PATENTABILITY OF COMPUTER SOFTWARE (CASE G3/08)
November 2008
The President of the EPO, Alison Brimelow, has referred a series of questions to the Enlarged Board of Appeal (EBoA) regarding the patentability of computer software.
Under Art. 52 of the European Patent Convention, programs for a computer are excluded from patentability to the extent a patent application relates to computer programs "as such". Case law at the Technical Boards of Appeal has developed over the past thirty years, and the recent approach has been that any claim which has a "technical character" is sufficient to overcome this objection. In practice this means the program, when running on a computer, must have a technical effect that goes beyond the ordinary effects of a program running on a computer.
However, over the years a number of conflicting Technical Board of Appeal decisions have issued. Moreover, although this is not a legitimate reason for the referral of questions to the EBoA, the national courts of Europe have conflicting tests for the patentability of computer software. In particular, UK courts have recently expressed a desire for a referral to the EBoA (see Symbian's Application: http://www.ipo.gov.uk/patent/pressnotice-3).
The questions themselves address four different aspects of patentability in this field. The first question relates to the relevance of the category of the claim. The other three questions ask where the line should be drawn between those aspects excluded from patentability and those contributing to the technical character of the claimed subject-matter: the second question concerns the claim as a whole; the third, individual features of the claim; and the fourth - relevant for defining the skills of the (technically) skilled person - concerns the activity (the programming) underlying the resulting product (the computer program).
The EBoA will first consider the admissibility of the referral. Some commentators have noted that in this case admissibility is a non-trivial step, as it is a requirement that two Technical Boards of Appeal have given differing decisions on the referred questions. Although this requirement is fulfilled, such conflicting decisions issued several years ago, and the EBoA may consider that European practice in this regard has been settled since then.
Provided the referral is deemed admissible, the EBoA will then go on to consider the questions themselves. When a decision issues, it will serve to guide practitioners at the EPO and will strongly influence those in the national courts of EPC countries.
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