Legal Commentary

Software Patents on Computer Programs and Computer-Implemented-Inventions (CIIs) in Europe : Patentability in the European Patent Office (EPO)

By Andis Kaulins

"12 May 2010

EBoA confirms EPO approach to computer programs

Today the Enlarged Board of Appeal of the EPO handed down its opinion on referral G 3/08, taking the opportunity to set out and confirm the approach of the EPO regarding the patentability of computer programs under the European Patent Convention (EPC).

The opinion relates to four questions referred to the Enlarged Board in October 2008 by the President of the EPO concerning points of law of fundamental importance for the Office's patenting practice in this field.

The Enlarged Board analysed in detail the development of relevant case law, and found that there was a divergence between two decisions of Technical Boards of Appeal. However, recognising that the "case law in new legal and/or technical fields does not always develop in linear fashion, and that earlier approaches may be abandoned or modified", the Enlarged Board found that this constituted a legitimate development rather than a conflict of case law.

In the absence of conflicting Board of Appeal decisions, the Enlarged Board concluded that the legal requirements for a referral were not met. Nevertheless, the Board affirmed the right of the President of the EPO to "make full use of the discretion granted by Article 112(1)(b) EPC" in making a referral, and provided further guidance on how these requirements for such a referral should be interpreted.

Further information

• Appeals: Opinion of the Enlarged Board of Appeal
• Appeals: Opinion of the Enlarged Board of Appeal (complete file)
  
• Official Journal: Referral by the President of the European Patent Office to the Enlarged Board of Appeal dated 23 October 2008 regarding divergent decisions of two boards of appeal
• Patenting issues: Pending referral to the Enlarged Board of Appeal (G 3/08)"

"I. In a referral under Article 112(1)(b) EPC dated 22 October 2008, the President of the EPO asked the Enlarged Board of Appeal to consider a set of questions concerning the patentability of programs for computers (computer-implemented inventions, CIIs) on which she deemed the Boards of Appeal to have given different decisions and which she held to be of fundamental importance within the meaning of Article 112(1) EPC [European Patent Convention]....

4.1 CII patentability has of course long been the subject of heated debate in administrative and judicial practice and literature in countries with advanced patent systems, in particular within EPC territory. In these countries, with their national rules on patentable subject-matter, although widely harmonised on an European basis, this problem has given rise not so much to different court verdicts but to sometimes different reasoning for them. Moreover, some years ago the European Parliament and Council made an ultimately unsuccessful attempt to harmonise law on CII patentability within the EU by means of a directive (COM (2002) 92 final - 2002/0047 (COD)). A uniform understanding of where to draw the dividing line between applications relating to programs for computers as such, which are excluded from patentability under Articles 52(2)(c) and (3) EPC, and applications relating to patentable technical solutions, in the form of CIIs, still cannot be assumed despite considerable convergence in recent court rulings.

(See however the increasingly convergent decisions of EPO Technical Board of Appeal 3.5.01 of 15 November 2006 on T 154/04 - Duns Licensing; the Paris Tribunal de grande instance on case 2001/11641, PIBD No. 867 III p. 59 - Infomil (on the patent in that case see also Technical Board 3.5.01's decision of 22 October 2008 on T 116/06, which dismissed the proprietor's appeal against the opposition division's revocation of the patent); EWCA judgment of 8 October 2008, Civ 1066 - Symbian Limited; Order of the Tenth Civil Senate of Germany's Federal Court of Justice of 20 January 2009 in GRUR 2009, 479 - Steuerungseinrichtung für Untersuchungsmodalitäten; and in the USA, US Court of Appeal for the Federal Circuit of 10 October 2008, 2007 - 1130 in re Bilski)"

"... the Enlarged Board must also consider whether the divergent decisions might not be part of a constant development, possibly still ongoing, in jurisprudence on recent patent law issues, in the course of which older decisions have lost their significance and so can no longer be considered in connection with newer decisions. Such putative differences do not justify presidential referrals, legal development being one of the principal duties of the Boards of Appeal, in particular in new territory.

Hence the President has no right of referral under Article 112(1)(b) EPC simply in order to intervene, on whatever grounds, in mere legal development if on an interpretation of the notion of "different decisions" in the sense of conflicting decisions there is no need for correction to establish legal certainty."

Full post as published by LawPundit on May 17, 2010 (boomark / email).