Patentability of
computer programs
Klaas de Vries August 2009
Patentability of computer programs
Klaas de Vries August 2009
Contents
Contents Preface
Chapter 1 – Pre-Aerotel case law of the TBA
§ 1.1 The “technical contribution” approach of the TBA § 1.2 The paradigm shift
§ 1.3 Basis for novelty and inventive step Chapter 2 – Aerotel
§ 2.1 An overarching principle § 2.2 The Appendix
§ 2.3 Criticism
Chapter 3 – Post-Aerotel case law of the TBA § 3.1 Duns § 3.2 Gameaccount Chapter 4 – Symbian § 4.1 Astron Clinica § 4.2 Duns § 4.3 Reconcilability § 4.4 Technical effect § 4.5 Gameaccount Chapter 5 - The Referral
Conclusion
Bibliographic Overview Case Law Overview
Preface
Article 52 (1) EPC stipulates that European patents shall be granted for: “inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application”. Paragraph 2 enumerates a number of types of subject-matter which “shall not be regarded as inventions within the meaning of paragraph 1”, amongst which are “programs for computers”. Paragraph 3 clarifies that paragraph 2 “shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such” (underlining added).
Article 52 EPC has been implemented in the national laws of the Member States of the EPC, amongst which the United Kingdom. Paragraphs 1 and 2 of Article 1 of the UK Patents Act 1977 are practically identical to Article 52 EPC. Slight existing differences in formulation are generally deemed irrelevant.1
During the 1980’s and the beginning of the 1990’s, the Technical Board of Appeal (“TBA”) of the EPO developed its so-called “technical contribution” approach in order to determine whether claimed subject-matter which related to the exclusions of Article 52 (2) and (3) EPC (specifically: computer programs) could nevertheless be regarded as a patentable “invention” in the sense of Article 52 (1) EPC.
From the midst of the 1990’s onwards, the TBA gradually shifted its attention from the criterion for claimed subject-matter to form an “invention” in order for it to be
patentable, to those of it being novel and involving an inventive step. The exclusions of Article 52 (2) and (3) EPC were slowly but surely interpreted more and more
restrictively.
This “paradigm shift” by the TBA was criticized by Jacob LJ in the Aerotel decision of the UK Court of Appeal.2 The TBA responded to the criticism in T 0154/04 (Duns) and considered that the UK Court of Appeal on some points misinterpreted both the EPC and the case law of the TBA.3
In its Symbian decision the UK Court of Appeal subsequently, after having observed that in Aerotel and T 0154/04:
“(…) each tribunal was rather deprecatory about the approach of the other”; considered:
“However, at least as a matter of broad principle, it seems to us that the approaches in the two cases and indeed in the great majority of cases in this jurisdiction and in the EPO, are, on a fair analysis, capable of reconciliation”.
1 UK Court of Appeal 27 October 2006, case [2006] EWCA Civ 1371 (Aerotel) § 6; UK Court of Appeal 8 October 2008, case [2008] EWCA Civ 1066 (Symbian) § 6.
2 UK Court of Appeal 27 October 2006, case [2006] EWCA Civ 1371 (Aerotel). 3
TBA 15 November 2006, case T 0154/04 (Duns).
Promptly following the judgment of the UK Court of Appeal in Symbian, the President of the EPO posed a number of questions to the EBA regarding the patentability of computer programs.4
In this thesis, we will explore the difficulties surrounding the interpretation of the exclusion of computer programs as such from patentability. In this regard, the most relevant case law of the TBA and the UK Court of Appeal as well as the questions recently posed to the EBA will be critically discussed.
4
EBA pending referral, case G 0003/08.
Chapter 1 – Pre-Aerotel case law of the TBA
§ 1.1 The “technical contribution” approach of the TBA
A starting point for the “technical contribution” approach can be found in T 0208/84 (Vicom) in which the TBA more or less superfluously considered:
“16. (...) Generally speaking, an invention which would be patentable in
accordance with conventional patentability criteria should not be excluded from protection by the mere fact that for its implementation modern technical means in the form of a computer program are used. Decisive is what technical
contribution the invention as defined in the claim when considered as a whole makes to the known art. Finally, it would seem illogical to grant protection for a technical process controlled by a suitably programmed computer but not for the computer itself when set up to execute the control” (underlining added). 5
This “technical contribution” approach evolved further in subsequent decisions of the TBA. In T 0022/85 (Document abstracting and retrieving/IBM) the TBA considered that the exclusions of Article 52 (2) EPC:
“have in common that they refer to activities which do not aim at any direct technical result but are rather of an abstract and intellectual character”. From this common factor of an “abstract and intellectual character” which was
attributed to the exclusions of Article 52 (2) EPC, the TBA derived a requirement for an invention to have “technical character” which, in the same sentence, was considered synonymous to the provision of a “technical contribution to the art”, the phrase used previously in § 16 of T 0208/84 (Vicom):
“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” (underlining added).
The question whether a “technical contribution to the art” has been provided was thus applied by the TBA as a criterion to ascertain whether claimed subject-matter qualified as an “invention” in the sense of Article 52 (1) EPC.
The TBA in T 0022/85 (Document abstracting and retrieving/IBM) further stressed that the mere setting out of the sequence of steps necessary to perform an activity excluded from patentability in terms of functions or functional means to be realized with the aid of conventional computer hardware elements does not import any technical
considerations and therefore cannot lend a “technical character” to that activity.6
Both the assessment by the TBA that a common factor of the exclusions of Article 52 (2) EPC is their abstract and intellectual character, as well as its opinion that the mere use
5 TBA 15 July 1986, case T 0208/84 (Vicom). 6
TBA 5 October 1988, case T 0022/85 (Document abstracting and retrieving/IBM).
of conventional hardware elements cannot qualify excluded subject-matter as an invention ex Article 52 (1) EPC, were recurring factors in its early case law.7 § 1.2 The paradigm shift
In the course of the 1990’s however, the TBA started to lean toward a position that the question whether claimed subject-matter involves a “contribution to the art in a field not excluded from patentability” is not relevant with regard to the requirement of invention, but with regard to the requirements of novelty and inventive step. A first indication of this shift in the line of thinking of the TBA was given in T 1002/92 (Queueing system/PETTERSON).8
A definite departure by the TBA from the “technical contribution” approach as a means to determine whether subject-matter forms an “invention” in the sense of Article 52 (1) EPC followed in T 1173/97 (Computer program product/IBM). In this decision, the TBA considered that “technical character” of claimed subject-matter should be found in a “further technical effect” which may be known in the prior art. According to the TBA:
“8. (…) 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)”.9
This consideration formed an explicit departure from the previous case law of the TBA, in which the question whether a technical contribution to the prior art is achieved was deemed relevant with regard to the requirement for subject-matter to be considered an invention.
