EPO 1984/1990: correct interpretation of Art 52 EPC

[PILCH Hartmut <phm@a2e.de>]

At

        http://legal.european-patent-office.org/dg3/biblio/t850022ep1.htm

the EPO rejects a patent application which is directed to a program
for computers.
  
In 1984, the EPO's examiners had rejected the patents
based on the original Examination Guidelines of 1978

        http://swpat.ffii.org/papers/epo-gl78/

saying that the claims referred to a program for computers in verbal
clothing.

The appellant argued on the basis of newer Guidelines and caselaw that
his claims are directed to further technical effects and not a program
as such.  This time, in 1990, the Board of Appeal evades the question
of what "programs for computer" are in the EPC context and instead
rejects the appeal by arguing indirectly that the use of
general-purpose computer hardware does not confer technicity on an
abstract method:

  Abstracting a document, storing the abstract, and retrieving it in
  response to a query falls as such within the category of schemes,
  rules and methods for performing mental acts and constitutes therefore
  non-patentable subject-matter under Article 52 EPC

  The mere setting out of the sequence of steps necessary
  to perform an activity, excluded as such from patentability under
  Article 52 EPC, in terms of functions or functional means to be
  realised with the aid of conventional computer hardware elements does
  not import any technical considerations and cannot, therefore, lend a
  technical character to that activity and thereby overcome the
  exclusion from patentability.

The EPO's judges, still in 1990, pronounce remarkable insights
such as:

   3. The requirement that an invention must have a technical character
   or in other words, must provide a technical contribution to the art is
   at the basis of a long-standing legal practice in at least the
   majority of Contracting States of the EPO. Neither from the terms of
   Article 52 EPC, nor from the legislative history of that Article as
   appearing from the preparatory documents can it be deduced that these
   Contracting States would have intended to deviate from their national
   laws and jurisprudence in this respect. On the contrary, it seems to
   be borne out by the list of exceptions in Article 52(2)(a) to (d) EPC
   that they did not wish to do so.

   ...

   7. The claims effectively seek protection for systems and methods in
   which conventional computer means are controlled by a program so as to
   carry out abstracting, storing or retrieving of documents in
   accordance with the said set of rules. The new contribution to the art
   made in the present case, however, lies clearly essentially in the
   provision of this set of rules. Insofar the claims have to be regarded
   as being related to subject-matter which is excluded under Article
   52(2) and (3) EPC as such.

   ...

   10. In the opinion of the Board it cannot have been intended by the
   Contracting States to the EPC that express exclusions from
   patentability could be circumvented simply by the manner in which the
   invention is expressed in a claim.
        
   ...

The Examining Division had in 1984 taken an even more straightforward
view of Art 52(2)(c), based on the then used Examination Guidelines:

   II. The reason given for the refusal was that the contribution to the
   art resided solely in a computer program as such within the meaning of
   Article 52 EPC, paragraphs 2(c) and

   3. Consequently, this subject-matter was not a patentable invention
   within the meaning of Article 52(1) EPC, in whatever form it was
   claimed.

   III. In arriving at this conclusion the Examining Division argued on
   the basis that Claims 1 and 2 related to a method for automatically
   abstracting and storing an input document in an information storage
   and retrieval system and Claims 3-6 to a corresponding method for
   retrieving a document from the system. The claims specifically
   referred to a dictionary memory, input means, a main memory and a
   processor. These hardware elements were classical elements of an
   information and retrieval system (as described e.g. in: Hillman,
   Proceedings Spring Joint Computer Conference, 1969, pp. 447-455) and
   objectionable under Article 54(2) EPC as lacking novelty. According to
   the present description (see page 4, line 26 to page 5, line 4 and
   lines 22 to 28 and page 6, line 15 to page 8, line 19) the method
   steps were implemented by programming such a classical system. The
   claimed combination of steps did not imply an unusual use of the
   individual hardware elements involved. The claims merely defined a
   collocation of known hardware and new software concerned with document
   information to be stored but not with an unexpected or unconventional
   way of operating the known hardware. The differences between the prior
   art and the subject-matter of the present application were defined by
   functions to be realised by a computer program which was used to
   implement a particular algorithm, or mathematical method, for
   analysing a document. In other words the steps of the method defined
   operations which were based on the content of the information and were
   independent of the particular hardware used.
 
It is difficult to see why a restoration of this straightforward view
of the law would lead to "irreconcilable conflicts with the EPO", as

        Arlene McCarthy's Draft Report
        http://swpat.ffii.org/papers/eubsa-swpat0202/amccarthy0302/

wants her fellow members of the European Parliament's Legal Affairs
Commission to believe.

This and other examples of correct interpretation of Art 52 EPC are
also discussed in

        http://swpat.ffii.org/analysis/epc52/        ;

The following pages have also been worked over:

        http://swpat.ffii.org/news/

        TAMAI 1998: Abstraction Orientation of Software vs
        Concreteness Requirement of Patents
        http://swpat.ffii.org/papers/ist-tamai98/

        Amendment Proposals
        http://swpat.ffii.org/papers/eubsa-swpat0202/prop/

        Schedule of Conferences near the Europarl 
        http://swpat.ffii.org/events/2003/europarl/

-- 
Hartmut Pilch, FFII & Eurolinux Alliance              tel. +49-89-12789608   
Protecting Innovation against Patent Inflation       http://swpat.ffii.org/
140,000 signatures against software patents      http://www.noepatents.org/