Patentability of Software Remains Unclear at EPO
(IPRinfo 3/2010)
Rosa Maria Ballardini
Researcher, HANKEN School of Economics & INNOCENT Graduate School, IPR University Center
The decision of the EPO Enlarged Board of Appeal leaves some bitter taste for having failed to provide clear guidelines for the interpretation of patentable subject matters.
The highly awaited G 3/08 decision of the EPO Enlarged Board of Appeal on a referral made by the EPO President on the subject of patents for computer-implemented inventions (CII) is now out.
The Enlarged Board has found all questions posed to be wholly inadmissible on the grounds that there is no divergence in the current EPO case law and, thus, concluded that the legal requirements for a referral were not met.
Referral to the EPO Enlarged Board of Appeal
Back in October 2008, the EPO President Alison Brimelow had made a referral to the EPO Enlarged Board of Appeal under Article 112(1) (b) EPC on questions of patents on CII. Specifically, four questions concerning points of law of fundamental importance for the EPO practice in the field were posed.
That the issue of patentability of CII is a highly controversial one is nothing new. The EPO jurisprudence, as well as the national case law of some EPC jurisdictions, and academic discussions have clearly shown that assessing the ’as such’ exclusion posed by Article 52 EPC under the concept of ’technical invention’ is not an easy task.
The main difficulty lies not much in having to identify what elements of CII are technical and what are not, but rather in being able to separate the two sets.
As this challenge has allegedly led to inconsistent decisions of the EPO Boards of Appeal, the Enlarged Board has been called upon to provide some clarification over the interpretation of the excluded subject matters in the field of computer programmes.
The referral has certainly not passed unheard, but has instead unleashed fierce debates, as the hundred amicus curiae briefs filed by third parties clearly demonstrate.
”Differing” decisions are not ”conflicting” decisions
The decision was taken by the Enlarged Board on 12th May 2010 and it runs in full to 61 pages. The key issues, however, are clearly summarised in seven main points in the headnotes.
After confirming that a referral to the EBA under 112(1) (b) might originate from ’different’ decisions taken by a single Technical Board of Appeal in differing compositions, the EBA specifies that the notion of ’differing’ decisions should be understood as ’conflicting’ decisions.
On this respect, however, the Board points out that ’legal development as such cannot on its own form the basis for a referral, only because case law in new legal and/or technical fields does not always develop in liner fashion and earlier approaches may be abandoned or modified’.
The Board finds only one case of inconsistency among the EPO case law: in the reasoning behind the T 424/03 Microsoft decision and the T 1173/97 IBM decision. However, the EBA considers this as ’a legitimate development of the case law’ that, as such, does not justify a referral. No other case of inconsistency is identified. Thus, the Enlarged Board considers the referral as inadmissible under Article 112(1)(b).
The consideration of the referral as inadmissible does not come as a big surprise. Such an outcome, in fact, had been predicted by most commentators. In essence, what the decision says is that the EPO case law has been overall consistent (either in a good or in a bad consistent manner).
Interpretation of Article 52(3) still needed
The decision, however, certainly leaves some bitter taste for having failed, once again, to provide clear guidelines for the interpretation of patentable subject matters. What Europe most clearly needs, in fact, is some more rigidly defined rules and standards for interpreting Article 52(3), in order to enhance legal certainty particularly in the field of computer programming.
Whether this task should be borne by the EPO or rather by the legislator is an open question. What is certain, however, is that after more than twenty years of debate, this highly needed level of clarity is, unfortunately, still missing.
References
Opinion of the Enlarged Board of Appeal of 12 May 2010.
Referral by the President of the European Patent Office to the Enlarged Board of Appeal dated 23 October 2008 regarding divergent decisions of two Boards of Appeal. Available at: http://archive.epo.org/epo/pubs/oj009/03_09/03_1429.pdf
