Patentability of Computer Implemented Inventions – opinion G3/08 of EPO Enlarged Board

On 12 may 2010, the Enlarged Board of Appeal  of the European Patent Office (EPO) issued its opinion G3/08 on the referral of 22 October 2008 by the President of the EPO on the patentability of Computer Implemented Inventions (CIIs). The Enlarged Board received around a hundred of letters of organizations/individuals expressing their opinion.

The Enlarged Board comes to the conclusion that all questions of the president are inadmissible, because the decisions of the Boards of Appeal identified by the President as being different are viewed by the Enlarged Board as being a legitimate further development of the case law and, for as far as the decisions are different, the decisions are not conflicting. We will discuss the background and admissibility of the questions in a later blog. Although none of the questions are thus formally answered, the Enlarged Boards extensively discusses the questions in reasons 10 to 13 of the opinion. In particular it tries to determine whether there is conflicting case law. In concluding that there is no conflict, the Enlarged Board identifies the case law that determined how the EPO currently exams CIIs and sees no case law in conflict with those leading decisions.

An underlying question in the referral is whether CIIs should be treated differently from other types of inventions and whether the particular claim format would influence this, based on Art.52(2)(c), 52(3) EPC stating that a ‘program for a computer’ as such is not an invention.

The Enlarged Board rubber-stamps the approach of T424/03 Microsoft, holding that only a claim formulated as ‘a program’ might be excluded as such, whereas a claim to a ‘computer-readable medium with a program’ or a ‘computer implemented method’ would not be. Avoiding an objection under Art.52(2)(c), (3) is thus just a matter of explicitly mentioning the use of a computer or computer-readable medium in the claim.

The Enlarged Board remarks that this ‘in some way may be distasteful to many people’, but that this does not mean that a patent can be obtained merely by clever claim formulation. Instead like all other types of inventions, a CII claim must be new and inventive. The Enlarged Board confirms the requirement that the claimed CII must have a ‘further technical effect’, as introduced by T1173/97, and refers to the ‘elaborate system for assessment of inventive step as laid down in T154/04’. We will discuss this system in a further blog. The EPO summarized the opinion as “The Enlarged Board confirms the EPO approach to computer programs”.

Jelle Hoekstra, Delta Patents

see for criticism on this decision, Justine Pila, “Software Patents, Separation of Powers, and Failed Syllogisms: A Cornucopia from the Enlarged Board of Appeal of the European Patent Office”