|EPO 1990 T 22/90||EPA||EPA|
The appellant requests the grant of a patent with claims 1 to 21 submitted with letter dated 18 April 1997, as refused by the examining division.
14. A computer system comprising an execution environment for running an application (56 A) and; means for implementing a commit procedure, especially a two-phase commit procedure for said application (56 A); characterized by means for notifying said application to continue to run in the event said commit procedure fails before completion, whereby said application need not wait for said commit procedure to be completed; and means for resynchronizing said incomplete commit procedure asynchronously relative to said application.
20. A computer program product directly loadable into the internal memory of a digital computer, comprising software code portions for performing the steps of claim 1 when said product is run on a computer.
21. A computer program product stored on a computer usable medium, comprising: computer readable program means for causing a computer to control an execution of an application (56 A); computer readable program means for causing the computer to implement a commit procedure, especially a two-phase commit procedure for said application (56 A); computer readable program means for causing the computer to notify said application (56 A) to continue to run in the event said commit procedure fails before completion, whereby said application (56 A) need not wait for said commit procedure to be completed; and computer readable program means for causing the computer to resynchronize said incomplete commit procedure asynchronously relative to said application (56 A).
In the decision under appeal the examining division gave the following reasons concerning these groups of arguments:
It pointed out that on the basis of the rules of interpretation according to Article 31 of the Vienna Convention on the Law of Treaties, Article 52(2) and (3) EPC could be understood to mean that computer programs claimed as such were excluded from patentability, regardless of their technical or nontechnical content. Technical character became relevant only when a computer program was claimed within the framework of a method or an apparatus.
With reference to paragraph 4 of Article 31 of the Vienna Convention, giving a special meaning to any of the terms of Article 52 EPC would not be an appropriate way to overcome the exclusion provisions. The decisions of the boards of appeal cited by the appellant only concerned inventions directed to a method, an apparatus or a system incorporating a computer program. In those cases the inventions were not considered to be computer programs as such, if technical features in addition to the computer program were claimed. The Board also noted that the contracting states were free to exclude subject-matter from patentability regardless of its technical character.
Regarding the TRIPS Agreement, it was not clear whether this international treaty applied to the EPC at all. In addition, there was no indication that the member states of the TRIPS Agreement intended to include computer programs within the scope of patentable subject-matter.
Chapter IV of the Guidelines cited by the examining division gave an over-broad and inconsistent interpretation of the EPC.
As ruled by the boards of appeal, for example in decisions T 208/84 (OJ 1987, 14, "Computer-related invention/VICOM") and T 6/83 (OJ 1990, 5, "Data processor network/IBM"), for an invention to be patentable under Article 52(1) to (3) EPC it only has to have a technical character, be novel, involve an inventive step and be industrially applicable.
The technical character of the invention according to the present application, which is essentially defined by the command sequence as specified in the stored program, was acknowledged by the examining division for the method and system of claims 1 and 14 respectively, and could not be lost for the sole reason that the invention was claimed in a different format, like the format of claims 20 and 21.
The term "invention", neither defined in the EPC nor understood uniformly in the contracting states, should be interpreted solely within the framework of the EPC.
In view of the technical problem and the technical solution required by Rules 27 and 29 EPC and the fact that the person skilled in the art is addressed in several provisions of the EPC, an invention must be understood to have a technical character in order to be patentable.
Article 52(2)(c) EPC gives a non-exhaustive list of negative examples, including computer programs. Since this paragraph also mentions activities which are clearly outside the realm of technology, the exclusion of computer programs as such can only be understood as intending to exclude these programs to the same extent as these other activities, which all concern nontechnical subject-matter. A "program as such" (excluded from patentability) would therefore in fact be a nontechnical program.
A narrow interpretation of the exclusion provisions would also accord with the TRIPS Agreement. Although not directly applicable to the interpretation of the EPC, the Agreement is binding on all its member states and calls for an interpretation of the EPC which is compatible with it, in particular Article 27.
The Board's attention was also drawn to Article 10 of TRIPS, which concerns copyright protection for computer programs and compilations of data. The appellant argued that the fact that Article 10 is the only provision in TRIPS which mentions programs for computers and that it in that context only mentions copyright as a possible form of protection does not mean that protection of computer programs by patents would be excluded under TRIPS.
According to him there was no conflict between Articles 10 and 27: on the contrary, both forms of protective right may well co-exist for the same program, and each of these rights will serve its own purpose.
The technical character of an invention might result from its field of application, but might equally well result from using information technology to solve a problem in a non-technical field. Like the relationship between a plug and a socket, the technical interface between computer and program, as for example defined in present claims 20 and 21, ensures that the technical character of the method or system is maintained if the computer program is claimed by itself as a product.
The only question to be decided by the Board in this case, therefore, is whether the reason given by the examining division is correct.
