From epa98@doc.ic.ac.uk  Tue Oct 17 09:34:47 2000
Date: Tue, 17 Oct 2000 10:34:47 +0100 (BST)
From: Edward Avis epa98@doc.ic.ac.uk
Subject: [Patents] Re: Technical effect

>From: Steve Probert <steve.probert@patent.gov.uk>

>>Every program from Hello World onwards produces a technical effect
>>when run on a computer.
>>Or could you give the UK Patent Office's definition of techincal effect?
>
>The answer was given by the European Patent Office Appeal Board in
>IBM/ Homophone checker T65/86 1990 EPOR 181.  In this case, the Board
>rejected an application that checked whether homophones (eg there and
>their) had been correctly used in a text because it was essentially an
>intellectual rather than a technical matter and said :
>
>[Quote] Since the only conceivable use for a computer program is the
>running of it on a computer, the exclusion from patentability of
>programs for computers would be effectively undermined if it could be
>circumvented by including in the claim a reference to conventional
>hardware features, such as a processor, memory, keyboard and display,
>which, in practice, are indispensable if the program is to be used at
>all. [Unquote]
>
>Thus because putting a program in a computer is the only conceivable
>thing that you can do with a program, it does not qualify as a
>patentable practical application.

That would seem to imply that all computer programs are excluded from
patentability.  But that does not seem to be the case judging by the
EPO's later decisions.

Unisys claim to have patents in Europe (including the UK) for the LZW
algorithm.  I'm not sure how this has a technical effect, or qualifies
as 'software not as such', if IBM's homophone checker did not.

How is the criterion of technical effect applied in practice?

-- 
Ed Avis
epa98@doc.ic.ac.uk





