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G308: Enlarged Board answers no questions on patentability of computer implemented inventions

In its opinion G3/08, the Enlarged Board of Appeal of the European Patent Office (EPO) declined to answer questions referred to it by the President of the EPO about the patentability of computer-implemented inventions (CII).

According to the Enlarged Board, the decisions by the Boards of Appeal (Boards) on this issue showed no divergence that needed resolution.

National effect
Although it may be disappointing that the Enlarged Board did not lend its authority tocriteria for the patentability of CII, the observation that case law of the Boards is not inconsistent may already be important as regards its effect on decisions by the courts in individual European countries.

For example, the English Court of Appeal has observed earlier in its Aerotel decision (2006) that it was premature to follow the decisions of the Boards on this issue because they were inconsistent. The Court of Appeal was conscious of a need to place great weight on the decisions of the Boards and it indicated that it might have to reconsider its own approach to CII if and when the Enlarged Board ruled on the question, to remove the alleged inconsistency between the Boards� decisions. Now that the Enlarged Boardhas ruled that there is no inconsistency, this could be a reason for the English courts to follow the decisions of the Boards.

Apart from novelty and nonobviousness, the main hurdle that must be taken in Europe to obtain a patent for a CII is that it must be shown that the invention provides a “technical contribution to the art”. The usual patent office practice for judging this is to ignore claim features that do not contribute to the solution of a technical problem and to judge inventive step in relation to the remaining features of the claim.

The view of the Boards on the legal basis for the condition of “technical contribution” has shifted through the years. Currently, it is seen exclusively as part of the conditions for “inventive step” (Article 56 of the European Patent Convention (EPC)). In the past it was also applied in the context of Article 52 EPC. Article 52 specifies that patents shall be granted for inventions that are new, involve an inventive step and are susceptible of industrial application but, to the extent that a patent application relates to computer programs as such, programs for computers are not regarded to be such inventions.

The case law of the Boards of the EPO holds that Article 52 EPC implies a requirement of “technical character”. In the past, the requirement of “technical contribution” was sometimes used as a condition for “technical character”. However, under current case law, technical character is judged independently of technical contribution. The Enlarged Board illustrated this through the example of a cup carrying a picture without technical effect. Such a cup will lack inventive step because it lacks technical contribution, but this does not detract from the fact that the cup has technical character.

The shift of removing the condition of “technical contribution” from the test for technical character has ultimately led to the shift from excluding claims on computer program products (disks) with inventive programs to allowing such claims.

Inconsistency versus legal development
The EPO President has the right to refer a point of law to the Enlarged Board if two Boards have given different decisions on that question. In G3/08 the EPO President based her questions on the observation that currently the Boards accept claims directed at computer program products e.g. disks) containing computer readable instructions of inventive computer programs, whereas earlier decisions of the Boards had excluded the allowability of such claims. The questions went on to suggest a host of criteria that could be imposed as a condition for “technical character”.

The Enlarged Board observed that the President”s right to refer questions was limited to cases where this was needed to ensure uniform application of the law. Unlike common law courts, the Boards were not required to uphold their own precedent. A shift of the case law was possible, and when it was the result of legal developments, especially in new fields of law such as that of the patentability of CII, such a shift did not make a referral by the President admissible.

The Enlarged Board was of the opinion that the shift with respect to computer program products was the result of such a legal development of case law. The shift had made the earlier decisions irrelevant and thus did not leave an inconsistent situation. Under these circumstances, the Enlarged Board did not have the power to act as a higher instance ranking above the Boards. At most it was regrettable that the Board had not explicitly stated that the more recent decision deviated from an earlier decision.

The Enlarged Board emphasized that a presidential referral was not admissible merely because the European Parliament and Council have failed to adopt a directive on CII patenting or because consistent rulings by the Boards are called into question by a vocal lobby.

The Enlarged Board noted in passing that it was “surprising” that the President did not direct any of the questions to the validity of the “technical contribution”criterion as part of judging an inventive step. The Enlarged Board speculated that the President could not identify any divergence in the case law on this issue, despite the fact that (at present) approximately seventy decisions issued by a total of fifteen different Boards cited this case law. The Enlarged Board itself was not aware of any divergence in this case law, suggesting that the Boards are quite comfortable with it in general.

As the condition of “technical contribution” is the real hurdle for computer implemented inventions, this note of the Enlarged Board can be seen as a clear signal that the case law is now well established and consistent and that it will not be set aside by the Enlarged Board.