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Patent Law

: I/P Updates

European Software Patentability Update

By William F. Heinze

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European Software Patentability Update

The UK-IPO issued a press release on November 7, 2008 regarding the patentability of computer programs following the recent UK decision in Symbian Ltd v Comptroller General of Patents in which the UKIPO's approach relating to patentability of computer programs was overturned:

The President of the EPO has now referred a series of questions on the patentability of computer programs to the Enlarged Board. This body has the ability to make a definitive statement of EPO practice and as such also carries significant weight in terms of the practice adopted by the UK-IPO and other national Patent Offices within Europe. In the light of this development, the UK-IPO will not seek to appeal the Symbian judgment further.

. . . The Enlarged Board of Appeal is a body made up of EPO Appeal Board members and international experts. Its decisions are binding on the EPO (although not the UK courts). The EPO President has referred questions on the computer program exclusion to the Enlarged Board because she is concerned that decisions of EPO Appeal Boards have not been consistent. Referral under Article 112(1)(b) EPC [October 22, 2008]

. . . As with all UK court decisions the Symbian judgment is binding on the UK-IPO.

The questions being referred to the EPO Enlarged Board of Appeal are as follows:

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?

2.(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?

3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

3.(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?

4.(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?

4.(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?