Registry of the Enlarged Board of Appeal
European Patent Office
80298 München
GERMANY
30 April 2009

Dear Sirs:

AMICUS CURIAE BRIEF BY THE ASSOCIATION FOR COMPETITIVE TECHNOLOGY
ON THE BASIS OF
ARTICLE 10 OF THE RULES OF PROCEDURE OF THE ENLARGED BOARD OF
APPEAL
IN CASE G 3/08

The Association for Competitive Technology (ACT) respectfully submits the following brief
as amicus curiae in case G 3/08.

1. Executive Summary

The consideration of issues surrounding the patentability of computer programs in Europe is
of great interest to innovative small and medium-sized enterprises (“SMEs”) active in the
information and communications technology (“ICT”) sector. Many small innovators heavily
rely on patents to develop high-impact, technologically advanced solutions.

The Association for Competitive Technology (“ACT”) considers that the evolution of the case
law of the European Patent Office (“EPO”) is striking an appropriate balance that permits the
protection of deserving computer-related inventions that are critical to Europe’s
competitiveness, while at the same time maintaining the exclusion of non-technical subject
matter from the ambit of the patent laws.

Consistent with this approach, the “two-step” test established by the Board of Appeal
(“Board”) constitutes an appropriate substantive assessment of the patent claims, which duly
takes into account innovative SMEs’ needs for flexibility and protection for deserving
computer-related inventions. This approach confirms that an invention, including a computer-
related invention, is patent eligible where: (i) the invention uses a technical means; and (ii)
the invention, when considered as a whole, solves a technical problem.

In any event, the apparent divergences noted in the EPO referral document can be resolved in
a manner supportive of innovative SMEs by a careful examination of the relevant cases.




BR1 2812888v.1




2. Introduction


ACT is an international education and advocacy group for the technology industry. Focusing
on the interests of small and mid-size entrepreneurial technology companies, ACT advocates
for a “Healthy Tech Environment” that promotes innovation, competition and investment.
ACT has been active on issues such as intellectual property (“IP”), international trade, e-
commerce, privacy, internet policy, and antitrust. ACT represents nearly 4000 member
companies. Of these, there are some 1000 European-headquartered companies which cover
the full breadth of the ICT industry. These innovative companies include software
developers, system integrators, ICT consulting and training firms, and e-businesses, and enjoy
the support of larger “platform” firms.

The EPO consultation on the patentability of computer programs1 raises questions of
fundamental importance to ACT’s members. The objective problems solved by computer
programs, the technical effects caused or the improvement of a specific task are key issues for
ACT members in the activities they conduct on a daily basis.

Beyond these questions, this consultation offers a unique opportunity to significantly improve
the current IP system in Europe, as well as to support growth and innovation. At a time of
financial turmoil, the highly innovative software industry can be a real driver to survive,
combat and overcome economic difficulties. Therefore, it is critical to ensure the right
regulatory, legal and cultural environment is set up for the European software industry to
deliver its full potential.

Innovative SMEs across Europe need IP protection but they need the right sort of IP
protection.

IP protection is vital to ACT members, and patents are essential to SMEs on the cutting edge
of innovation:

• Patent protection increases access to capital: venture capital will be invested in SMEs
only if there are good prospects that there will be a profitable rate of return for the
investor. Having a robust patent protection regime in place helps SMEs attract much-
needed capital: companies are able to demonstrate that their future inventions will be
protected by law, and therefore their business is worth investing in.
• Leverage against larger companies: a strong patent regime allows SMEs to continue to
protect their computer-implemented inventions against often larger competitors that
could otherwise take and unfairly exploit their ideas.

1 Communication from the Enlarged Board of Appeal concerning case G 3/08.
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• Patents provide flexibility: instead of having to produce and sell their inventions as
products on the mass market, patents allow their invention to be licensed and brought
to market by a larger player.

However, SMEs need to benefit from the right patent system. ACT is not calling for more
patents but for higher quality patents. This stance represents both the concerns of those SMEs
who are “innovators” and those SMEs whose business models rely on innovative solutions.

This contribution tries to answer the key question of “What is innovative and therefore
deserves to be patented?”

ACT believes that the EPO consultation will not only help to answer this question but should
also promote Europe’s innovation, protect the interests of innovative software producers and
support Europe’s future growth.

3. Questions referred to the Enlarged Board of Appeal

3.1.

