Decision 15495 of the Appeal Division of the Dutch Patent Office
Decision of the Octrooiraad, Afdeling van Beroep (Appeal Division of the Patent Office), dated 12 September 1985 (No. 15495)1
Chairman: J. J. Bos
Members:
- W. Neervoort
- M. Martin
- L. T. M. Crouzen
- E. Van Weel.
Article 1A Patents Act of the Kingdom
Article 52(2)© EPC
Keyword:
- Patentability of computer programs
- Patentability of computers into which a new program is loaded
- Impact of EPO practice
Headnote
- The conclusion of the Appeal Division as expressed in its decision of 16 December 1970 (BIE 1971, 54) that a computer which differs from another computer merely by virtue of its information content (program) is not to be regarded as a new product, cannot be maintained without some amendment considering recent technical and legal developments.
- A distinction must be drawn between computer programs as such, i.e. those recorded on data carriers and not directly addressable by a computer, on the one hand, and programs loaded into the working memory of the computer which are characterised by direct addressability, on the other.
- A computer with a directly addressable or working memory into which a program is loaded is to be regarded as a technically different device which is in principle patentable on the basis of program characteristics.
Reasons for the Decision
- By a notice of appeal filed in due time, together with a new
preamble (to the description) and claim, the applicant has appealed
against the decision of the Examining Division of 12 April 1984. In so
far as it is relevant here, the Examining Division held in its negative
decision that the claims (…) were not patentable, because they were
predominantly directed to the programming of a control device of a
switching network that was to be controlled; the Examining Division
referred to the decision of the Appeal Division of 16 December 1970
(BIE 1971, 54).
Although the applicant has not raised any arguments directed against that portion of the decision, the Appeal Division wishes of its own motion to review that position in respect of applications in the field of computers, which the Octrooiraad has consistently followed in its case law since the aforesaid decision in 1970, in the light of current opinion and recent developments in that field.
- In its 1970 decision the Appeal Division held, in brief, that
products that differ “materially” from known products are
patentable, but not items that differ merely by virtue of their
information content, such as books, forms, punch cards, gramophone
records, piano rolls etc.
On that basis the Appeal Division came to the conclusion that a computer which differed from another computer only by virtue of the program loaded in it, and therefore only by virtue of the information content, did not constitute a new product within the meaning of Article 1 (now 1 A) of the Patents Act.
Having reconsidered the matter, the Appeal Division has now concluded that that view cannot be maintained without some amendment.
- In this field a distinction must be drawn between computer programs
as such, that is programs merely recorded on data carriers such as
paper, magnetic tape or (memory) disk, which are not directly
addressable by a computer, on the one hand, and programs loaded into the
working memory of the computer which are characterised by direct
addressability, on the other.
The former programs, which are only recorded on one or another data carrier, represent items that are characterised purely by their information content.
Such programs, like books, gramophone records, audio and videotapes, etc. which are analogous, are not patentable, since there is no “material” difference, in a patent law sense, from the known art.
But that view can no longer be maintained in respect of computer systems with a directly addressable or working memory in which a program is stored.
The loading of a program into the working memory of a computer determines the logical structure of that computer in accordance with the program instructions and thus, where the program is to be regarded as new, a new device is created just as if the structure were embodied in hardware.
It is also no longer possible to accept the analogy drawn in the decision of the Appeal Division in 1970 between computers characterised by programs and player pianos and gramophones.
From a technical point of view a player piano or gramophone in which a roll or gramophone record is inserted always operates in the same technical manner and merely reproduces the data recorded by fixed technical means.
The functioning of a computer, however, is determined by the program stored in its working memory, and the loading of a different program directly addressable by the computer means that a technically different device is created which, in the view of the Appeal Division, is in principle patentable on the basis of program characteristics.
The Appeal Division would moreover regard a working memory containing a program, or any separable part thereof, as a computer component that is in principle likewise patentable on the basis of program characteristics.
In the opinion of the Appeal Division that view at the same time meets the injustice increasingly felt by interested parties – and also mentioned in its 1970 decision as a possible consequence of its view – of the fact that a hardware embodiment of a given program is patentable while the software embodiment is not patentable (as a product).
The Appeal Division would further point out that the practical equivalence of the two embodiments has become much more marked in the course of the seventies and eighties and that it is now very common for both software (firmware) and hardware computer components to be embodied in microchips.
The Appeal Division notes in this connection that the statement of the Appeal Division in 1970 that an inventor will as a rule concern himself either with software or else with hardware is now no longer universally valid.
- The Appeal Division finally wishes to take account of the
international trend in this field in so far as it has developed at
European level within the framework of the European Patent Convention.
A Decision of the President of the European Patent Office of 6 March 1985 laid down new Guidelines2 for the examination of patent applications in the field of computer programs; those Guidelines are the result of consultations between representatives of the European Patent Office, the national authorities of the Contracting States and interested circles.
The effect of those Guidelines, in so far as they are relevant here, is that computer programs as such, even if for example recorded on magnetic tape, must be regarded as not being patentable (cf. Art. 52(2) EPC), but that a computer characterised solely by a new program loaded in it may be patentable if the program causes the computer to operate in a different way from a technical point of view.
Therefore, the test to be applied is whether the subject-matter claimed, considered as a whole, has a technical character, a requirement which according to the Guidelines in conjunction with Article 52 EPC must be considered separately from the requirements of novelty, inventive step and industrial application.
The Appeal Division is constrained to take a different view concerning this test in view of the fact that, as stated earlier, a computer into which a new program is loaded is a new product for purposes of patent law and the application relating thereto must be assessed in the usual way.
On the basis of the foregoing, the Appeal Division, leaving aside the abovementioned difference in systematic approach, considers that the European trend in this field, which may also have implications at national level in the form of European software patents having effect in the Netherlands, is now, in contrast to 1970, quite clear and can serve as a basis for the answer to be given to this question of law in the Netherlands.
- The foregoing leads the Appeal Division to the conclusion that the
decision of the Examining Division must be set aside and the application
remitted to the Examining Division for examination as to patentability
taking account of the considerations set out in this decision. In the
course of that examination the applicant must be given the opportunity
to withdraw limitations incorporated in the application in view of the
1970 decision of the Appeal Division.
(…)