§ 1.3 Basis for novelty and inventive step
In its case law following T 1173/97, the TBA gradually interpreted the exclusion(-s) of Article 52 (2) EPC more and more restrictively. The TBA however did start to
formulate some rules on how and on the basis of which features of claimed subject-matter the presence of an inventive step should be assessed.
In T 0931/95 (Pension Benefits) the TBA considered that a computer system suitably programmed for use in a particular field “has the character of a concrete apparatus (…) and is thus an invention within the meaning of Article 52 (1) EPC”. According to the TBA therefore, a claim directed to such a computer programmed to perform a business method or a computer program qualifies as an invention. This was in clear contradiction to the previous case law of the TBA in which it was repeatedly decided that the mere implementation of an excluded method on a general-purpose computer did not render such a method patentable if no technical contribution to the art was made.
7 See e.g. TBA 21 May 1987, case T 0026/86 (Koch & Sterzel); T 0163/85 (Colour television signal/BBC); T 0204/93 (System for generating software source code/ATT); T 0186/86
(Text-processing/IBM); T 0158/88 (Schriftzeichenform/SIEMENS); T 0110/90 (Printer control items/IBM) and T 0769/92 (Sohei).
8 TBA 6 July 1994, case T 1002/92 (Queueing system/PETTERSON). 9
TBA 1 July 1998, case T 1173/97 (Computer program product/IBM).
With regard to a method claim in the case at hand the TBA however still considered that the mere fact that “data processing and computing means” were defined in the claim did not confer the necessary technical character to consider it to form an invention.
With regard to the requirement of inventive step, the TBA finally considered that this should be assessed from the point of view of a person skilled in the art who is taken to already have the knowledge of the business method.10
In T 0641/00 (Comvik) the TBA on the basis of the “problem-and-solution approach” decided that where a feature cannot be considered as contributing to the solution of any technical problem by providing a technical effect, it has no significance for the purpose of assessing inventive step. According to the TBA, although the non-technical features may appear in the formulation of the problem, they should not be regarded as
contributing to the solution, which is why in Pension Benefits the non-technical business method was considered to belong to the knowledge of the skilled person.11 In T 0258/03 (Hitachi) the TBA explicitly acknowledged that for assessing the requirement of the presence of an invention, it initially applied the contribution approach which relied on meeting further requirements (in particular novelty and/or inventive step) but that in more recent decisions any comparison with the prior art was found to be inappropriate for examining the presence of an invention, and that
determining the technical contribution an invention achieves with respect to the prior art is more appropriate for the purpose of examining novelty and inventive step.
In the case at hand, the TBA in conformity with T 0931/95 (Pension Benefits) held the apparatus claim to be an invention, since it comprised technical features. The TBA then however considered that its reasoning in this regard is independent of the category of the claim and differed from T 0931/95 (Pension Benefits) in the sense that it also held the method claim in the case at hand not to be excluded under Article 52 (2) EPC, because it made use of “technical means”.
The TBA stressed that its broad interpretation of the term “invention” of Article 52 (1) EPC does not mean that all methods involving the use of technical means will be patentable, since they still have to meet the other three requirements for patentability. Eventually, the invention claimed in the case at hand was indeed deemed unpatentable by the TBA because it lacked an inventive step (taking account only of the features which contributed to a technical character).12
In T 0424/03 (Microsoft/Data transfer) the TBA considered that since it was decided in Hitachi that a method “using technical means” is an invention within the meaning of Article 52(1) EPC, and a computer system is a “technical means”, a method
implemented in a computer system (as claimed in the case at hand) has “technical character” in accordance with established case law and (therefore) qualifies as an invention ex Article 52(1) EPC. The TBA then examined patentability over the nearest
prior art (Windows 3.1) and held the invention new and non-obvious.13
10 TBA 8 September 2000, case T 0931/95. 11 TBA 26 September 2002, case T 0641/00. 12 TBA 21 April 2004, case T 0258/03 (Hitachi). 13
TBA 23 February 2006, case T 0424/03 (Microsoft/Data transfer).
Chapter 2 – Aerotel
§ 2.1 An overarching principle
The “paradigm shift” by the TBA was criticized by Jacob LJ in the Aerotel judgment of the UK Court of Appeal. In this judgment, Jacob LJ considered that it is not possible to form an overall approach to the different categories excluded from patentability in Article 52 (2) and (3) EPC and found confirmation for this consideration in the travaux preparatoires to the EPC. This was in contravention to the consistent case law of the TBA in which it deemed the abstract and intellectual character to be the common factor of the exclusions.
§ 2.2 The Appendix
Jacob LJ set out the relevant case law of the TBA and the UK Courts in an Appendix to the judgment, in which he discussed the “paradigm shift” by the TBA, represented most clearly in his opinion by T 0931/95 (Pension Benefits), T 0258/03 (Hitachi) and T 0424/03 (Microsoft/Data Transfer). He pointed out that the TBA in T 0258/03 (Hitachi) differed from T 0931/95 (Pension Benefits) in holding the method claim not to be excluded by Article 52 (2) EPC, but eventually nevertheless refusing the method claim on the ground of obviousness. According to Jacob LJ the TBA therefore used the same “device” as in T 0931/95 (Pension Benefits). With regard to T 0424/03 (Microsoft/Data Transfer), Jacob LJ draws attention to the fact that the TBA held the invention new and non-obvious in light of Windows 3.1 as the nearest prior art and thereby did not do what was done in T 0931/95 (Pension Benefits), namely to treat the unpatentable computer program as such as part of the prior art.
