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Related guides: Leading Cases on the Legal Protection of Software: A Review of Court of Cassation Rulings · Intellectual Property in Software: Legal Protection Strategies for Computer Programs
In the legal protection of software, patent law fills the gap left by copyright law: functionality, algorithms and the logic of the technical solution. In Turkish law, Article 82/2-(c) of Industrial Property Code No. 6769 (SMK) does not regard computer programs as such as inventions; however, under SMK Art. 82/3, exclusion from patentability applies only where the application relates exclusively to that subject matter. Since this provision parallels Article 52 of the European Patent Convention (EPC), the case law of the EPO Boards of Appeal on computer-implemented inventions also provides guidance for the practice of TÜRKPATENT (the Turkish Patent and Trademark Office) and for the Turkish courts. No settled decision of the Court of Cassation directly concerning the patentability of software has yet been found; the international precedents that fill this gap are presented below.
Subject: Technical character in computer-implemented inventions; the “assessment as a whole” approach.
Summary of the Decision: If an invention produces a technical result by means of the computer program it contains (in the case at hand, digital image processing), it cannot be characterised as a mere computer program and does not fall within the patentability exclusion in EPC Art. 52/2. Since the invention as a whole makes a technical contribution, it is patentable.
Our Assessment: This is the landmark that opened the way to the patentability of software-based inventions. This decision established the principle that the presence of non-technical features in an invention (for example, a mathematical method or an algorithm) does not remove the technical character of the whole. It is also the basic reference for interpreting the “exclusively” criterion in SMK Art. 82/3. Indeed, with the IBM decisions the approach would evolve towards accepting that claims directed to the program itself may also have technical character.
Subject: Patentability of computer program product claims; the birth of the “further technical effect” criterion.
Summary of the Decision: The invention in the application concerns resource recovery in a computer system and enables an incomplete commit procedure to be resynchronised asynchronously while the application continues to run. Although the examining division found the method and system claims patentable, it rejected the claims relating to the computer program product, treating them as a “computer program as such” under EPC Art. 52/2-3. The Board of Appeal held that every program inevitably produces physical effects in the hardware when it is run and that this normal interaction is not in itself sufficient for technical character; however, if the program produces, or has the potential to produce, a further technical effect going beyond the normal physical interaction between software and hardware, it may be claimed in its own right (whether or not it is stored on a carrier), and it set aside the rejection.
Our Assessment: The decision is the landmark that abandoned, at the Art. 52 stage, the “contribution approach” of the era that began with VICOM in EPO case law, and that built today's examination architecture for computer-implemented inventions. This decision established that the “program as such” exclusion is a narrow exception limited to programs lacking technical character. Its most concrete consequence in practice is that it opened the way to the admissibility of program product claims (in today's terms, claims to downloadable software). It is also the basic comparative reference for interpreting the word “only” in SMK Art. 82/2-(c).
Subject: Display of obscured window information; confirmation of the further technical effect criterion.
Summary of the Decision: The invention concerns detecting the obscured information where a second window on a computer screen covers (obscures) part of a first window, and redisplaying that information in an uncovered part of the first window. In line with T 1173/97, the Board held that a computer program falls outside the exclusion in EPC Art. 52/2-3 if, when run, it produces a further technical effect going beyond the normal physical interaction, and that program product claims cannot, as a rule, be rejected.
Our Assessment: Taken together, the two IBM decisions turned the “further technical effect” doctrine from a single decision into settled case law. The distinctive contribution of T 935/97 is to show that the criterion can also be applied to user-facing software layers such as the graphical interface and display management: while the mere presentation of information on screen is not regarded as technical, managing the display process in a way that solves a problem relating to the internal operation of the computer can confer technical character. The decision is also significant because it forms the second half of the pair of decisions cited together as the reference standard in later case law (including G 3/08).
Subject: Assessment of inventive step in (mixed) claims combining technical and non-technical features; the “COMVIK approach”.
Summary of the Decision: The patent in dispute, EP 0 579 655, concerns the use of a multi-identity smart card belonging to a single user (a dual-identity SIM card) as a subscriber identity module in GSM-type digital mobile telephone systems. In its famous principle decision, the Board established the following framework: for an invention consisting of a mixture of technical and non-technical features and having technical character as a whole, inventive step is assessed by taking into account only the features that contribute to the technical character; features that make no such contribution cannot support the presence of an inventive step. Non-technical aims may, however, appear within the problem-solution approach as a constraint (a requirement specification) to be met in formulating the objective technical problem. In the case at hand, it was found that the features distinguishing the invention from the prior art defined a purely financial-administrative concept and had no technical nature; the appeal was dismissed and the revocation of the patent became final.
