EPO Issues Decision G 3/08 on the Patentability of Computer-Implemented Inventions

This article was included in our Summer 2010 edition of Inside IP magazine.

The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has handed down its long-awaited decision on referral G3/08, relating to the patentability of computer programs under the European Patent Convention (EPC).

Briefly, the decision made is such that the EBA will not be providing any new law, on the basis that the current law is not divergent.

In October 2008 the President of the EPO referred four questions to the EBA, relating to whether the language of a patent claim to a computer-implemented invention could influence the patentability of the claim as a whole, and the factors which should be considered when assessing the existence of a “technical effect”. For details regarding the nature of these four questions, and the basis for asking the questions, please see our earlier article of October 2008 (http://www.vennershipley.co.uk/show-news-id-140.html).

In assessing the legitimacy of the basis of the President’s referral, the EBA needed to determine whether there was in fact a divergence in the case law relating to patentability of computer-implemented inventions, or, in other words, does the case law contain “different decisions” on the same point of law.

Having analysed the case law that was mentioned in the referral in detail, the EBA reached the conclusion that there was not a divergence between the decisions, and that the referral of the four questions was therefore inadmissible. The decision sets out the reasoning behind this conclusion at length.

As well as deciding that there was no contradiction between some of the decisions, the EBA stated that apparent inconsistencies between decisions are not sufficient to demonstrate that the case law is divergent. To the contrary, it was the EBA’s opinion that the case law in fact represents a “legitimate development” of the position to be taken on patentability of computer-implemented inventions, taking into account the time difference between the decisions mentioned in the referral and the reasoning behind each of the decisions, rather than the verdicts which were given.

The result of this decision is that the current case law will continue to apply to patentability of computer-implemented inventions. It therefore remains the case that an assessment of patentability can be made based on a consideration of whether the computer-implemented invention has a new technical character which extends beyond basic technical effects associated with the fact that the invention is implemented on a computer. A claim to a computer program which demonstrates such a technical effect is therefore valid, provided the technical effect is inventive.

The Decision of the EBA can be found here: http://documents.epo.org/projects/babylon/eponet.nsf/0/DC6171F182D8B65AC125772100426656/$File/G3_08_Opinion_12_05_2010_en.pdf

Jonathan Hewett 14 Jun 2010

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