§ 2.3 Criticism
Jacob LJ in his main judgment criticized the new approach of the TBA as follows: “27. We begin with the last approach, that a claim to hardware is enough, an approach shared by the trio. Some examples outside the context of computer programs and methods of doing business show why it must be wrong. Consider for instance the following:
i) a claim to a book, e.g. to a book containing a new story the key elements of which are set out in the claim;
ii) a claim to a standard CD player or iPod loaded with a new piece of music. Everyone would agree that the claims must be bad – yet in each case as a whole they are novel, non-obvious and enabling. To deem the new music or story part of the prior art (the device of Pension Benefits and Hitachi) is simply not intellectually honest. And, so far as we see, the Microsoft approach, which discards that device, would actually lead to patentability”.
What he seems to disregard however is that what the TBA actually does in its new approach is that it bases novelty and inventive step solely on the technical part of the
invention. The “device” of T 0931/95 (Pension Benefits) is merely a manner to achieve this, as was explained by the TBA in T 0641/00 (Comvik). In T 0258/03 (Hitachi) no “device” was used in this regard. The method claim was simply assessed with respect to the requirement of inventive step by taking account of only those features which
contribute to a technical character.
In his judgment, Jacob LJ further describes a “contribution approach” as originally applied by Falconer J in 1988 in the judgment in first instance in Merrill Lynch. Jacob LJ summarizes this approach as follows:
“ask whether the inventive step resides only in the contribution of excluded matter – if yes, art. 52 (2) applies”.
He differs this approach from the “technical contribution approach” as applied by the TBA first in T 0208/84 (Vicom) and followed subsequently by the UK Courts with the rider that inventive excluded matter could not count as a technical contribution (referred to by Jacob LJ as the “technical effect approach”). Personally, I do not see a difference between these two approaches.
Jacob LJ then discusses an objection to the “contribution approach” as follows: “33. The first objection is that it involves an inquiry as to what is old, whereas you ought to be able to determine whether an exclusion applies just by
considering what is claimed – is this the sort of thing excluded? If one thinks about this however, particularly with the aid of examples, one can see that the inquiry may inevitably involve a question of discerning what is old so that it can be excluded. Take for instance a claim to a hard drive loaded with a piece of music. If it is an old hard drive, all that has been added is an excluded item. And this would be so even if the claim went to the trouble of spelling out element by element all the features of the old hard drive. But suppose the hard drive specified were itself new and inventive? Then a claim to such a drive loaded with a piece of music would be allowable. It would not be the individual piece of music (even if new) which caused the claim to escape Art.52(2) but the newness of the kind of hard drive on which the music was loaded. Of course in practice an inquiry as to what is old may not be difficult – indeed it will generally be self-evident. Claims to a piece of music or a computer program loaded onto a known form of medium, or a claim to a particular system of conducting business over the internet using standard hardware are good examples. No detailed
examination of the prior art is necessary there”.
As we have seen in the first chapter, this objection also applies to the “technical contribution approach” applied initially by the TBA and in fact was the reason for the paradigm shift by the TBA.14 I however do not find the rebuttal of this objection by Jacob LJ convincing. First of all, what does he mean by “the inquiry” in the second sentence which “may inevitably involve a question of discerning what is old so that it can be excluded”. If this refers back to “it” (being the “contribution approach”) in the first sentence involving “an inquiry” as to what is old, then he is repeating the objection. If he means “the inquiry” in general whether something is excluded, then I don’t see
14
See e.g. T 1173/97 (Computer program product/IBM) and T 0258/03 (Hitachi).
why this general inquiry “may inevitably involve a question of discerning what is old so that it can be excluded”. On the contrary, this general inquiry should, in conformity with the objection, simply ascertain whether the claimed subject-matter as a whole, both its old and its new elements, is excluded or not. In case Jacob LJ refers to the general “inquiry”, the examples he gives do not convince me. In these examples he applies the “contribution approach” and thereby perfectly demonstrates the trueness of the
objection that it unjustly involves a question of discerning what is old. According to the new approach of the TBA, the old hard drive with a new piece of music would not be excluded on the basis of Article 52 (2) (c) and (3) EPC. It would nevertheless most likely not be patentable for reasons of novelty and / or inventive step.
Another reason why the “contribution approach” is only suitable to determine whether something is new and / or involves an inventive step, and not to determine why
something qualifies as an “invention”, is that this would cause a lot of inventions which are already known or are more or less trivial from the perspective of the prior art, to fall by the wayside. As Bostyn points out, this is an incorrect interpretation of the concept of “invention”.15 The UK Court of Appeal in Aerotel does not address this and other objections to the “contribution approach”.
Jacob LJ finally considered an approach urged upon him by the Comptroller, consisting of four steps to ascertain whether an invention is excluded or not:
(1) properly construe the claim; (2) identify the actual contribution;
(3) ask whether it falls solely within the excluded subject matter;
(4) check whether the actual or alleged contribution is actually technical in nature.
Jacob LJ regarded this approach to be consistent with what had been decided previously by his Court and applied it to the case at hand. At the end of his judgment, Jacob LJ proposed a number of questions which might be posed to the Enlarged Board of Appeal (“EBA”) of the EPO on the basis of Article 112 EPC.16
15 S.J.R. Bostyn, ‘Ik denk, dus ik krijg een octrooi. Octrooieerbaarheid van bedrijfsvoeringmethodes en ideeën in Europa en de VS’, BIE 2001-3, p. 80-81.
16
UK Court of Appeal 27 October 2006, case A3/2006/1007 and A3/2006/1067.
Chapter 3 – Post-Aerotel case law of the TBA
§ 3.1 Duns
In T 0154/04 (Duns), the TBA responded to the criticism delivered by Jacob LJ in the Aerotel judgment of the UK Court of Appeal. At the oral proceedings in this case, the appellant submitted questions for referral to the EBA which read exactly the same as those proposed earlier by Jacob LJ, as well as some additional questions. The TBA however considered that it had no doubts as to how the questions should be answered and summarized its relevant case law as follows:
“(A) Article 52(1) EPC sets out four requirements to be fulfilled by a patentable invention: there must be an invention, and if there is an invention, it must satisfy the requirements of novelty, inventive step, and industrial applicability.
(B) Having technical character is an implicit requisite of an "invention" within the meaning of Article 52(1) EPC (requirement of "technicality").
(C) Article 52(2) EPC does not exclude from patentability any subject matter or activity having technical character, even if it is related to the items listed in this provision since these items are only excluded "as such" (Article 52(3) EPC). (D) The four requirements invention, novelty, inventive step, and susceptibility of industrial application are essentially separate and independent criteria of patentability, which may give rise to concurrent objections. Novelty, in
particular, is not a requisite of an invention within the meaning of Article 52(1) EPC, but a separate requirement of patentability.