However, for the time being it is not convinced that TRIPS may be applied directly to the EPC. Apart from any other considerations TRIPS is binding only on its member states. The European Patent Organisation itself is not a member of the WTO and did not sign the TRIPS Agreement.
Although, according to Article 4, the Vienna Convention, which was signed on 23 May 1969, but did not enter into force until 27 January 1980, is not applicable to the EPC, it has considerable authority and has frequently been cited by the boards of appeal when applying principles laid down in it. However, in the Board's opinion Article 30, which deals with the "application of successive treaties relating to the same subject-matter", does not provide any justification for applying TRIPS to the EPC. For instance, there is not even full correspondence between the contracting states to the EPC and the member states of TRIPS, ie not all the contracting states to the EPC are simultaneously members of TRIPS.
Article 27(1) TRIPS states that "patents shall be available for any inventions, whether products or processes, in all fields of technology, provided they are new, involve an inventive step and are capable of industrial application". This general principle, when considered together with the provisions pursuant to paragraphs 2 and 3 of Article 27 concerning exclusion from patentability (which, however, do not comprise any of the subject-matter mentioned in Article 52(2) EPC), can be correctly interpreted, in the Board's opinion, as meaning that it is the clear intention of TRIPS not to exclude from patentability any inventions, whatever field of technology they belong to, and therefore, in particular, not to exclude programs for computers as mentioned in and excluded under Article 52(2)(c) EPC.
The Board has taken due notice of these developments, but wishes to emphasise that the situation under these two legal systems (US, JP) differs greatly from that under the EPC in that it is only the EPC which contains an exclusion such as the one in Article 52(2) and (3).
In applying the EPC the examining division relied on the Guidelines for Examination in the European Patent Office and thus only applied the interpretation of the EPC as given therein.
However, the Guidelines are not binding upon the boards of appeal. In particular, according to Article 23(3) EPC, "in their decisions the members of the Boards shall not be bound by any instructions and shall comply only with the provisions of this Convention".
The Board will therefore now investigate what in its view would be the proper interpretation of the exclusion from patentability of programs for computers under Article 52(2) and (3) EPC.
Article 52(2)(c) EPC states that programs for computers shall not be regarded as inventions within the meaning of Article 52(1) EPC and are therefore excluded from patentability.
Article 52(3) EPC establishes an important limitation to the scope of this exclusion. According to this provision, the exclusion applies only to the extent to which a European patent application or a European patent relates to programs for computers "as such".
The combination of the two provisions (Article 52(2) and (3) EPC) demonstrates that the legislators did not want to exclude from patentability all programs for computers. In other words the fact that only patent applications relating to programs for computers as such are excluded from patentability means that patentability may be allowed for patent applications relating to programs for computers where the latter are not considered to be programs for computers as such.
In other words, on condition that they are able to produce a technical effect in the above sense, all computer programs must be considered as inventions within the meaning of Article 52(1) EPC, and may be the subject-matter of a patent if the other requirements provided for by the EPC are satisfied.
In this case it is only said further technical effect which matters when considering the patentability requirements, and no importance should be attached to the specific further use of the system as a whole.
The expression "the system as a whole" means the hardware plus the software, that is the system consisting of the hardware as programmed in accordance with the program concerned (hardware + software).
As far as patentability is concerned the boards have so far required inventions to possess technical character. To the Board's knowledge there are no decisions in which a board of appeal has attributed a technical character to a computer program for the sole reason that the program is destined to be used in a technical apparatus, namely a computer.
This can be illustrated by one of the early decisions of the boards in this field, T 208/84 (OJ 1987, 14), "Computer-related invention/VICOM", as cited above. This invention in this case related to "A method of digitally processing images in the form of a two-dimensional data array ...", which made use of a mathematical method incorporated in a computer program run on an appropriate computer to do the said processing.
In this case it was held that the method according to the invention was not excluded from patentability, because it constituted a technical process which was carried out on a physical entity. This entity might be a material object but equally an image stored as an electric signal. Thus said method was neither a mathematical method as such nor a computer program as such.
Of particular importance to the present case is the fact that, according to the case law of the boards of appeal, a claim directed to the use of a computer program for the solution of a technical problem cannot be regarded as seeking protection for the program as such within the meaning of Article 52(2)(c) and (3) EPC, even if the basic idea underlying the invention may be considered to reside in the computer program itself, as illustrated for example by decisions T 208/84 (OJ 1987, 14),"Computer-related invention/VICOM", as cited above, and T 115/85 (OJ 1990, 30), "Computer-related invention/IBM".
The case law thus allows an invention to be patentable when the basic idea underlying the invention resides in the computer program itself.
Determining the technical contribution an invention achieves with respect to the prior art is therefore more appropriate for the purpose of examining novelty and inventive step than for deciding on possible exclusion under Article 52(2) and (3).