Our Assessment: COMVIK is the founding decision of the EPO's current examination system for computer-implemented inventions and business methods; the two-stage process it introduced (separating the technical and non-technical features in the claim → assessing only the technical contribution for inventive step) has been incorporated into the EPO Guidelines for Examination and forms the framework of all later case law, including G 1/19. A subtle aspect of the decision, often overlooked in practice, is that instead of ignoring the non-technical features entirely, it places them within the objective technical problem as a “requirement specification”. Its message for filing strategy is clear: the description and claims should be drafted so as to ground the novelty not in the business rule but in the technical architecture used to implement that rule (such as memory management, signalling, data structures or network interaction).
Subject: Separating technical character and inventive step in computer-implemented business methods; the “any hardware” approach.
Summary of the Decision: The application concerns an automated auction method carried out over a server, clients and a network. The Board held that a method involving technical means or carried out by technical means is an “invention” within the meaning of EPC Art. 52/1, and that the assessment of technical character is made without comparison with the prior art, thereby keeping the exclusion threshold quite low. By contrast, in examining inventive step only the features making a technical contribution were taken into account; the application was rejected for lack of inventive step on the ground that transferring the auction rules (non-technical business method features) to a known server-client architecture involved no technical contribution.
Our Assessment: The Hitachi decision combines the two pillars of today's EPO practice: the broad acceptance that the technical character threshold can be crossed by almost any hardware feature, and the consistent application of the COMVIK approach (T 641/00), under which inventive step is assessed solely on the basis of technical features. Its strategic message is clear: transferring a business model or financial method to a computer network does not earn a patent; protectable contribution must be sought in a non-obvious technical solution to a technical problem arising in implementing that model. Hitachi does not reject the further technical effect doctrine developed in IBM; on the contrary, it keeps the technical character threshold low and defers the debate on technical contribution to the inventive step stage.
Subject: The distinction between a computer program and a method carried out by a computer.
Summary of the Decision: A computer program (a sequence of instructions) and a method carried out by a computer (technical interactions in the internal operation of the computer) are different from one another. If the method solves a technical problem relating to the internal operation of the computer (in the case at hand, improving data transfer between different applications), this confers technical character on the invention.
Our Assessment: The decision is a landmark in that it confirmed a three-layer distinction in EPO case law: a “computer program” (a mere sequence of instructions) cannot be patented; however, a “computer-implemented method” (a process using technical means and producing an effect) and a “program product” (a program stored on a technical medium and producing a further technical effect) can be patented. Its strategic message is clear: in claim drafting, the layer to be protected should be framed not as a “program” but as a “method” or a “product”. In this respect it is one of the most important decisions applying the “further technical effect” doctrine that began with T 1173/97 (IBM), and it should also be taken as a reference in interpreting SMK Art. 82/2-(c).
Subject: Assessment of the divergences in EPO case law on computer programs.
Summary of the Decision: The Enlarged Board of Appeal stated that the differences in approach between different Board of Appeal decisions are a normal part of legal development and that there is no conflict in the case law of a kind that would justify the referral.
Our Assessment: By legitimising the nuances between the IBM and Clipboard lines, the decision effectively endorsed the existing case-law architecture (narrow interpretation of the exclusion + further technical effect + COMVIK inventive step analysis). It is high-level confirmation that, for computer-implemented inventions, a case-by-case assessment of technical contribution prevails rather than a single rigid formula.
Subject: Patentability of computer-implemented simulations and the application of the COMVIK approach to simulations.
Summary of the Decision: The Enlarged Board of Appeal held that the settled case law on computer-implemented inventions also applies to computer-implemented simulations and that the settled COMVIK approach is to be maintained in the assessment of inventive step. In summary, the Board stated that computer-implemented inventions cannot be excluded from patent protection a priori as a group, that whether numerical simulations meet the technical character criterion is to be examined separately in each specific case, and that claiming the simulation as part of a design process does not change this result.
Our Assessment: The decision did not create a separate and more favourable patentability regime for simulations; preserving the status quo, it subjected simulations to the general test for computer-implemented inventions. This choice is sound in that it increases predictability: the fact that the simulated system is based on technical principles is not sufficient on its own, and only features making a technical contribution will be included in the inventive step assessment. The Board's decision not to impose a strict physicality requirement favours companies developing digital twins and engineering simulations; however, in filing strategy it will remain decisive to draft the claims so as to show clearly that the simulation output is linked to a technical purpose.
The EPO's approach to computer programs has followed an uneven but continuously evolving path, with each decision laying the groundwork for the next. The layer deliberately left outside copyright protection — functionality, algorithms and the logic of the technical solution — can be protected by a computer-implemented invention patent within the framework drawn by EPO case law; the parallel structure of SMK Art. 82 and the EPC makes this case law applicable in Turkish practice as well. For companies wishing to protect their software assets, the right strategy is to structure the copyright and patent regimes as complementary rather than as alternatives, and to plan the contractual, registration and evidential infrastructure from the outset in line with this case-law reality. For our assessment of the copyright protection of software in the light of Court of Cassation decisions, you can read our previous article.