(E) For examining patentability of an invention in respect of a claim, the claim must be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention.
(F) It is legitimate to have a mix of technical and "non-technical" features appearing in a claim, in which the non-technical features may even form a dominating part of the claimed subject matter. Novelty and inventive step, however, can be based only on technical features, which thus have to be clearly defined in the claim. Non-technical features, to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features "as such", do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step.
(G) For the purpose of the problem-and-solution approach, the problem must be a technical problem which the skilled person in the particular technical
field might be asked to solve at the relevant priority date. The technical problem may be formulated using an aim to be achieved in a nontechnical
field, and which is thus not part of the technical contribution provided by the invention to the prior art. This may be done in particular to define a constraint that has to be met (even if the aim stems from an a posteriori knowledge of the invention)”.
With regard to T 0208/84 (Vicom) the TBA considered the following:
“As expressed in the VICOM decision T 208/84 (supra), Reasons No. 16, "decisive [for the invention to be patentable] is what technical contribution the
invention as defined in the claim when considered as a whole makes to the known art". This principle is referring to the patentable invention, i.e. an invention meeting all the patentability criteria of the Convention. VICOM thus does not postulate that the technical contribution to the prior art is the actual criterion to be applied for deciding on the requirement of invention”.
I tend to agree with the position taken by the TBA here that its previous consideration in T 0208/84 (Vicom) does not necessarily postulate that the technical contribution to the prior art is the actual criterion to be applied for deciding on the requirement of invention. The TBA however simply seems to ignore the fact that it has itself before interpreted T 0208/84 (Vicom) in exactly that manner, specifically in T 0022/85 (Document
abstracting and retrieving/IBM). As mentioned above in Chapter 1, the TBA in the latter decision derived a requirement for an invention to have “technical character” from the common factor of an “abstract and intellectual character” attributed to the exclusions of Article 52 (2) EPC, which in the same sentence was considered synonymous to the provision of a “technical contribution to the art”. In this decision therefore, the TBA did consider a “technical contribution to the art” to form the criterion for deciding on the requirement of invention.
The TBA in T 0154/04 (Duns) continued to consider that the requirement of invention is fulfilled by the presence of “technical character” and that the lack of it is the common feature of the non-inventions enumerated non-exhaustively in Article 52 (2) EPC. The TBA therefore abided by its opinion that there is an overarching principle covering the exclusions of Article 52 (2) EPC, despite of the considerations given in Aerotel by Jacob LJ in this regard. To substantiate its opinion, the TBA referred to the Conference of the Contracting States to Revise the European Patent Convention and quoted from the Basic Proposal drafted there.
With regard to the legal concept of “invention” it applies in the context of Article 52 EPC, the TBA further notes that this:
“(…) should not be mixed up with the layman's ordinary understanding of invention as a novel, and often also inventive contribution to the known art. Using these two very different concepts of invention in one breath would be a legal fallacy”;
and:
“The "technical effect approach" endorsed by Lord Justice Jacob in the
Aerotel/Macrossan judgement (see paragraphs Nos. 26(2) and 38) seems to be rooted in this second ordinary meaning of the term invention, a practice which might be understandable "given the shape of the old law" (Lord Justice Mustill, loc.cit.), but which is not consistent with a good-faith interpretation of the European Patent Convention in accordance with Article 31 of the Vienna Convention on the Law of Treaties of 1969”.
The TBA again stressed that any reference to the prior art is unfitting in the context of determining whether an “invention” as – negatively – defined by Article 52 (2) and (3) is being claimed, and that this is exactly the reason why the “contribution” or “technical effect” approach was abandoned by the TBA some ten years ago. Although the TBA, as
pointed out above, now seemed to interpret T 0208/84 (Vicom) thus that it does not postulate a “technical contribution” criterion to be applied for deciding on the
requirement of invention, it apparently does not deny that such a criterion was applied in its case law up and until some ten years before its present decision.
The TBA further considered that the “technical effect approach (with the rider)” as applied in Aerotel is irreconcilable with the European Patent Convention since it presupposes that “novel and inventive purely excluded matter does not count as a ‘technical contribution’ whilst a non-technical feature must count as a contribution to the technical character to the extent that it interacts with technical elements and thus contributes to a technical effect.
Novelty and inventive step according to the TBA can only be established on the basis of the technical features of the invention. The TBA then however considered that non-technical features cannot establish novelty or inventive step “to the extent that they do not interact with technical features to produce a technical effect”, which – a contrario – seems to suggest that to the extent that non-technical features do interact with technical features to produce a technical effect, they can establish novelty or inventive step. This line of thought is further pursued by the TBA in subsequent decisions.17
The TBA further noted that the comment of Jacob LJ in Aerotel that to deem the non-technical features part of the prior art would not be intellectually honest: “misses the point of the approach used by the Board to determine the technical features in a claim if technical and non-technical aspects are tightly intermingled in a mixed type claim, as it is typically the case with computer-implemented inventions”.18
The TBA in T 0154/04 (Duns) did not specifically respond to the criticism given by Jacob LJ in Aerotel, that the TBA in T 0424/03 (Microsoft/Data transfer) established novelty and inventive step in light of Windows 3.1 as the nearest prior art (and therefore apparently on the basis of the non-technical features of the claimed subject-matter, viz. the computer program). There was also no reasoning applied in that case which boiled down to the computer program interacting with technical features to produce a technical effect and establishing novelty and inventive step for that reason. Perhaps this particular case should therefore be regarded as a faux pas by the TBA.
§ 3.2 Gameaccount
In T 1543/06 (Gameaccount) the TBA repeated its previous assertion in T 0154/04 (Duns) that differences in interpretation of the legal concept of “invention” may lie at the heart of the criticisms delivered by Jacob LJ in Aerotel.