Furthermore, it is clear that if, for instance, the computer program product comprises a computer-readable medium on which the program is stored, this medium only constitutes the physical support on which the program is saved, and thus constitutes hardware.
This effect may also be technical in the sense explained in reason 6, in which case it constitutes the "further technical effect" mentioned there. This means that a computer program product may possess the potential to produce a "further" technical effect.
Once it has been clearly established that a specific computer program product, when run on a computer, brings about a technical effect in the above sense, the Board sees no good reason for distinguishing between a direct technical effect on the one hand and the potential to produce a technical effect, which may be considered as an indirect technical effect, on the other hand. A computer program product may therefore possess a technical character because it has the potential to cause a predetermined further technical effect in the above sense. According to the above, having technical character means not being excluded from patentability under the "as such" provision pursuant to Article 52(3) EPC.
This means that a computer program product having the potential to cause a predetermined further technical effect is, in principle, not excluded from patentability under Article 52(2) and (3). Consequently, computer program products are not excluded from patentability under all circumstances.
It is self-evident that a claim to such a computer program product must comprise all the features which assure the patentability of the method it is intended to carry out when being run on a computer. When this computer program product is loaded into a computer, the programmed computer constitutes an apparatus which in turn is able to carry out the said method.
Wording the claim for a computer program product in this way also ensures that, when the hardware works according to its predetermined procedures, its internal physical changes carried out by the program are not relevant per se for determining whether an invention (as claimed) is patentable (see, for example, T 22/85, OJ 1990, 12, "Document abstracting and retrieving/IBM", already cited and discussed under reasons, 7.2).
Returning to the Vienna Convention, Article 31, "General rule of interpretation", states in paragraph 1 that "A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to the terms of the treaty in their context and in the light of its object and purpose", and in paragraph 4 that "A special meaning shall be given to a term if it is established that the parties so intended".
In particular, the object and purpose of the EPC is the grant of patents for inventions and thus to promote technical progress by giving proper protection to these inventions. With this in mind, the Board has arrived at its interpretation in the light of developments in information technology. This technology tends to penetrate most branches of society and leads to very valuable inventions. In its interpretation the Board has in its view not gone beyond the ordinary meaning given to the terms of the EPC. The meaning it has attributed to the expression "as such" in Article 52(3) EPC is, in its opinion, not a special meaning within the meaning of Article 31(4) Vienna Convention, which would have required the consent of the parties to the EPC.
This means that the question to be decided upon in the present appeal has not been answered earlier by the boards of appeal. Strictly speaking, the cited reasonings may therefore be considered to constitute obiter dicta and not ratio decidendi.
Consequently, the Board feels obliged to comment on this case.
However, the Board wishes to distinguish the cited decision T 204/93, in so far as the latter purports to exclude all computer programs as such, ie irrespective of their contents.
Claims 1 and 14 are the independent claims of this set of claims. They are worded in functional terms and belong to different categories of claim. Claim 1 is a claim for a method for resource recovery in a computer system (method claim or process claim). Claim 14 is a claim for a computer system (apparatus claim or device claim) and it is assumed that claim 14 constitutes a system (an apparatus or device) for carrying out the method of claim 1.
If the Board's assumptions are correct, then although the two claims belong to different categories, there would nevertheless be unity of invention under Article 82 EPC, and the allowability as considered by the examining division of a claim for a method and a claim for an apparatus adapted for carrying out the same method would conform with the established case law of the boards of appeal, since, as mentioned above, according to the cited "VICOM" decision it would be illogical to grant a patent for the method and not for the apparatus which is adapted for carrying out the same method.
From the fact that these claims were refused by the examining division on the basis of the cited passage in the Guidelines, the Board concludes that the examining division did not consider the exact wording of those claims in detail, and acknowledges that, from the examining division's point of view, there was little need to do so. However, now that the Board has decided that not all computer program products are prima facie to be excluded from patentability, a thorough examination of the exact wording of the claims has to be carried out.
In order to preserve the appellant's right to have this determined at two instances, the case is remitted to the first instance for further examination of this point.
In the view of the Board, a computer program claimed by itself is not excluded from patentability if the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect which goes beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it is run. "Running on a computer" means that the system comprising the computer program plus the computer carries out a method (or process) which may be of the kind according to claim 1. "Loaded into a computer" means that the computer programmed in this way is capable of or adapted to carrying out a method which may be of the kind according to claim 1 and thus constitutes a system (or device or apparatus) which may be of the kind according to claim 14.
Furthermore, the Board is of the opinion that with regard to the exclusions under Article 52(2) and (3) EPC, it does not make any difference whether a computer program is claimed by itself or as a record on a carrier (following decision T 163/85, OJ 1990, 379, "Colour television signal/BBC", as cited above).
For these reasons it is decided that: