T 1173/97 Computer Program Product / IBM

As former decisions may not read to this new interpretation of the "as such" provision of Article 52(3) EPC the Board of Appeal used the opportunity to straighten out the case law and introduced the "further technical effect"

When a computer program is run on a computer it unquestionable causes technical effects as the execution of instructions causes different switch states of the central processing unit, the memory, in interfaces and in hardware, such as spinning a motor an moving the actuator arm of a hard disk drive. Thus every software run on a computer causes inevitably a technical effect. Thus also every business method run on a computer produces a technical effect in the computer. As business methods and other software "as such" are excluded by Article 52(2) and (3) EPC from patentability, even if they are new and not obvious (note that the term "inventive"; was avoided for good reasons!) the Board introduced the term "further technical effect" for technical effects that go beyond the normal operation of a computer.

These physical modifications of the hardware deriving from the instructions given by programs for computers cannot per se constitute the technical character required for avoiding the exclusion of those programs. Although these modifications may be considered to be technical, they are a common feature of all those programs run on a computer, and therefore cannot be used to distinguish programs for computers with a technical character from programs for computers as such.

[A technical character that overcomes the exclusions of Article 52(2) and (3) can only reside] in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program, Where said further effects have a technical character or where they cause the software to solve a technical problem, an invention which brings about such an effect may be considered an invention, which can, in principle be the subject-matter of a patent.

Consequently a patent may be granted not only in the case of an invention where a piece of software manages, by means of a computer, an industrial process or the working of a piece of machinery, but in very case where a program for a computer is the only means, or one of the necesary menas, of obtaining a technical effect within the meaning specified above, where, for instance, a technical effect of that kind is achieved by the internal functioning of a computer itself under the influence of said program.