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G3/08 software related inventions


28th Jun 2010

The EPO Enlarged Board of Appeal has published its decision in pending case G3/08, confirming that the current approach to computer implemented software inventions set out in the case law of the Technical Boards of Appeal is both consistent and correct.

On 23 October 2008, the president of the European Patent Office (EPO), Alison Brimelow, referred a number of questions to the EPO’s Enlarged Board of Appeal (EBA) concerning the patentability of inventions implemented in computer software.

The referral was intended to clarify the EPO’s approach to such inventions, in view of earlier comments by the UK Court of Appeal arguing that the case law developed by the EPO’s Technical Boards of Appeal (TBA) lacked consistency. In a 55 page decision released on 12 May 2010, however, the EBA refuted the notion that there was inconsistency and dismissed the President’s referral as inadmissible.

In reaching their decision, the EBA highlighted the necessary distinction between the acceptable “development” of case law, in which older cases are gradually superseded and refined, and the more-problematic “divergence” of case law, in which conflicting viewpoints arise within a short time frame of one another and result in a lack of clarity or confusion. In explaining their reasoning, the Board took pains to confirm and elaborate on the current European approach to software related inventions, and in doing so, helpfully provide guidance to national courts troubled by perceived differences in approach. The hope of many practitioners is that this will settle the UK and the European debate on the patentability of computer implemented inventions for the time being at least.

The Hitachi 1, Microsoft 2, Ricoh 3, and Comvik 4, decisions of the Technical Board of Appeal decisions provide the current European framework against which the patentability of computer software related inventions is assessed. These decisions interpret the exclusion from the realm of patentable subject matter of computer programs “as such”, as set out in Article 52(2)(c) of the EPC, to mean only those computer related inventions that fail to provide a technical solution addressing a technical problem.

No definition of “technical” has been laid down in the case law. However, computer software, like computer hardware, is considered to be an implementation of technology and to qualify as a part of a potential “technical solution”. The issue of whether a computer program is excluded from patentability then depends on what the computer program achieves in practice, and whether the software is directed to solving a problem with technology, or merely a problem that is grounded in commercial or administrative considerations.

The EBA decision G3/08 is important as it confirms that the case law relating to excluded subject matter in Europe is mature and fully developed, and gives legal certainty to applicants of European applications concerning computer software related inventions. The EBA’s response to the President’s referral is also of much interest, in emphasising that the role of the EBA is not to create case law, but to resolve inconsistencies in the case law created by the Boards of Appeal.

It is hoped that the UK Supreme Court will take a case on excluded subject matter allowing it to issue a decision that reflects the findings of the EBA and bring the EPO approach more firmly into UK Law. Even before this occurs, it is hoped that the endorsement of the current European Approach to patentability of computer implemented inventions will allow the UKIPO and UK Courts to take a more ‘European’ approach to patentability, with the framework set out by the current body of UK law.

  1. T0258/03, Hitachi, Auction Method
  2. T0424/03, Microsoft, Clipboard Formats
  3. T0172/03, RICOH, Order Management
  4. T0641/00, COMVIK, Two Identities

This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.

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