With regard to inventive step, the TBA further considered that an invention which as a whole falls outside of the exclusion zone of Article 52 (2) EPC cannot rely on excluded subject matter alone for it to be considered to meet the requirement of inventive step. The TBA pointed out that it follows there from that the mere technical implementation of excluded subject-matter per se cannot form the basis for inventive step, that inventive step can be based only on the particular manner of implementation and that it is
17
See e.g.: TBA 7 March 2007, case T 1284/04 (Loan system/KING); TBA 18 April 2007, case T 1351/04 (File search method/FUJITSU); and: TBA 5 March 2008, case T 1188/04 (Sharp). 18
TBA 15 November 2006, case T 0154/04 (Duns).
therefore necessary to ask how the per se excluded subject-matter is implemented. The TBA then argued that a consideration of the particular manner of implementation must focus on any further technical advantages or effects, and recalled that the explicit requirement of a further technical effect had first been formulated in T 1173/97 (Computer program product/IBM).
We should keep in mind however, that in T 1173/97 (Computer program product/IBM), the TBA considered a “further technical effect” to be a circumstance causing subject-matter not to be excluded under Article 52 (2) and (3) EPC c.q. causing subject-subject-matter to form an “invention” in the sense of Article 52 (1) EPC, whereas in the present case the TBA considered the causing of a “further technical effect” to be a requirement for subject-matter to be taken into consideration with regard to inventive step.
The TBA superfluously pointed out that even when adopting the approach as favoured by the UK Court of Appeal in Aerotel, the claimed invention would fail to meet all patentability requirements. It should be noted though that applying this approach would lead to the conclusion that the actual contribution falls solely within subject-matter excluded under Articles 52 (2) and (3) EPC and therefore to the – different – result that the claimed subject-matter fails the requirement that it can be considered an invention in the sense of Article 52 (1) EPC.19
19
TBA 29 June 2007, case T 1543/06 (Gameaccount).
Chapter 4 – Symbian
§ 4.1 Astron Clinica
In Symbian the UK Court of Appeal made an attempt to reunite its approach as
explained in Aerotel with that of the TBA in recent cases. The invention with which the Symbian case was concerned, according to its specification, related to:
“a method of accessing data in a computing device and, in particular to a method of accessing data held in a dynamic link library in the computing device. The present invention also relates to a computing device controlled by the method”.
In the judgment in first instance, Patten J first referred to a judgment rendered by the UK High Court of Justice two months earlier in the Astron Clinica case, in which Kitchen J explained that:
“18. (…) there is no reason in principle to exclude claims to computer programs from patentability under Art.52 where the claims to a method performed by running a suitably programmed computer or to a computer program to carry out the method are allowable. The question in each case is whether the technical effect produced by the invention is sufficient to make it patentable or whether (to use the words of Art.52 (3)) it is more than a patent for the computer program as such” (underlining added).
In the Astron Clinica judgment, Kitchin J had indeed decided that it does not necessarily follow from Aerotel that computer programs are excluded from patentability. Kitchin J however still followed the old-fashioned approach that such computer programs should bring about a “further technical effect” in order to be considered an invention. As we have seen, in the new approach of the EPO, the technical character of a computer program required for it to be considered an invention can be established much more easily.
§ 4.2 Duns
In the Symbian case, Patten J eventually came to the conclusion that the Hearing Officer took too narrow a view of the technical effect of the invention and was wrong to
exclude it from patentability on the basis that it amounted to no more than a computer program.20
The Comptroller General of Patents appealed this decision, which led to a judgment of the UK Court of Appeal (given by Neuberger L) on 8 October 2008. In this judgment, the UK Court of Appeal first recalled that in Aerotel, Jacob LJ adopted a four stage approach to determine whether or not claimed subject-matter forms an invention. The UK Court of Appeal pointed out that this decision did not purport to represent a new departure in domestic law, because the UK Court of Appeal regarded itself as bound by
20
UK High Court of Justice 18 March 2008, case [2008] EWHC 518 (Pat).
the approach adopted in three of its previous decisions: Merrill Lynch, Gale and Fujitsu. The UK Court of Appeal then considered:
“9. The approach of this court in Aerotel was considered by the Board in Duns Licensing Associates T 0154/04, 15th November 2006. In [5(C)], the Board held that inherent in the concept of "an invention" in the EPC was "any subject matter or activity having technical character" and that a contribution could be patentable "even if it was related to the items listed in [art. 52(2)] since these items were only excluded 'as such' – art. 52(3)". There is a consistent thread throughout the Duns decision that, in order to be patentable, a contribution must be "technical", or at least must have "technical features" or "features which contribute to the technical character of the invention" – see e.g. [5(D) (F) and (G)]. We would refer in particular to [14], where the Board stated that "novelty and inventive step can only be established on the basis of the technical features of the invention."
As we have seen above in Chapter 3 however, the TBA in T 0154/04 (Duns) did not hold that a “contribution” could be patentable even if related to the items listed in Article 52 (2) EPC, but that “subject matter or activity having technical character” is not excluded from patentability by Article 52 (2) even if related to the items listed in this provision. It is noticeable that the UK Court of Appeal replaces “subject matter or activity having technical character” (c.q. that which is being claimed) by a
“contribution” as if these were synonymous. This seems to confirm the consideration of the TBA in T 0154/04 (Duns) as repeated in T 1543/06 (Gameaccount) that the UK Court of Appeal mixes up the legal concept of “invention” applied by the TBA in the context of Article 52 EPC with “the layman’s ordinary understanding of invention as a novel, and often also inventive contribution to the known art”.
There is no consistent thread in T 0154/04 (Duns) that a “contribution” must be
technical in order to be patentable (as alleged by the UK Court of Appeal). There is no such thing as a patentable “contribution”. (An invention may be patentable.) What the TBA did consider in paragraphs 5 (D), (F), (G) and 14 referred to by the UK Court of Appeal is that novelty and inventive step can only be established on the basis of the technical features of the invention and that non-technical features “to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features “as such”, do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step”.
§ 4.3 Reconcilability
The UK Court of Appeal in Symbian continued its considerations as follows:
“10. This Court in Aerotel (...) suggested that it might be adopting a somewhat different approach from that taken by the Board in some of its decisions. Similarly in Duns (...) the Board indicated that it was taking a different
approach from that adopted by the Court of Appeal. Indeed, each tribunal was rather deprecatory about the approach of the other (...)
