PCT International Search and Preliminary Examination Guidelines
PART III EXAMINER CONSIDERATIONS COMMON TO BOTH THE INTERNATIONAL SEARCHING AUTHORITY AND THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
Appendix to Chapter 9
Excluded Subject Matter Pertaining to Programs for Computers
A9.15 The International Searching and Preliminary Examining Authorities have divergent practices with regard to the exclusion for programs for computers. Either of the alternative guidelines below may be relied upon by an International Authority as appropriate.
A9.15[1] The basic considerations here are exactly the same as for the other exclusions listed in Rule 67, that is, whether the program claimed has a practical application providing a useful, concrete and tangible result. A mere program listing that describes an executable code that is not tangibly embodied as a record on a computer-readable carrier would be excluded subject matter and thereby not subject of international search and examination. Similarly, an executable program producing only an expression of an idea (such as a mathematical theory) even if tangibly embodied would also fall within this exclusion. However, a program containing executable code tangibly embodied on a computer-readable carrier which when executed has a practical application would not be excluded and should be searched and examined. In addition, a data-processing operation can be implemented either by means of a computer program or by means of special circuits, and the choice may have nothing to do with the inventive concept but be determined purely by factors of economy or practicality. The technology involved in executing the data-processing operation should not be dispositive as to the exclusion determination. With this point in mind, search and preliminary examination in this area should be performed on any computer program tangibly embodied in a computer-readable carrier providing a practical application (for example, a computer program product claim). International search and preliminary examination should not be denied merely on the grounds that a program is involved in its implementation. This means, for example, that program-controlled machines and program-controlled manufacturing and control processes should normally be regarded as subject matter on which an international search and preliminary examination can be carried out. It follows also that where the claimed subject matter is concerned only with the program-controlled internal working of a known computer, the subject matter could be searched and examined if it provides a practical application. As an example, consider the case of a known data-processing system with a small, fast-working memory and a larger, but slower, further memory. Suppose that the two memories are organized under program control in such a way that a process which needs more address space than the capacity of the fast-working memory can be executed at substantially the same speed as if the process data were loaded entirely in that fast memory. The effect of the program in virtually extending the working memory provides a practical application and would, therefore, require search and preliminary examination. Where search and preliminary examination on such claims is carried out, then, generally speaking, product, process and use claims should also be searched and examined. See, however, in this context, paragraphs 5.13 and 5.31.
A9.15[2] The basic considerations here are exactly the same as for the other exclusions listed in Rule 67, that is, whether the program claimed has technical character. A program producing only an expression of an idea (such as a mathematical theory) would fall within this exclusion. On the other hand, a data-processing operation can be implemented either by means of a computer program or by means of special circuits, and the choice may have nothing to do with the inventive concept but be determined purely by factors of economy or practicality. The technology involved in executing the data-processing operation should not be the determining factor for exclusion. With this point in mind, search and preliminary examination in this area should be performed on any computer program having technical character. International search and preliminary examination should not be denied merely on the grounds that a program is involved in the implementation. This means, for example, that program-controlled machines and program-controlled manufacturing and control processes should normally be regarded as subject matter on which an international search and preliminary examination can be carried out. It follows also that where the claimed subject matter is concerned only with the program-controlled internal working of a known computer, the subject matter could be searched and examined if it provides a technical effect which goes beyond the normal interaction between a program and a computer. As an example, consider the case of a known data-processing system with a small, fast-working memory and a larger, but slower, further memory. Suppose that the two memories are organized under program control in such a way that a process which needs more address space than the capacity of the fast-working memory can be executed at substantially the same speed as if the process data were loaded entirely in that fast memory. The effect of the program in virtually extending the working memory provides a technical character and would, therefore, require search and preliminary examination of a claim relating to the program involved whatever is the form in which it is presented, for example, product, computer program product, process and use claims. See, however, in this context paragraphs 5.13 and 5.31.