Can a computer program only be excluded as a computer program as such if it is
explicitly claimed as a computer program?

3.1.1.
Patent eligibility should not depend on particular claim formulations

The short answer to Question 3.1 is “no.” ACT submits that the importance of claim
formulations should not be overstated. While from a business strategy standpoint, the
formulation of a patent claim is important to ensure that the scope of protection obtained is
appropriate for the business purpose that it serves, patent eligibility should not depend upon a
particular claim formulation. ACT members support a rigorous and equal application of the
patentability standards irrespective of the particular formulation of the claimed subject matter.

The definition of “invention” is underpinned by the fundamental principle that inventions
must possess “technical character.” This must remain the essential principle upon which
patent eligibility is based, even (and perhaps especially) in the field of computer-related
inventions. Consistent with the findings of the Board in its decision T 1173/97, a “program as
such” within the meaning of the exclusions under Article 52(2) of the EPC, would be a non-
technical program. Similarly, the Board noted that: “with regard to the exclusions under
Article 52(2) and (3) EPC, it does not make any difference whether a computer program is
claimed by itself or as a record on a carrier.”2 These findings emphasize that a particular
claim formulation should not be determinative of patent eligibility.

In ACT’s view, the patentability of any technology should depend on whether it qualifies as
an invention and whether it is new, has inventive step, and is capable of industrial application.

2 T 1173/97 – Computer program product/IBM (OJ EPO 10/1999, 609), point 13
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In that light, many claims directed to “computer programs” therefore may not necessarily fall
within the exclusions of Article 52(2) and (3). At the same time, other formulations that lack
“technical character,” e.g., those formulations reciting “inventions” where the patenting of
cognitive content itself is sought, may fall within the exclusions.

However, it should be recalled that, at its most fundamental level, this debate is less about
claim formulations than it is about innovation. What ACT members are seeking is a strong,
balanced patent system that values and protects the innovative technologies of its members.
Such a system must allow patent protection without favor or limitation as to the field of
technology.

3.1.2.
Computer programs, like other inventions, must possess necessary technical
character

In Decision T 424/03, the Board considered whether the claimed computer readable medium
having computer-executable instructions could be excluded in accordance with Article 52(2)
and (3) of the EPC. In doing so, it first determined, in accordance with the Board’s decision in
T 258/03,3 that the invention related to a technical product involving a carrier and thus
contributed to the technical character of the claim.

However, before concluding that the claimed invention was not to be excluded as a computer
program “as such,” the Board found that this invention has the potential of achieving a
“further technical effect of enhancing the internal operation of [a] computer, which goes
beyond the elementary interaction between any hardware and software of data processing.”4
In fact, the Board not only found that the claimed invention caused a “further technical effect”
in this case, it also directly referred to the decision in T 1173/97. This raises some doubts
about the extent of “divergence” mentioned in the referral documents. In ACT’s view, both
decisions are compatible as a general matter.

The reasoning applied in T 424/03 reflects the evolution of the EPO case law on the
assessment of a procedure applicable to any inventions, which looks separately at the question
of whether a specific invention has a technical character and whether it solves a technical
problem (e.g., does the invention provide a general purpose computer with a further
functionality). Nevertheless, irrespective of the category of the claim, the fundamental
purpose of the exclusion provided in Article 52(2) and (3) of the EPC (i.e., to exclude non-
technical processes or other formulations) will always be considered.5


3 T 258/03 – Auction Method/HITACHI (OJ EPO 12/2004, 575).
4 T 424/03 – Clipboard formats/MICROSOFT, point 5.3.
5 T 331/06 – Order processing/ADVANCED TRANSACTION SYSTEMS, point 3.6.
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3.1.3.
The Astron Clinica case in the United Kingdom rejected eligibility
determinations based on particular claim formulations

The referral document mentions a recent UK court case about the patentability of computer
software, Astron Clinica Limited and others v. Comptroller General of Patents, Designs and
Trade Marks,6
to illustrate the importance of claim formulations. This case is also consistent
with the view that the particular claim formulation used should not be dispositive in
determining patent eligibility. Much to the delight of innovative SMEs in the United
Kingdom, the Astron Clinica court sided with innovators and found that where computer-
implemented methods are patent eligible, then, in principle, claims to the computer programs
themselves should also be patent eligible.7 The UK court further clarified that the answers to
the tests applied to determine patentability would be “the same irrespective of whether the
invention is claimed in the form of a programmed computer, a method involving the use of a
computer, or the program itself.”8