11. However, at least as a matter of broad principle, it seems to us that the approaches in the two cases and indeed in the great majority of cases in this
jurisdiction and in the EPO, are, on a fair analysis, capable of reconciliation. The third stage mandated in Aerotel, which we would have thought normally raises the crucial issue, is whether the alleged contribution is excluded by Article 52(2), as limited by art 52(3). So far as we can see, there is no reason, at least in principle, why that test should not amount to the same as that identified in Duns, namely whether the contribution cannot be characterised as
"technical". In effect, this can be said to involve conflating the third and fourth stages in Aerotel, a conflation which is easy to accept bearing in mind that it was said in Aerotel that the fourth stage, while required by Merrill Lynch, was unlikely to add anything to the third stage (a view supported by Kitchin J in Astron Clinica Ltd v Comptroller-General [2008] RPC 14, [49] and by Patten J in this case at [44])” (underlining added).
There however is no test in T 0154/04 (Duns) “whether the contribution cannot be characterised as “technical”. There is a test in T 0154/04 (Duns) for: - claimed subject matter to have technical character in order to be considered an invention; and for: - novelty and inventive step to be established on the basis of the technical features of the invention.
For as far as the UK Court of Appeal means that the third stage in Aerotel (whether the alleged contribution is excluded by Article 52 (2) as limited by Article 52 (3) EPC) amounts to the same as the “test” mentioned in T 0154/04 (Duns) that novelty and inventive step can only be established on the basis of the technical features of the invention, it should be borne in mind that the third stage in Aerotel is applied in the context of the first requirement for subject-matter to form an invention, whereas the “test” of T 0154/04 (Duns) is applied with regard to the separate criteria of subject-matter being novel and involving an inventive step.
§ 4.4 Technical effect
The UK Court of Appeal went on to interpret the decision of the TBA in T 0154/04 (Duns) as follows:
“13. As for the Board's approach in Duns, it appears to us to involve explaining the limitation "as such" in art 52(3) as imposing a requirement that a computer program has a technical effect before it is patentable. Of course, this can be said to beg the question as to what constitutes technical effect, but the point remains that the requirement represents the Board's view of the effect of art 52(2) and art 52(3). Accordingly, at least on the question of the proper approach to an art 52 argument, there is no necessary inconsistency between the two decisions”. Contrary to what the UK Court of Appeal suggests however, the TBA’s approach in T 0154/04 (Duns) did not involve explaining the limitation “as such” in Article 52 (3) EPC as imposing a requirement that a computer program has a technical effect before it can be considered an “invention” (and thereby fulfils the first criterion required for it to be patentable) but instead involves explaining Articles 54 and 56 EPC as imposing a requirement that a computer program interacts with technical elements so as to produce a technical effect in order for it to be taken into account when assessing novelty and inventive step.
§ 4.5 Gameaccount
The UK Court of Appeal subsequently stated that it was “fortified in reaching this view” by the more recent decision of the TBA in T 1543/06 (Gameaccount) and quoted a consideration from the TBA in that decision:
“14. We are fortified in reaching this view by a more recent decision of the Board given on 29 June 2007, Gameaccount Ltd T 1543/06. In that case, at para 2.5, after expressly considering Aerotel and Duns, and in words reminiscent of those used in both those decisions, the Board said this:
"[A]n invention which as a whole falls outside the exclusion zone of [art 52(2)] (i.e. is technical in character) cannot rely on excluded subject matter alone, even if it is novel and non-obvious (in the colloquial sense …), for it to be considered to meet the requirement of inventive step. … [I]t cannot have been the legislator's purpose and intent on the one hand to exclude from patent protection such subject matter, while on the other hand awarding protection to a technical implementation thereof, where the only identifiable contribution of the claimed technical
implementation to the state of the art is the excluded subject-matter itself. It is noted that here the term 'contribution' encompasses both means (i.e. tangible features of the implementation) and effects resulting from implementation".
Again however, the UK Court of Appeal seems to ignore the fact that the cited consideration of the TBA pertained to inventive step and not to the requirement of invention. As a matter of fact, the TBA in T 1543/06 (Gameaccount) explicitly considered that whereas the “contribution approach” was previously used to assess technical character as the requirement imposed by Article 52 EPC, this approach was abandoned in recent case law of the TBA in favour of one which recognizes the requirement of technical character as separate and independent of the remaining requirements of novelty and inventive step (§ 2.2). The TBA in T 1543/06
(Gameaccount) further considered (§ 2.4) that it was aware of the criticism of its new approach as expressed in Aerotel but explained, pursuant to T 0154/04 (Duns), that possible differences in interpretation of the legal concept of “invention” may lie at the heart of the criticisms. In fact, the TBA in T 1543/06 (Gameaccount) did apply a “further technical effect” test again (§ 2.8) but this time as a requirement for subject-matter to be taken into consideration with regard to inventive step.
The UK Court of Appeal to my mind in Symbian therefore wrongfully concluded: 15. In our opinion, that approach is consistent with that of this court in Aerotel as well as with that of the Board in Duns. It plainly requires one to identify "the contribution" (which equates to stage 2 in Aerotel) in order to decide whether that contribution is solely "the excluded subject-matter itself" (equating to stage 3 in Aerotel), while emphasising that the contribution must be "technical" (effectively stage 4 in Aerotel). The order in which the stages are dealt with is
different, but that should affect neither the applicable principles nor the outcome in any particular case”.21
21
UK Court of Appeal 8 October 2008, case [2008] EWCA Civ 1066.
Chapter 5 –The Referral
Promptly following the judgment of the UK Court of Appeal in Symbian, the President of the EPO (Ms. Brimelow) posed a number of questions to the EBA regarding the patentability of computer programs. The questions differ from those proposed earlier in Aerotel and T 0154/04 (Duns) and read as follows:
1) Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?
2) (A) Can a claim in the area of computer programs avoid exclusion under art. 52(2)(c) and (3) merely by explicitly mentioning the use of a
computer or a computer-readable data storage medium?
(B) If question 2 (A) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?
3) (A) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?
(B) If question 3 (A) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?
(C) If question 3 (A) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used? 4) (A) Does the activity of programming a computer necessarily involve
technical considerations?
(B) If question 4 (A) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim? (C) If question 4 (A) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed? 22
Previously, in 2006, the then President of the EPO (Mr. Pompidou) in response to the Aerotel judgment had informed Jacob LJ that to his opinion there was insufficient legal basis for a referral under Article 112 (1) (b) EPC because there are insufficient
differences between current TBA decisions dealing with Article 52 EPC exclusions. In his view, the appropriate moment for a referral would be where the approach taken by one TBA would lead to the grant of a patent whereas the approach taken by another
22
EBA pending referral, case G 0003/08.
