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EPO Enlarged Board comments on computer program patentability

The Enlarged Board of Appeal (EBA) of the European Patent Office has handed down its decision in case G3/08, regarding the patenting of computer programs.

This decision is a response to a referral made by the former President of the EPO, under Article 112 EPC. In October 2008 the President referred four questions to the Enlarged Board of Appeal concerning the patentability of computer-implemented inventions and requesting clarification of the law surrounding them. Article 112 EPC provides that:

“[i]n order to ensure uniform application of the law, or if a point of law of fundamental importance arises…the President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question.” (emphasis added)

Despite the fact that UK patent law has become, for the most part, aligned with the jurisprudence of the EPO, there exist differences of opinion in relation to the patentability of computer-implemented inventions. Many patent practitioners saw the referred questions as an opportunity to resolve uncertainties that exist between the UK and EPO.

However, after analysing the case law, the EBA has reached the conclusion that the referral was inadmissible as the differences in the case law were merely developments in the law and therefore insufficient to justify the reference. In order to be a valid referral under Article 112 EPC, two Boards of Appeal are required to have reached ‘different decisions’, a term which is taken to mean ‘conflicting decisions’, ie not merely decisions that are part of the process of constant development of the law, in which older decisions may have lost some of their significance in view of new technological developments.

Although not answering the questions raised by the referral, in their reasoning the EBA provide some useful direction on a number of points:

First, they clarified that, though a computer program as such is not patentable under Article 52 EPC, the explicit mention of a computer or computer readable storage medium takes it outside this exclusion. However, this does not remove from the invention the need to demonstrate novelty and inventive step. Inventive step can only be considered for those technical aspects falling outside the exclusion (T 154/04), and so a claim merely stating ‘Program Z on a computer-readable storage medium’ would always lack inventiveness. This approach is slightly different to that of the UK Intellectual Property Office.

Secondly, they commented on what exactly is required of a ‘technical consideration’ with regards to a computer program. The EBA observed that the program must have technical considerations beyond merely finding a computer algorithm to carry out some procedure, for example, a program that merely facilitates a mental act would not be considered technical.

Despite not directly dealing with the questions brought forward, this decision has made clear that the EPO believes its approach with regard to software patents does not require amendment. It also clarifies the situations under which a referral may be made under Article 112 EPC.

This decision is very timely for the EPO since it demonstrates some certainty in the EPO approach to computer-related inventions at a time when software patent law in the United States is undergoing some significant rethinking in light of the Bilski v Kappos decision (the ‘Bilski’ case). However discrepancies remain between the EPO and the UK national approach to software patentability and so applicants still face the question of where best to apply for patent protection in Europe for a computer-implemented invention.


13 December 2010

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