimed invention subject-matter does not have a prima facieⁱ technical character, it should be rejected under Art. 52(2) and (3). In the practice of examining computer-implemented inventions, however, it may be more appropriate for the examiner to proceed directly If the subject-matter passes this prima facieⁱ test for technicality, the examiner should then proceed to the questions of noveltyⁱ and inventive stepⁱ, without considering beforehand the question of technical character. In assessing whether there is an inventive stepⁱ, the examiner must establish an objective technical problem which has been overcome (see IV, 9.8.2 11.7.2). The solution of that problem constitutes the invention's technical contribution to the art. The presence of such a technical contribution establishes that the claimed subject-matter has a technical character and therefore is indeed an invention within the meaning of Art. 52(1). If no such objective technical problem is found, the claimed subject-matter does not satisfy at least the requirement for an inventive stepⁱ because there can be no technical contribution to the art, and the claim is to be rejected on this ground.

The amendments to the Guidelines will be dealt with soon.