G 3/08 - Referral of questions to Enlarged Board

The President of the European Patent Office (EPO) has referred a number of questions on the subject of patentability of computer programs to the Enlarged Board of Appeal.

The President of the EPO can refer a point of law to the Enlarged Board of Appeal to resolve diverging views on the interpretation of the European Patent Convention (EPC) by different Technical Boards of Appeal. Thus, a referral is a significant event because any decision of the Enlarged Board resulting from a referral will be binding on the Technical Boards and on the rest of the EPO. Furthermore, the decision can have far-reaching implications since it can affect how national courts and national patent offices interpret their own domestic law where it is framed to have the same effect as the EPC.

The present set of questions have been referred to the Enlarged Board in response to concerns that some of the decisions of the Technical Boards have interpreted the breadth of the exclusion on computer programs too restrictively. It is hoped that the referral will lead to greater clarity. The referral has been allocated case number G 3/08.

The first question is: “Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?”

Although it can be argued that the Technical Boards have reached a consensus regarding this rather fundamental question, there still seems to be a perception that there is conflict, for example, between T1173/97 (Computer program product/IBM) and T424/03 (Clipboard formats/MICROSOFT). It seems quite likely that the answer to this question will be that the way in which an invention is claimed is not relevant as long as the claim features give rise to a technical contribution.

The second question is in two parts, namely: “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?” and, if not, “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?”

This question is founded on an apparent inconsistency between decisions T1173/97 (Computer program product/IBM) and T258/03 (Auction method/HITACHI).

T1173/97 requires “a further technical effect which goes beyond the 'normal' physical interactions between program (software) and computer (hardware)” in order to avoid the claim being excluded on the grounds of being a computer program as such, whereas, according to T258/03, any method involving technical means is not excluded from patentability. The latter decision is often considered to lead to lack of consistency during examination since it can result in method claims being handled differently to computer program claims.

The third question is divided into three parts, namely starting with “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?”. If so, the question continues “Is it sufficient that the physical entity be an unspecified computer?” and, if not, “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?”

The answer to this question will affect a great many European patents and applications since application of an exclusion frequently depends on whether the invention provides a technical effect.

The fourth question is also divided into parts. Firstly, the question asks “Does the activity of programming a computer necessarily involve technical considerations?”. If so, “Do all features resulting from programming thus contribute to the technical character of a claim?” and, if not, “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?”

This question may be of less significance than the other questions. Although there seems to be some divergence in the case law (arguably caused to a large extent by a logical error in the IBM decision), it seems unlikely that the Enlarged Board could answer this question so as to allow technical considerations that may arise from the act of programming to be taken into account when assessing the applicability of the exclusion.

The timing of this referral is interesting, being so soon after the UK Court of Appeal's decision in the Symbian case (see our report here). In that decision, reference was made to the fact that the Enlarged Board has not handed down any decision on the patentability of computer program inventions.

An earlier Court of Appeal decision in Aerotel and Macrossan (see our report here) explicitly called for a referral to be made to the Enlarged Board. This call was ignored by the then EPO president, Alain Pompidou.

Some may be surprised by this news. However, those at Venner Shipley anticipated the referral might arise because of comments made by the President during her keynote speech at Venner Shipley's reception in Cambridge earlier this month. The president said that she had been asked by a UK Court of Appeal judge whether she would be referring questions to the Enlarged Board, and stated that she had not given the judge an answer!

Pawel Piotrowicz 27 Oct 2008

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