The Enlarged Board of Appeal Refuses President's Referral on Computer Implemented Inventions

In 2008, the President of the European Patent Office (EPO) referred a number of questions to the Enlarged Board of Appeal in order to clarify the law on the patentability of computer programs.  In decision G3/08, the Enlarged Board found the President’s referral inadmissible and refused to answer the questions directly.  However, the Enlarged Board did make some comments in the decision in order to summarise the current practice of the Boards of Appeal.

Background
The purpose of the Enlarged Board of Appeal is to ensure uniform application of the law.  However, the Enlarged Board is not an appellate body and it can only be consulted if a specific question is posed by a Board of Appeal on a particular issue, or if the President of the EPO refers a point of law on which two Boards of Appeal have given different decisions.

In the present case, the President of the EPO posed several questions concerning the exclusion to patentability of computer programs.  According to the European Patent Convention, programs for computers are not to be regarded as inventions, to the extent that the subject matter of a patent application relates to a computer program as such.

The Dismissal of the Referral
The Enlarged Board ruled that a presidential referral is only admissible if two Board of Appeal decisions are divergent or in conflict, to the extent that it is difficult or impossible to know which decision to follow.  A referral is not admissible merely because of a shift in practice which would occur naturally in the development of the law.  In fact, even a radical shift in practice would not necessarily lead to an admissible referral if the relevant decision included an acknowledgement that practice had been changed; in this situation, the Enlarged Board held that there would be no confusion over which decision should be followed.    

In the present case, the President cited 14 Board of Appeal decisions that were taken over an 18 year period.  The Enlarged Board found that the differences identified by the President had either been resolved in favour of an established practice, or else the decisions were not, in fact, in conflict.  Accordingly, the President’s referral was dismissed.

Current Practice of the EPO 
Enlarged Board did comment on the current practice of the Boards of Appeal when dealing with computer implemented inventions.  In particular, the Enlarged Board confirmed that an invention would not be excluded from patentability as a computer program if it involved the use of some sort of hardware or technical means.  For example, a claim that refers to “a computer readable storage medium, storing a computer program that performs the steps of x, y and z” would not be excluded as a computer program as such.  A claim in this form may however be refused for a lack of inventive step if it does not involve a technical solution to a technical problem.

The Enlarged Board did not comment on the validity of the approach that has been developed which has shifted the assessment of patentable subject matter into the realm of inventive step.  However, it appears that the Enlarged Board would not be inclined to intervene because it considers that an established practice has been developed.

Effect on Practice
This decision consolidates a body of law that has been developed over many years by the Boards of Appeal and determines that there is no conflict between individual decisions.  We believe that the Enlarged Board has provided some much needed certainty in this subject area, and therefore we predict an era of stability in the treatment of computer implemented inventions by the EPO.

It seems that it will continue to be a challenge to obtain patent protection for computer implemented inventions, but stakeholders can breathe a sigh of relief that the law in Europe is unlikely to be subjected to further upheaval. The key question to be answered remains: does the claimed invention involve an inventive step in a technical field?  Please feel free to contact us if you would like to discuss whether any particular invention might meet this requirement for patentability.