Monday, May 17, 2010

Decision of the Enlarged Board of Appeal on Case G3/08

In short, the Board decided that the case was inadmissible, however they provided some general guidance on the patentability of software in their general discussion of the admissibility of the case. Essentially, the Board have indicated that the current working practice of the EPO is acceptable and nothing will change.

The case was referred to the Board by the President of the EPO under Art. 112(1)(b) EPC, as the President felt that a number of Boards of Appeals had issued diverging decisions. The Enlarged Board of Appeal found the referral to be inadmissible as they did not feel that any of the decisions issued by any Board of Appeals were divergent. A large portion of the decision is given to a discussion as to what a divergent decision might constitute, i.e. two different Boards issuing different decisions, the same Board issuing a different decision, and so on. Also, there are linguistic differences between the English, French and German texts of the EPC regarding the words for divergent. In the end, the Enlarged Board of Appeal have taken the view that case law is allowed to evolve and therefore earlier decisions can be replaced with new decisions as the general approach to the patentability in a particular area is honed over time. As a result, the Enlarged Board of Appeal decided that none of the cases regarding the patentability of software were in any way divergent, or conflicted with one another, and hence the referral was inadmissible.; and this is the actual decision has been taken in case G3/08.

However, in arriving at this decision, the Enlarged Board of Appeal discussed many of the general issues concerning the patentability of software. The Enlarged Board of Appeal have indicated that in order to obviate the exclusion from patentability, any mention of a piece of hardware, or defining the claim as a “Computer related program…” as opposed to a “Computer program…” would be sufficient. This is very much in line with the approach taken at the moment. The Enlarged Board of Appeal have also followed the seminal decision of T1173/97 (IBM) which was first to mention this concept of a “further technical effect” beyond the expected technical effects of a computer program causing electrical currents to run in a computer. Although this decision did not mention that the further technical effect should be assessed with respect to prior art (the decision stated that the further technical effect be used to assess whether the patent application be excluded from patentability), the Enlarged Board of Appeal have now indicated that the exclusion from patentability be assessed with respect to whether the claim is only related to a computer program or whether there is any mention of hardware in the claim, and, that the concept of the “further technical effect” be used in the assessment of novelty and inventiveness. Again, this is very much in line with what the Examiners in the EPO are currently doing. In many of the amicus curiae briefs, it was expressed that a programmer writing code to carry out a particular method would have to employ many technical considerations in writing the code, and thus a computer program would implicitly have further technical effects. The Enlarged Board of Appeal stated that the programmer must have had technical considerations beyond “merely” finding a computer algorithm to carry out a procedure. Therefore, the programmer must have had “further technical considerations” in order for the computer program to be considered to be patentable, and therefore has confirmed this notion of using s further technical effect to asses the novelty and inventiveness of a computer program. The Enlarged Board of Appeal did not offer any definition of “technical” nor “further technical effect”.

Rory Litton

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