Report Of Recent EPO Decisions - November 2008

This report covers recently published decisions of interest from

the Boards of Appeal of the European Patent Office. It is one of a

series of reports that Bristows produces regularly for publication

in the CIPA Journal. This report has been published in the November

2008 issue of the CIPA Journal and includes a referral of questions

to the Enlarged Board on patentability and summaries of decisions

of the Technical Boards on patentability, novelty, inventive step

and EPO procedure.

EPO DECISIONS

Notes:

Technical Board of Appeal (TBA) Decisions are available on the

EPO website at http://legal.european-patent-office.org/dg3/updates/index.htm

and similarly decisions of the Enlarged Board of Appeal (EBA) can

be downloaded from http://www.european-patent-office.org/dg3/g_dec/index.htm.

A list of the matters pending before the Enlarged Board is included

at http://www.european-patent-office.org/dg3/g_dec/pending.htm.

Recent notices and press releases of the EPO are published at http://www.european-patent-office.org/news/info/index.htm

and http://www.european-patent-office.org/news/pressrel/index.htm

respectively, and recent issues of the Official Journal can be

downloaded from http://www.european-patent-office.org/epo/pubs/oj_index_e.htm.

Patentability (Article 52 EPC)

G 3/08: Patentability of programs for

computers

Referral under Art. 112(1)b) EPC of 22 October 2008

President of the EPO: Alison Brimelow

In a somewhat unexpected turn of events, the President of the

EPO has referred questions on the exclusion from patentability for

computer programs under Article 52 EPC to the EBA.

The Technical Board suggested in the much-reported decision in

T 0154/04 that the principles applied to such

issues by the EPO's boards of appeal had a sound legal basis in

the EPC and were consistent, such that no referral

was needed. On this basis, it refused to refer questions proposed

by the English Court of Appeal in the

Aerotel and

Macrossan cases ([2006] EWCA Civ

1371).

Nevertheless, and citing a divergence in the decisions of the

board of appeal as the reason for the referral, the President has

referred the following questions:

1. Can a computer program only be excluded as a computer program

   as such if it is explicitly claimed as a computer program?

2. (a) 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?

   (b) If question 2(a) is answered in the negative, 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. (a) 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?

   (b) If question 3(a) is answered in the positive, is it

   sufficient that the physical entity be an unspecified computer?

   (c) If question 3(a) is answered in the negative, 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?

4. (a) Does the activity of programming a computer necessarily

   involve technical considerations?

   (b) If question 4(a) is answered in the positive, do all

   features resulting from programming thus contribute to the

   technical character of a claim?

   (c) If question 4(a) is answered in the negative, 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?

   Whilst these questions are quite different from those proposed

   by the English Court of Appeal, the referral (if answered) is

   expected to have a profound effect on the ambit of the exclusion.

   Indeed, the UKIPO recently announced that it would not appeal the

   recent decision in Symbian v Comptroller

   ([2008] EWCA Civ 1066) because it agreed with the Court of Appeal

   that it would be premature to seek a view from...