This case also illustrates the need for SMEs to obtain patents on deserving software
inventions. Astron Clinica is a UK-based ACT Member that holds a number of patents
critical to their ability to compete and thrive. One of their most successful technologies
generates realistic images of the skin representing the results of planned surgical
interventions. This invention enables doctors to see what is going on beneath the skin without
the need to make a single incision. In doing so, it also provides doctors with the most
accurate way to visualize skin cancer and other skin diseases and is used around the world for
these purposes. While hardware is a part of the technology, the fundamental invention is the
software which took years to research and develop.

The problem for Astron Clinica was that the UK Intellectual Property Office (UK IPO) had
allowed patent claims for a computer carrying Astron Clinica’s software program, while, at
the same time, the patent examiner rejected corresponding claims to the software that
delivered that same innovation. In other words, while the UK IPO recognized that the method
performed by running a suitably programmed computer was innovative and deserving of
patent protection, it formalistically rejected the notion that the program itself constituted an
innovation.

Astron Clinica challenged the UK IPO’s decision because this decision disregarded the very
nature of the innovation at play. Astron Clinica’s invention includes hardware, but the real
innovation behind this revolutionary technology is the sophisticated computer modeling
software. Small businesses depend on the success of their innovations – and on the fact that
these inventions, and the significant investment that goes into them, can be recognized,

6 Astron Clinica Limited and others v. Comptroller General of Patents, Designs and Trade Marks, Case No.
CH/2007/APP/0466, [2008] EWHC 85 (Pat.).
7 Ibid. at para 51
8 Ibid. at para 49.
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protected and remunerated. Rightly, the UK High Court sided with the SMEs as it found the
UK IPO overlooked where “the technical advance truly lie[d]”9: i.e., because the technical
problem was solved by the computer program, there were no reasons to exclude it from
patentability.

3.2.
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? If not, 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?


3.2.1.
All claims must be subjected to the same tests for patent eligibility

ACT maintains that the required threshold should depend on the features of an invention. In
addition, it is well-recognized in case law that an invention must be considered “as a
whole.”10 Accordingly, patents should not be granted on the mere basis of the use or
inclusion (or exclusion for that matter) of any specific medium.

As established in EPO case law, the fundamental consideration is that an invention must have
technical character. In fact, the exclusions provided in Article 52(2) and (3) EPC are
purposely formulated, as consistently explained in the decisions of the Board, to exclude
claims to subject matter that lacks of technical character. In the early case law of the Board,
this technical character was considered in light of the contribution of the invention to the prior
art. Thus, the assessment of the technical character necessarily involved an assessment of the
non-obviousness of the claimed invention. More recently however, the case law has been
refined in a “two-step” test.

For example, the T 258/03 decision clarifies that any method involving technical means
should be qualified as an “invention” under EPC Article 52. However, the decision also
makes clear that any such method would not necessarily meet the conditions to be patentable.
In fact, the decision emphasizes that an invention still must be “new, represent a non-obvious
technical solution to a technical problem, and be susceptible of industrial application.”11

The two-step test articulated by the Board ensures that inventions, including software
inventions, possess the appropriate technical character. This test assesses the invention as
follows: (i) does the invention use a technical means? and (ii) is the invention solving a
technical problem (e.g., does the invention provide a general purpose computer with a further
functionality)?

9 Ibid. at para 31.
10 See, e.g., T 209/91 Method of increasing the productivity of reversing plate mills/TIPPINGS MACHINERY
COMPANY; T 26/86 (OJ EPO 1988, 19).
11 T 0258/03 at para 4.6.
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3.2.2.
Innovation must be recognized in all fields of technology

The two-step test established by the Board’s recent case law is consistent with an approach
that rightly does not distinguish innovative computer programs from other types of
technologies. From the perspective of innovative SMEs, it does not matter whether a
purported invention is denied because it lacks the technical character to be defined as an
invention12 (EPC Article 52) or because it fails to solve an objective technical problem,
considered pursuant either to the definition of invention or to the inventive step test (EPC
Article 56).13 The fundamental question is whether innovative software is eligible to be
patented.

