Patentability of Computer Programs: EPO Referral Held by Enlarged Board to be Inadmissible

Referral by EPO president held to be inadmissible by Enlarged Board of Appeal - Board of Appeal divergences are legitimate developments of the law


The eagerly awaited response by the EPO's Enlarged Board of Appeal to the EPO president's referral of questions concerning the patentability of software, case G 3/08, has been issued. The Enlarged Board has ruled on 12th May 2010 that the referral by the president is inadmissible.

While the EPO says on its website that the ruling by the Enlarged Board confirms the current practice by the EPO in this area, observers seeking ground-breaking law on the boundaries of patentability of computer-implemented inventions (CII) may be disappointed. Some may feel that, by finding the referral by EPO president, Alison Brimelow, to be inadmissible, the Enlarged Board has thrown away a valuable opportunity to bring pan-European harmonisation to a difficult legal area. The Enlarged Board has instead used the opportunity to confirm various aspects of specified CII decisions.

As a reason for inadmissibility of the referral, the Enlarged Board of Appeal indicated that the entitlement of the EPO's president to make referrals to it under Article 112(1)(b), EPC, must relate to "different decisions" of the Board of Appeal. The Enlarged Board found that the decisions cited by president, with one exception, did not constitute "different decisions" by the Boards of Appeal. Decision G3/08 indicates that the Enlarged Board understood "different decisions" to mean conflicting decisions and the only conflicting decision acknowledged by the Enlarged Board represented a "legitimate development of the case law". The president was therefore not entitled to make the referral.

While the decision by the Enlarged Board does not provide a new over-arching approach in the determination of patentability for computer-implemented inventions, it does contain guidance on a number of specific issues raised by the referral.

Disparities in approaches to computer-implemented inventions exist across Europe, but the absence of a clear line by the Enlarged Board may be felt more acutely in the UK than in other EPC contracting states, due to the Court of Appeal's criticism of the Board of Appeal and the Court's attempts under both the current and previous EPO presidents to obtain a consistent approach from the EPO. The Enlarged Board, in putting forward the "legitimate development" argument, has clearly rejected this criticism, underlining the difference between the legal tradition in continental jurisdictions and that of precedent-driven English courts.

Where next for computer-implemented inventions?

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Referral by EPO president held to be inadmissible by Enlarged Board of Appeal - Board of Appeal divergences are legitimate developments of the law


Significant differences have arisen between the approaches by various European jurisdictions to computer-implemented inventions. In short, there is no single approach across Europe to determining if a software-related invention is patentable or not. Since the first such case in Europe in 1984, the Vicom decision, a host of tests has been put forward in various fora, including the contribution approach, the technical effect approach, the whole claim approach, the any hardware approach and others. At various times over the last 30 years each of these tests have been proposed, but, in the opinion of some critics, no definitive test has been identified and the approaches are considered by some to be inconsistent, leading not only to legal uncertainty, but also to considerable economic uncertainty as the asset value of patents moves in accordance with the various rulings.

Article 52 of the European Patent Convention (EPC) provides that:

"(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step. (2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1: ... (c) schemes, rules or methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information. (3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such." The controversy hangs on the prohibition in Articles 52(2)(c) and 52(3) EPC which state that programs for computers as such are excluded from patentability. The "as such" is a short, but extremely powerful, qualifier, and has been interpreted by the EPO Boards of Appeal and various jurisdictions to mean that while an invention consisting of pure software on its own is excluded from patentability, an invention which implements a software-based concept may be patentable, depending on how the implementation occurs. The tests for exclusion generally include some test for "technicality", whereby subject-matter which is insufficiently technical in nature is considered non-patentable. With some exceptions (notably by the open source movement), most commentators appear to agree on the approach to this extent, but the current problem hinges on which test to apply to determine if the computer-implementation patentable is sufficiently technical.

Decision G3/08 acknowledges the scale of the controversy and refers to unsuccessful attempts by legislators to clarify the situation with respect to patentability of computer-implemented inventions. The discussions leading to the EPC 2000 included proposals to modify or remove the exclusion, but these proposals were not taken up in order to give the Commission's proposed...

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