By Johannes Lang, Dr Hans Wegner, Dr Rudolf Teschemacher

First published in BARDEHLE PAGENBERG IP Report 2008-V,

On October 22, 2008 the President of the European Patent Office, in accordance with Article 112 (1) (b) EPC, referred four questions relating to the patentability of computer implemented inventions to the Enlarged Board of Appeal of the EPO:

Question 1: Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

Question 2: (A) Can a claim in the area of computer programs avoid exclusion under Article 52(2) (C) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium? (B) If Question 2 (A) is answered in the negative, 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?

Question 3: (A) 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? (B) If Question 3 (A) is answered in the positive, is it sufficient that the physical entity be an unspecified computer? (C) If Question 3 (A) is answered in the negative, 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?

Question 4: (A) Does the activity of programming a computer necessarily involve technical considerations? (B) If Question 4 (A) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim? (C) If Question 4 (A) is answered in the negative, 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?

As a reason for this somewhat surprising referral, the President of the EPO, Mrs. Alison Brimelow, indicates that there were concerns by national courts, in particular the UK courts, and the public "that some decisions of the boards of appeal have given too restrictive an interpretation of the breadth of the exclusion" from patentability of programs for computers as such provided in Article 52(2) and (3) EPC. In fact, in October 2006, the UK Court of Appeal under Lord Justice Jacob had asked in the Aerotel case the then President of the EPO, Mr. Alain Pompidou, to refer questions to the Enlarged Board of Appeal which had been declined by the EPO at the time. In the opinion of the UK Court of Appeal, Article 52 (2) EPC is not expressed as an exception to patentability which would have to be interpreted restrictively, but as independent positive categories of things which are not to be regarded as inventions and which have to be regarded individually. This opinion has been confirmed by the UK Court of Appeal in its recent Symbian decision of October 8, 2008. Although the four questions now referred to the Enlarged Board of Appeal are completely different from the questions proposed by the UK Court of Appeal in Aerotel, they seem, however, to be inspired by the same approach that the provision in Article 52 (2) EPC that programs for computers shall not be regarded as inventions has to be interpreted in a broader sense.

In contrast to that, the Board of Appeal 3.5.1 handling most of the computer implemented inventions at the EPO, as a result of a continuous development of its case law, has found in T1173/87 (Computer program product/IBM; reasons 5.3) that the provision of Article 52(3) EPC ("as such") does not allow for a broad interpretation of the scope of the exclusion of Article 52(2) EPC. As a consequence, in its recent decisions the Board generally found that any method using technical means (i.e. a computer) is an invention within the meaning of Article 52(1) EPC. Only in the following step, when assessing novelty and inventive step, it is then examined which features make a technical contribution to the invention and, further, if these features are novel and inventive. If there is a technical contribution, the specific claim format is less relevant so that even claims directed to a computer program are permissible and can be granted. In essence, the examination of computer implemented inventions at the EPO is under the current practice directed to the technical substance of an invention rather than the specific claim format.

The President's referral does not address the relation between the assessment of the technical character of claimed subject- matter and the assessment of inventive step. Under the established case law, the technical character has to be assessed without considering the available state of the art. As a result of this, concrete products and methods employing specified technical means are considered to have technical character. Thus, computer implemented inventions involving a mix of technical and non-technical features may easily pass the hurdle of Article 52 (2) EPC. By contrast, when assessing inventive step, features of a claim not contributing to the technical character have to be separated from the technical features. The non-technical features may play a role for the definition of the objective technical problem. However, if the technical implementation of the problem is obvious, there is no inventive step.

Article 112 (1) (b) EPC stipulates that the President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question. However, the decisions cited by the President in her referral were all made by the same Board of Appeal 3.5.1 although in different compositions of its members and under two succeeding chairmen. The earliest decision referred to dates from as early as 1989 (T 163/85), whereas the latest decision dates from 2006 (T 424/03), thus covering a very long period of evolution of interpretation of the EPC by the Board of Appeal. The very first question to be answered by the Enlarged Board of Appeal will certainly be the general question if a sequence of developing decisions of one Board of Appeal, although made in different compositions of the Board, can be seen as different decisions of two Boards of Appeal as required for a referral by Article 112 (1) (b) EPC. This point is particularly relevant in situations in which a Board of Appeal has overruled its previous case law (see e.g. T 258/03 – Auction method/HITACHI, Reasons pt. 4). There is only one decision of the Enlarged Board of Appeal (G4/98) dealing with deviating decisions of one Board of Appeal. However, it concerned two decisions of the Legal Board of Appeal, and there is only one Legal Board of Appeal anyway.

Another important question for the applicants will be how the EPO will handle pending applications and, in particular, the question whether an Examining or Opposition division can stay the further examination of a computer implemented invention until the Enlarged Board of Appeal has rendered its decision. In 2006, when cases G 1/05 and G 1/06 relating to divisional applications were pending before the Enlarged Board of Appeal, the President of the EPO had issued a notification which has since been introduced into the Guidelines for Examination in the EPO (Part E, Chapter VII, 3.), stating that where a referral to the Enlarged Board of Appeal is pending and the outcome of examination or opposition proceedings depends entirely on the decision of the Enlarged Board of Appeal, the proceedings will be stayed upon request of at least one of the parties. Where the proceedings are not stayed, they will be decided according to existing practice. Since the answer to at least one of the above cited four questions referred to the Enlarged Board of Appeal will certainly always influence the outcome of pending examination or opposition proceedings relating to computer implemented inventions, it can be expected that opponents in particular might frequently request a stay of the proceedings. Whether such requests are successful may depend on the question of inventive step on the merits of the individual case. If the Opposition Division would not acknowledge inventive step anyway, there was no need to allow the opponent's request to stay the proceedings, because of the question whether Article 52 (2) EPC would also exclude the grant of a patent. Even if technical character is assumed in the patentee's favour, the final outcome would be in the opponent's favour.


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