In ACT’s view, as soon as a computer program may be considered as eligible subject matter
according to the two-step test set out by the Board, the patentability of a computer program
should be denied only if it is not novel, if it lacks inventive step, or if it is not susceptible of
industrial application. If not addressed earlier, the inventive step test will address whether the
relevant technology solves a technical problem. The exclusion provided in Article 52(2) and
(3) will thus be respected.

3.3.

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? If so, is it sufficient that the
physical entity be an unspecified computer? If not, 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?


3.3.1.
Innovative SMEs need a technical character standard that accommodates
emerging technologies

As early as its decision T 208/84, the Board recognized that the physical entity on which the
claimed feature caused a technical effect could be “an image stored as an electrical signal”,
and not necessarily “a material object”.14 Indeed, the analysis provided in the referral
document is not clear as to the intended scope of what may be considered a “technical effect
on a physical entity in the real world.” Two of the cases cited for the proposition that no
further effect is required, T 424/03 and T125/01, certainly appear to involve inventions with
consequences flowing in the “real world,” e.g., when run on a computer. Therefore such a
distinction does not appear to be helpful and may unfairly complicate analysis of patent
eligibility to the detriment of innovators. ACT submits that it is unnecessary and
counterproductive to further restrict the concept of technical effect.

12 T 1173/97 – Computer program product/IBM (OJ EPO 10/1999, 609).
13 T 258/03 – Auction Method/HITACHI (OJ EPO 12/2004, 575), para 5.3; T 424/03 – Clipboard
formats/MICROSOFT, para 5.3; T 1284/04 – Loan system/KING.
14 T 208/84 – Computer program/VICOM (OJ EPO 1987, 14).
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ACT submits that the assessment of the technical character of a claim should continue to be
flexible for two reasons. First, innovative SMEs typically strive in niche and emerging
markets, where the development of cutting-edge technology requires them to depart from
commonplace solutions. Second, flexibility is also key when one considers the diverse and
cross-cutting nature of computer-implemented inventions – e.g., the inventions span the
innovative telecommunications, healthcare, transportation (including the aviation and
automotive sectors), and consumer electronics industries.

If an unduly restrictive notion of technical character were to be adopted, a wide range of
deserving inventions may be excluded without any good reason. For example, a system that
would permit a doctor located in Canada to perform a surgical intervention using robotics or
other means on a patient located in the UK would unquestionably constitute a breakthrough
technology. While hardware components (e.g., communication lines and devices, robotics
control systems, etc.) would be important to the operation of such a system and may involve
patentable components, the central innovation to permit the realization of this system (i.e. the
real-time representation, protection and management of critical data over long distances,
would likely be software-based). Any unduly restrictive notion of technical character might
put intellectual property protection for such a system into question. As explained above,
Astron Clinica faced a similar issue in the UK for its comparable breakthrough technology.

A robust patent system is needed to preserve incentives for SMEs to create such technologies
for the benefit of society at large. A more restrictive view would provide a disincentive for
investment in developing these new technologies, particularly for SMEs and their investors,
who will not risk their resources in the knowledge that protection may be denied for their
innovations, thereby leaving them vulnerable to appropriation by more sophisticated
competitors.

In sum, ACT supports a system based on a substantive assessment of the innovative features
of a technology (i.e. one that considers whether the technology solves a technical problem in a
non-obvious manner) rather than a category-based system, which disqualifies certain
technologies without considering their merits.

3.3.2.
Innovation is about problem-solving

Under the two-part test explained above in section 3.2.1, the patentability of a computer
program should not depend on whether it produces a “technical effect on a physical entity,”
however that may be defined, but rather on whether (i) the computer program uses technical
means, and (ii) whether it solves a technical problem.

Innovation is about industriousness and problem-solving. The two-part test recognizes the
need to make it possible for SMEs in the ICT sector to patent their inventions when they solve
a technical problem.

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Thus, ACT believes that features can contribute to the technical character of a claim even if
the only effects contributed are independent of any particular hardware, provided that they
solve a technical problem. This was clearly illustrated in T 424/03. Although not particular
to any specific hardware, the claimed invention provided a computer with further
functionality solving an objective technical problem, i.e. to facilitate a data exchange across
different data formats. Indeed, a more restrictive approach risks eliminating a wide swath of
deserving technical inventions in the ICT field from patent protection.

