It has long been the practice of the EPO in deciding on the patentability of software related inventions to refer to the 1987 Vicom decision which set the scene by requiring that for patentability of software the invention must have a technical aspect solving a technical problem but that it did not matter whether the problem was overcome by software.

Following Vicom there were IBM cases for reading and for spell-checking, respectively, which were rejected by the EPO as not being statutory, since the claimed invention amounted to a step which could have been performed by a human performing the method claims.

There have now been two further IBM cases which were initially rejected by the Examining Division but which on appeal have been referred back to the Examining Division.

In one, the invention is directed toward organizing the display of information on a screen so as to avoid information contained in one window from obscuring information in a second window. In the other, the invention is directed toward resource recovery in a computer system in which a commit procedure for a work request is implemented, and if the commit procedure fails, an application is notified that it may continue, and while the application continues to run, the incomplete commit procedure is resynchronized.

Although the Examining Division accepted the system and method claims, the computer program product claims were rejected. The Appeal Board, in reaffirming that an invention must have a technical character, considered that the exclusions from patentability of programs for computers as such in Article 52(2) and (3) EPC should be construed to mean programs which are mere abstract creations lacking in technical character.

Accordingly the Appeal Board considered that the normal physical modifications of the hardware i.e., the generation of electric currents, derived from the execution of the instruction from the program to the computer could not per se constitute the technical character required for avoiding the exclusion of programs. However, the Appeal Board found that technical character could be derived from the execution by the hardware of the instruction given by the software. Such a technical character may be found where the software is used to solve the technical problem.

Although the Appeal Board did not decide on the final wording of a program product claim they went further than the Beauregard case in the United States in suggesting that claims for the program product without recitation of the carrier could be allowed. Thus the way is open to claim a program, provided it performs some technical function, without the carrier so that programs downloaded over the Internet, for example, would be protected. Thus practitioners now have the possibility of obtaining claims of broader scope at the EPO than previously thought possible.