The official start date on which European patent applications could be filed was set to 1st June 1978. Only ten days before the first anniversary of this official start date an application was filed that provoked the landmark decision on computer-related inventions seven years later. A method of digitally processing images in the form of a two-dimensional data array was refused by the Examining Division as the method was related to a mathematical method, running on a suitable programmed conventional computer.

The landmark decision

In the decision T 208/84 "computer-related invention/VICOM" the Board of Appeal ruled that

  • Even if the idea underlying an invention may be considered to reside in a mathematical method a claim directed to a technical process in which the method is used [cannot be excluded from patentability under Article 52 (2) (3) as the method] does not seek protection for the mathematical method as such.

  • A computer of known type set up to operate according to a new program cannot be considered as forming state of the art as defined by Article 54 (2) EPC.

  • A claim directed to a technical process which process is carried out under the control of a program (whether by means of hardware or software) cannot be regarded as relating to a computer program as such [and thus are not objectionable under Article 52(2)(c) and (3) EPC].

The decisive element of the decision is that the process is carried out on a physical entity (a signal in form of pixels representing an image) by some technical means (either an especially dedicated hardware or even a general purpose computer) implementing the method and provides as its result a certain change in that [physical] entity. Although not discussed in this decision it shall be pointed out that it does not harm that the change in the physical entity is performed ultimately for an aesthetic benefit, namely the smoothing or sharpening of the contrast of a picture.

Further Technical Effect

In the decision "T 1173/97 Computer program product/IBM" the Board of appeal took the opportunity to straighten former case law with their improved reasoning and introduced the "further technical effect". Loading a computer program in a computer and running the program is producing technical effects, for example by changing switching states in registers of a central processing unit. These known technical effects should not qualify an invention to be considered as technical. The Board reasoned that only those technical effects that go beyond the "normal" interaction between a computer and a program conferred the necessary technical character to an invention that was required to be not excluded under Article 52 (2) and (3). In the Boards opinion for the assessment of technicality it did not harm that the "further technical effect" may be known from prior art.

Contribution approach (abandoned!!!)

Up to decisions renedered in 1999 technicality of an invention was assessed by the technical contribution an invention achieved with respect to the prior art. The contribution approach therfore had to take into account to some extend prior art, and thus was more appropiate for the purpose of examining novelty and inventive step (T 1173/97). For this reason the contribution approach was seen to violate the provisions of the EPC (T 0931/95) and has been abandoned eventually (T 0258/03). Therefore in respect to the assessment of the technical character of an invention decisions earlier to these decisions have to be interpreted with care.

A mobile phone with two identities / COMVIK

In T 0641/00 (Two identities/COMVIK) of 26.9.2002 the Board of apeal found that an invention consisting of a mixture of technical and non-technical features and having technical character as a whole is to be assessed with respect to the requirement of inventive step by taking account of all those features which contribute to said technical character whereas features making no such contribution cannot support the presence of inventive step.

Or to put this the order how a mixed type claim should be examined:

  1. Has the subject matter technical character as a whole?

  2. IF YES then for the assessment of inventive step take into account only technical features which contribute to said technical character


The headline of the decision continues: Although the technical problem to be solved should not be formulated to contain pointers to the solution or partially anticipate it, merely because some feature appears in the claim does not automatically exclude it from appearing in the formulation of the problem. In particular where the claim refers to an aim to be achieved in a non-technical field, this aim may legitimately appear in the formulation of the problem as part of the framework of the technical problem that is to be solved, in particular as a constraint that has to be met.

Or in other words: It is legitimate for a (technical) invention to achieve an aim in a non-technical field. The non-technical aim however cannot be used as a problem to be solved. The problem to be solved must be a technical problem, but the non-technical aim may occur in the formulation of the technical problem as a constraint that is solved by technical means.

Calling the chiefs in

From VICOM to COMVIC the Boards of appeal developped case law not always in a straight forward manner. Allison Brimelow, the fifth President (term in office 1 July 2007 to 30 June 2010) of the European Patent Office found it of fundamental importance that some decisions which related to the definition of the limits of patentabilityin the field of computing, and which seemed to be divergent, were referred to the Enlarged Board of Appeal.  

Under case number G 3/08, the Enlarged Board of Appeal of the EPO issued on May 12, 2010 an opinion in response to the questions raised by the President of the EPO.The Enlarged Board of Appeal considered the referral to be inadmissible because the divergence of the decisions were considered to be within the boundaries that are to be accepted when case law develops over the years.

Current praxis of the EPO

The procedure how to examine technical character / technical contribution seems to be stabilised. In public presentations members of the EPO presented the order in which they assess the technical aspects of an invention.

These steps are presented with further comments on the next pages