In any event, ACT sees no substantive divergence between the cases cited in the EPO referral
in support of this question. In T-163/85, the reference to the physical entity was required
because of the nature of the invention. However, the “physical entity” in this case merely
realizes the technical character of a TV signal, much in the same way that a computer realizes
the technical character of the computer-executable instructions in T 424/03. In either case, the
critical question is whether the invention solves a technical problem. This is also similar to
the Board decision in T 190/94 in which the physical entity cited realized the image
transformation invention in that case.

Also, more recent case law appears to be consistent with this view. For example, the Board
decided in T 928/03 that a specific user interface in a soccer game that was programmed to
display specific guide marks had technical character to the extent it solved a technical
problem of facilitating perceptibility. Had the Board taken a narrow view in assessing the
technical effects of the invention, it would have been impossible for the creator of this
technology to recoup its investment. Indeed, the real innovation lied in the improvement of
the user interface, not in the hardware structure of the actual display device.

ACT’s members are concerned that an overly restrictive approach would deny protection to
deserving inventions even where they constitute a breakthrough for the industry. For
example, if an SME strives to develop a new touch-based user interface for a specific mobile
phone, its invention would not necessarily involve a change or manipulation of the structure
of the mobile phone itself, but may very well solve a number of technical problems, such as
the management of the small display area or the detection of the different input methods
(finger, stylus, buttons, voice). In ACT’s view, there should be no difference between the
configuration of “physical” hard buttons and this type of management of input methods
because these innovations are solving technical problems and functionally achieving similar
ends. In fact, such a distinction would appear to impede developments in forward-looking
technologies. Irrespective of the user interface chosen, such inventions are important
technical developments that drive innovation in cell phone-based and other relevant
technologies.


3.4.
Does the activity of programming a computer necessarily involve technical
considerations? If so, do all features resulting from programming thus contribute to the
technical character of a claim? If not, 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?


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The activity of programming necessarily involves technical considerations. However, not all
features resulting from programming contribute to the technical character of a claim.

Developing a computer program requires the programmer to notably consider memory and
CPU usage, portability and flexibility, and/or power consumption of the resulting program.
Many of these technical considerations are directly at issue without regard to whether the
programming involves low-level or higher-level programming languages. In addition, as
technology continues to evolve, the distinctions between the use of “hardware” (i.e., field
programmable circuitry or customized circuitry) versus “software” (i.e., a general-purpose
computer configured to solve a technical problem using innovative programs) continue to
blur. The touchstone for patentability should be the two-step test articulated above.

The fact that programming activity involves technical consideration does not mean that the
activity of programming should be patentable, as such. Even if most features resulting from
programming will be considered to have the necessary technical character, only those
inventions that, when considered as a whole, possess the requisite technical character, should
be eligible to be patentable.

In ACT’s view, the invention should be considered as a whole and these technical
considerations should be assessed only to the extent they form part of the solution of the
relevant technical problem.15

It follows that the divergence highlighted by the referral is not directed to the critical
questions. The key questions (i.e., whether the claimed invention uses technical means and
solves a technical problem) should remain the fundamental basis to ensure that deserving
inventions receive protections while methodologies or paradigms of a non-technical nature are
excluded.

4. Conclusion

A careful examination of the cases presented as diverging reveals that the EPO case law is not
inconsistent. In fact, the natural evolution and refinements of the Board’s examination
practice are welcomed by small innovators active in the ICT industry.

If it elects to address the questions raised by the President of the EPO, the Enlarged Board of
Appeal should be very careful not to harm innovative SMEs. Small innovators indeed require
an environment that allows them to recoup their investments by ensuring an adequate
protection of deserving software inventions.


15 See, e.g., T 209/91 Method of increasing the productivity of reversing plate mills/TIPPINGS MACHINERY
COMPANY; T 26/86 (OJ EPO 1988, 19).
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In light of the arguments developed in this submission, ACT respectfully submits that the
Enlarged Board of Appeal should:

• clarify that patent eligibility does not depend on mere claim formulations that exalt
form over substance;
• confirm the appropriateness of the “two-step test” commonly used in the recent case
law of the Board, which provides that an invention, including a computer-related
invention, is patent eligible where the invention: (i) uses a technical means and (ii)
solves a technical problem; and
• reject any further conditions (e.g., a so-called “further technical effect on a physical
entity in the real world,” however that is defined) for the patentability of computer
programs that meet the requirements of the two-step test.





Jonathan Zuck
President
Association for Competitive Technology
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