Under case number G 3/08, the Enlarged Board of Appeal of the EPO issued on May 12, 2010 an opinion in response to questions referred to it by the President of the European Patent Office (EPO), Alison Brimelow, on October 22, 2008. The questions subject of the referral related to the patentability of programs for computers under the European Patent Convention (EPC) and were, according to the President of the EPO, of fundamental importance as they related to the definition of "the limits of patentability in the field of computing." In a 55-page long opinion, the Enlarged Board of Appeal considered the referral to be inadmissible because no divergent decisions had been identified in the referral.
The referral had been quoted as relating to the "deeply contentious question about how to assess the patentability of software-related inventions". Alison Brimelow had been reported to have been considering referring the issue to the Enlarged Board of Appeal for almost two years.
Some amicus curiae briefs had anticipated that the referral would be considered inadmissible under the legal provisions of the EPC, and in particular .
Background
In addition to the Boards of Appeal before which decisions of the first instances of the EPO can be contested, the EPO includes an Enlarged Board of Appeal. This board does not constitute an additional level of jurisdiction in the classical sense. This instance takes decisions only when the case law of the Boards of Appeal becomes inconsistent or when an important point of law arises. Its purpose is "to ensure uniform application of the law" and to clarify or interpret important points of law in relation to the European Patent Convention. Only the Boards of Appeal themselves and the President of the EPO can refer a question to the Enlarged Board of Appeal. In the first case, the Enlarged Board issues a decision, while in the latter case it issues an opinion. G 3/08 is a referral of the President of the EPO under .
Under , the patentability of programs for computers is excluded. However, provides that this exclusion only applies to the extent to which a European patent application or European patent relates to such programs for computers "as such". The interpretation of the exclusion, including the words "as such", have caused applicants, attorneys, examiners, and judges a great deal of difficulty since the EPC came into force in 1978. An interpretation, which is followed by the Boards of Appeal of the EPO, is that an invention is patentable if it provides a new and non-obvious technical solution to a technical problem.
Referrals to the Enlarged Board of Appeal are said to be rare, happening only with the most complex questions. The patentability of software has provoked fierce debate in Europe over the recent years, especially in relation to the proposed European Union (EU) directive on the patentability of computer-implemented inventions. The directive was rejected in 2005 by the European Parliament, a decision that was welcomed by those on both sides of the debate, by those supporting the patentability of software in Europe as well as those opposing it.
Questions
Four questions have been referred by the President of the EPO to the Enlarged Board of Appeal. The four questions have been chosen to look at four different aspects of patentability in the field of computer programs.
Question 1: Claim category
A divergence between decisions T 1173/97, making no distinction between categories of claims, especially between computer-implemented claims and computer program claims, and T 424/03, making a distinction between these two categories, is cited as justifying this question.
Question 2: Claim as a whole
A divergence between decisions T 1173/97 and T 258/03 is cited as justifying this question. Under T 1173/97, computer programs are methods, and in order to have a technical character computer programs must demonstrate a further technical effect (which goes beyond the "normal" physical interactions between program (software) and computer (hardware)). Under T 258/03, a method acquires a technical character simply by involving technical means.
Question 3: Individual features of a claim
A divergence between, on the one hand, decisions T 163/85 and T 190/94, according to which a technical effect on a physical entity in the real world is required (to escape the exclusion under Article 52(2)(c) and (3)), and, on the other hand, T 125/01 and T 424/03, according to which the technical effects can be essentially confined to the respective computer programs, is cited as justifying this question.
