The decision of the Boards of Appeal of the European Patent Office (EPO) in the Appeal filed by International Business Machines Corporation(IBM) T 1173/97 is a landmark ruling that clarified the patentability of claims directed to a “computer program product” under the European Patent Convention (EPC).
The central issue was whether such a claim was automatically excluded from patentability under Article 52(2) and (3) EPC, which states that “computer programs as such" are not patentable subject matter.
The appellant, IBM sought the grant of a patent based inter alia on several independent claims, including: (a) Claims 1 & 14, which pertained to a method for resource recovery in a computer system; (b) Claims 20 & 21, which were in respect of a computer program product stored on a computer usable medium based on the computer system; and, directly loadable into the internal memory of a digital computer for performing the said resource recovery function.
The Examining Division rejected IBM’s application on the grounds that while the subject matter of the independent Claims 1 &14 was patentable over the prior art, the subject-matter of Claims 20 & 21 was regarded as being excluded from patentability under Article 52(2) and (3),EPC.
IBM challenged the decision of the Examining Division.
The Boards of Appeal reiterated that for an invention to be patentable under sub-articles (1) to (3) of Article 52, EPC, it only must “have a technical character, be novel, involve an inventive step and be industrially applicable”. The board interpreted the expression“ computer programs as such” and construed it as referring to such programs that are “mere abstract creations, lacking technical character.”
It opined that a computer program is not excluded from patentability, if, when loaded into or running on a computer, it produces a "further technical effect" that goes beyond the "normal" physical interactions inherent between software and hardware.
Crucially, the Board also distinguished between computer programs that have a technical character and those that do not. The decision clarified that a "computer program as such" is excluded, but a "computer program product" is not provided such a product has a further technical effect.
Furthermore, the Board clarified that the "further technical effect" may already be known in the prior art; and, that it need not be novel. However, its mere presence is essential to avoid the exclusion under Article 52(2) and (3) EPC.
The appellate board reversed the decision and set aside the rejection order of the examination authority. The case was remitted back to the first instance for further prosecution on the basis of the appellant’s request and in particular for examination of the patentability of whether the claimed invention avoids exclusion under Articles 52(2) and 52(3), EPC, by due consideration of the fact that a “computer program product” is not excluded under all circumstances.
The ruling hinged on the vital rationale that if a method is patentable, then a corresponding claim to a computer program product, which performs inherently all the features of such method, is also patentable.
In effect, a computer program product is considered to comprise the necessary "further technical effect" by virtue of implementing the patentable method, which ensures that it is not excluded as a computer program "as such" under the EPC.
It is, therefore, 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.
This was a ground-breaking decision that if a method claim is patentable, then a computer program claim may also be directed to the claimed method. The judgment shifted the jurisprudence on the issue away from earlier interpretations; it allowed for the patentability of certain software, particularly when claimed as a product.
At Blaze Ventures, we have qualified professionals and elaborate processes for ensuring the ‘patentability’ of software product-based ideas, inventions and innovations.