TBA would not.23 It should be noted here that Article 112 (1) (b) EPC does not necessarily require differences between current TBA decisions in order for the President of the EPO to refer a point of law to the EBA.
Nevertheless, as the TBA pointed out in T 0154/04 (Duns), Article 15 (1) of the Rules of Procedure of the Boards of Appeal (“RPBA”) gives the TBA the liberty to deviate from an interpretation or explanation of the EPC given in an earlier decision, provided the grounds for such a deviation are given (or the grounds are in accordance with an earlier opinion or decision of the EBA). The TBA in T 0154/04 (Duns) on this basis rightfully states (§ 2):
“Hence, the legal system of the European Patent Convention gives room for evolution of the jurisprudence (which is thus not “case law” in the strict Anglo-Saxon meaning of the term) (…)”
The differences in case law that are pointed out by Ms. Brimelow in order to justify the referral could therefore be regarded as mere discrepancies resulting from advanced understanding on the side of the TBA, which led to an evolution in its case law. On this basis it is possible to argue that the referral was not strictly necessary, since the answers to the questions are already clear from the recent case law of the TBA.24
Should the EBA nevertheless decide to admit the referred questions, particularly its answer to the second question quoted above will depend on whether it will follow the course set out in the recent case law of the TBA, or the formerly applied “technical contribution” approach which is still deemed valid in the UK. Hopefully therefore, the EBA will admit the questions and provide more clarity with regard to the question to which legal requirement for patentability (invention vs. novelty / inventive step) most emphasis should be given.
23 <http://www.ipo.gov.uk/p-pn-subjectmatter-letter.htm> (consulted lastly on 31 July 2009). 24
D. Pearce 29 October 2008.
Conclusions
During the 1980’s and the beginning of the 1990’s, the TBA developed its so-called “technical contribution” approach in order to determine whether claimed subject-matter could be regarded as a patentable “invention” in the sense of Article 52 EPC. Recurring factors in the early case law of the TBA were the assessment that a common factor of the exclusions of Article 52 (2) EPC is their abstract and intellectual character, as well as its opinion that the mere use of conventional hardware elements cannot qualify excluded subject-matter as an invention ex Article 52 (1) EPC.
In the course of the 1990’s however, the TBA shifted to the position that the question whether claimed subject-matter involves a “contribution to the art in a field not
excluded from patentability” is not relevant with regard to the requirement of invention, but with regard to the requirements of novelty and inventive step. The TBA gradually interpreted the exclusion(-s) of Article 52 (2) EPC more and more restrictively. The TBA however did start to formulate some rules on how and on the basis of which features of claimed subject-matter novelty and the presence of an inventive step should be assessed.
This “paradigm shift” by the TBA was criticized by Jacob LJ in the Aerotel judgment of the UK Court of Appeal. In this judgment, Jacob LJ in contravention to the consistent case law of the TBA considered that it is not possible to form an overall approach to the different categories excluded from patentability in Article 52 (2) and (3) EPC. Jacob LJ criticized the new approach of the TBA a.o. by stating that to deem the new, excluded part of claimed subject-matter (e.g. a new piece of music loaded on a standard CD player) part of the prior art is “simply not intellectually honest” and that the approach applied in T 0424/03 (Microsoft/Data Transfer) would actually lead to patentability. What he seemed to disregard however is that what the TBA actually does in its new approach is that it bases novelty and inventive step solely on the technical part of the invention, and that the “device” of the TBA to deem the excluded subject-matter part of the prior art is merely a manner to achieve this. Jacob LJ further gives an unconvincing rebuttal of the objection to the “technical contribution” approach that it inappropriately involves a question into what is old, which in fact was the reason for the paradigm shift by the TBA.
In T 0154/04 (Duns), the TBA responded to the criticism delivered by Jacob LJ in the Aerotel judgment of the UK Court of Appeal. The TBA took the position that its previous consideration in T 0208/84 (Vicom) does not necessarily postulate that the technical contribution to the prior art is the actual criterion to be applied for deciding on the requirement of invention, with which I tend to agree. The TBA in this consideration however simply seemed to ignore the fact that it had itself before interpreted T 0208/84 (Vicom) in exactly that manner, specifically in T 0022/85 (Document abstracting and retrieving/IBM).
The TBA in T 0154/04 (Duns) abided by its opinion that there is an overarching principle covering the exclusions of Article 52 (2) EPC in the form of a lack of
“technical character”, despite of the considerations given in Aerotel by Jacob LJ in this regard. Furthermore, according to the TBA, the approach endorsed by Jacob LJ in Aerotel to ascertain whether claimed subject-matter forms an “invention” is rooted in
“the layman's ordinary understanding of invention as a novel, and often also inventive contribution to the known art”.
The TBA in T 0154/04 (Duns) did not specifically respond to the criticism given by Jacob LJ in Aerotel, that the TBA in T 0424/03 (Microsoft/Data transfer) established novelty and inventive step in light of Windows 3.1 as the nearest prior art (and therefore apparently on the basis of the non-technical features of the claimed subject-matter, viz. the computer program). There was also no reasoning applied in T 0424/03
(Microsoft/Data transfer) which boiled down to the computer program interacting with technical features to produce a technical effect and establishing novelty and inventive step for that reason. Perhaps this particular case should therefore be regarded as a faux pas by the TBA.
In T 1543/06 (Gameaccount) the TBA repeated its previous assertion in T 0154/04 (Duns) that differences in interpretation of the legal concept of “invention” may lie at the heart of the criticisms delivered by Jacob LJ in Aerotel. With regard to inventive step, the TBA argued that a consideration of the particular manner of implementation must focus on any further technical advantages or effects, and recalled that the explicit requirement of a further technical effect had first been formulated in T 1173/97
(Computer program product/IBM). We should keep in mind however, that in T 1173/97 (Computer program product/IBM), the TBA considered a “further technical effect” to be a circumstance causing subject-matter not to be excluded under Article 52 (2) and (3) EPC c.q. causing subject-matter to form an “invention” in the sense of Article 52 (1) EPC, whereas in the present case the TBA considered the causing of a “further technical effect” to be a requirement for subject-matter to be taken into consideration with regard to inventive step.
