개요로 돌아 Programs for Computers

On May 12, 2010, the Enlarged Board of Appeal of the EPO issued the attached Opinion G 0003/08 in relation to a point of law referred by the President of the EPO, Ms. Alison Brimelow, on the question of the patentability of programs for computers.

The Opinion of the Enlarged Board of Appeal (EBoA) has been awaited with great anticipation by members of the legal community as well as by the software industry. The level of interest was exemplified by the 102 amicus curiae briefs filed by companies, industry associations, law firms and others.

The EBoA decided that the referral is inadmissible. Thus, the established case law of the Boards of Appeal (BoA) on programs for computers has not been challenged, with the positive outcome that the current examination practice will be maintained.

Specifically, the EBoA did not question the liberal position taken in the established case law of the BoA concerning the exclusion from patentability of "non-inventions" under Art. 52(2) and (3) EPC (corresponding to the requirement of statutory subject matter in the US). In particular, the EBoA held that "a claim in the area of computer programs can avoid exclusion under Articles 52(2)(c) and (3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium." (Reasons for the Opinion, 10.13).

In this context, the EBoA noted that "the list of 'non-inventions' in Art. 52(2) EPC can play a very important role in determining whether claimed subject-matter is inventive" under Art. 56 EPC. To the apparent surprise of the EBoA, the referral did not address any of its questions to the validity of the modified problem and solution approach, which is the established method for the assessment of inventive step by the BoA. Accordingly, although the EBoA was not obliged to address the validity of the modified problem and solution approach, the EBoA concluded that the "case law ... has created a practicable system for delimiting the innovations for which a patent may be granted" (Reasons for the Opinion, 10.13.2). According to the EBoA, approximately 70 decisions cite T 641/00, COMVIK, and over 40 decisions cite T258/03, Hitachi, which are the decisions essentially defining the modified problem and solution approach. The EBoA was not able to find "any divergence in this case law, suggesting that the Boards are in general quite comfortable with it". Therefore, the key issue in all discussions remains inventive step rather than the exclusion from patentability.

The admissibility of the referral, among other conditions, requires different decisions taken by two BoA. The EBoA decided that the notion of "different decisions" has to be understood restrictively in the sense of "conflicting decisions". Specifically, the decisions must vary in their substantive content, while being close together in time. According to the EBoA, the referral did not cite any conflicting decisions, but, at most, reflects a legitimate development of the case law without divergence (Headnotes 3, 4, and 6). Consequently, the referral was held to be inadmissible.

In conclusion, the aim of Ms. Brimelow's referral, to revert back to a stricter approach to the examination of computer-implemented inventions has failed. The Opinion allows the positive development of the case law for the patentability of programs for computer to continue.

Download the full text of the opinion G 0003/08 under:

http://www.mueller-bore.de/tl_files/Decisions_EPO/Programs_for_Computers.pdf

 

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