In its Symbian judgment, the UK Court of Appeal made an attempt to reunite its
approach as explained in Aerotel with that of the TBA in recent cases. The UK Court of Appeal however replaces “subject matter or activity having technical character” in the considerations of the TBA in T 0154/04 (Duns) by a “contribution” as if these were synonymous, and thereby seems to confirm the consideration of the TBA in T 0154/04 (Duns) as repeated in T 1543/06 (Gameaccount) that the UK Court of Appeal mixes up the legal concept of “invention” applied by the TBA in the context of Article 52 EPC with “the layman’s ordinary understanding of invention as a novel, and often also inventive contribution to the known art”.
Contrary to what the UK Court of Appeal alleges in Symbian, there is no consistent thread in T 0154/04 (Duns) that a “contribution” must be technical in order to be patentable. There is no such thing as a patentable “contribution”. (An invention may be patentable.) What the TBA did consider in paragraphs 5 (D), (F), (G) and 14 referred to by the UK Court of Appeal is that novelty and inventive step can only be established on the basis of the technical features of the invention and that non-technical features “to the extent that they do not interact with the technical subject matter of the claim for solving a technical problem, i.e. non-technical features “as such”, do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step”.
There is further no test in T 0154/04 (Duns) “whether the contribution cannot be
0154/04 (Duns) for: - claimed subject matter to have technical character in order to be considered an invention; and for: - novelty and inventive step to be established on the basis of the technical features of the invention. For as far as the UK Court of Appeal meant that the third stage in Aerotel (whether the alleged contribution is excluded by Article 52 (2) as limited by Article 52 (3) EPC) amounts to the same as the “test” mentioned in T 0154/04 (Duns) that novelty and inventive step can only be established on the basis of the technical features of the invention, it should be borne in mind that the third stage in Aerotel is applied in the context of the first requirement of invention whereas the “test” of T 0154/04 (Duns) is applied with regard to the separate criteria of novelty and inventive step.
The TBA’s approach in T 0154/04 (Duns) did not involve explaining the limitation “as such” in Article 52 (3) EPC as imposing a requirement that a computer program should have a technical effect before it can be considered an “invention” (and thereby fulfils the first criterion required for it to be patentable) but instead involves explaining Articles 54 and 56 EPC as imposing a requirement that a computer program interacts with technical elements so as to produce a technical effect in order for it to be taken into account in assessing novelty and inventive step.
The above criticism with regard to the UK Court of Appeal’s interpretation of the decision of the TBA in T 0154/04 (Duns) equally applies to its interpretation of the approach of the TBA in T 1543/06 (Gameaccount). The UK Court of Appeal to my mind in Symbian therefore wrongfully concluded that its own approach as applied in Aerotel and the recent approach of the TBA are reconcilable.
Assuming that Microsoft/Data transfer should be regarded as a faux pas by the TBA, the same claimed subject-matter relating to computer programs will probably often be considered equally patentable or not according to the TBA and the UK Court of Appeal. The recent approach of the TBA and that of the UK Court of Appeal regarding the patentability of computer programs may therefore be reconcilable in terms of their practical outcome (a patent being granted or not) but do lead to different legal results. The approach of the UK Court of Appeal will more often lead to claimed subject-matter failing the requirement of “invention”, whereas on the basis of the recent approach of the TBA such subject-matter will be deemed to lack novelty and / or inventive step. Promptly following the judgment of the UK Court of Appeal in Symbian, the President of the EPO (Ms. Brimelow) posed a number of questions to the EBA regarding the patentability of computer programs. The differences in case law that were pointed out by Ms. Brimelow in order to justify the referral could however be regarded as mere discrepancies resulting from advanced understanding on the side of the TBA, which led to an evolution in its case law. On this basis it is possible to argue that the referral was not strictly necessary, since the answers to the questions are already clear from the recent case law of the TBA.
Should the EBA nevertheless decide to admit the referred questions, particularly its answer to the second question will depend on whether it will follow the course set out in the recent case law of the TBA, or the formerly applied “technical contribution”
approach which is still deemed valid in the UK. Hopefully therefore, the EBA will admit the questions and provide more clarity with regard to the question to which legal
requirement for patentability (invention vs. novelty / inventive step) most emphasis should be given.
Bibliographic Overview
- K. Afghani & D.W. Yee, ‘Keeping it physical: Convergence on a physicality requirement for patentability of software-related inventions under the European Patent Convention and United States law’, 15 J. Intell. Prop. L. 239;
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2008, 30(9), p. 379-382;
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- P. England, ‘Computer-related inventions: from CFPH to Macrossan’, JIPLP 2007-5, p. 305-314;
- EPO, ‘Patents for software?’,
<http://documents.epo.org/projects/babylon/eponet.nsf/0/a0be115260b5ff71c12
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June 2009);
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Case Law Overview
European Patent Office – Technical Boards of Appeal - TBA 15 July 1986, case T 0208/84 (Vicom);
- TBA 21 mei 1987, case T 0026/86 (Koch & Sterzel);
- TBA 5 september 1988, case T 0115/85 (Computer-related invention/IBM); - TBA 5 October 1988, case T 0022/85 (Document abstracting and
retrieving/IBM);
- TBA 6 October 1988, case T 0006/83 (Data processor network/IBM); - TBA 14 februari 1989, case T 0038/86 (Method for performing mental
acts/IBM);
- TBA 14 March 1989, case T 0163/85 (Colour television signal/BBC); - TBA 5 December 1989, case T 0186/86 (Text-processing/IBM);
- TBA 12 December 1989, case T 0158/88 (Schriftzeichenform/SIEMENS); - TBA 15 April 1993, case T 0110/90 (Printer control items/IBM);
- TBA 29 April 1993, case T 0164/92 (Electronic computer components/ROBERT BOSCH);
- TBA 29 October 1993, case T 0204/93 (System for generating software source code/ATT);
- TBA 31 May 1994, case T 0769/92 (Sohei);
- TBA 6 July 1994, case T 1002/92 (Queueing system/PETTERSON); - TBA 26 October 1995, case T 0190/94 (Mitsubishi);
- TBA 1 July 1998, case T 1173/97 (Computer program product/IBM);
- TBA 4 February 1999, case T 0935/97 (Computer program product II/IBM); - TBA 8 September 2000, case T 0931/95 (Pension Benefits);
- TBA 9 July 2002, case T 1177/97 (Translating natural languages/SYSTRAN); - TBA 26 September 2002, case T 0641/00 (Comvik);
