G 3/08: Patentability of Programs for Computers

The case arose from a referral under Article 112(1)(b) EPC, which allows the President of the EPO to "refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question".

The origin of the referral can be traced to a judgement by the UK Court of Appeal in Aerotel. The judgement in this case reviewed (and rather criticised) EPO case law in this area, and proposed some questions that the EPO President might consider submitting to the EBA (national courts have no formal ability to submit questions themselves to the EBA). The then President of the EPO, Alain Pompidou, declined to follow this suggestion on the grounds that he did not think there was any inconsistency in the decisions from the Boards of Appeal, and hence no basis for a referral under Article 112(1)(b) EPC.

It was slightly surprising that less than two years later, Mr Pompidou’s successor as EPO President, Alison Brimelow, decided that there was basis for a referral, and this forms the basis for G 3/08. Note that the referral only cites decisions that were already available when Mr Pompidou decided not to make a referral, so the difference in position was not triggered by any new case law.

In the event, the EBA has decided that the referral was indeed inadmissible because the referral failed to identify the required differences in case law. In particular, the EBA held that although the decisions cited in the referral did demonstrate some differences in approach, these could be considered as part of the standard development of law in an area. Newer decisions have all followed the same line of legal development, and hence there are no different (conflicting) decisions within the sense of Article 112(1)(b) EPC.

Although a finding of inadmissibility already implies maintaining the current legal position, the opinion generally goes further and does contain some discussion of the four questions contained in the referral. The arguments presented by the EBA in this analysis appear to offer explicit support for recent decisions.

In particular, the EBA comments as follows on the 4 questions included in the referral (the questions are slightly simplified and shortened here):

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

Despite the finding of inadmissibility, the EBA discusses this question at some length, especially in relation to T1173/97 and T424/03. Although the “contribution” approach of T1173/97 is no longer followed, the EBA regards this as a normal development of case law. In addition, the EBA goes some way towards reconciling more modern decisions with the reasoning provided in T1173/97.

2) Can a claim in the area of computer programs avoid exclusion merely by explicitly mentioning the use of a computer or a storage medium? If not, is a further technical effect necessary to avoid the exclusion?

The EBA mainly decides that the decisions cited in the referral do not diverge on this point (hence the question is not admissible). It is clear from the discussion of Question 1 that the EBA would regard the answer to this question as “Yes”.

3) 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. If so, can the physical entity be an unspecified computer. If not, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware?

The EBA complains that this question is based on features of a claim, rather than the claim as a whole. The EBA concludes strongly that this question is inadmissible and provides no substantive discussion of the question itself.

4) Does programming a computer necessarily involve technical considerations? If so, do all features resulting from programming contribute to the technical character of a claim; if not, do they only contribute to the technical character of a claim if the contribute to a further technical effect?

Again the EBA regards this question as inadmissible. However, the EBA does indicate that a computer program per se does not necessarily involve technical considerations. This perhaps opens the door to rejecting computer program claims (but not physical medium claims) under Article 52(2) EPC depending upon the purpose of the computer program, i.e. if the computer program serves no technical purpose.

In summary, the opinion represents a significant endorsement of current EPO procedures for handling the patentability of programs for computers. Consequently, it is expected that the opinion will cause little if any change regarding which applications are, or are not, allowed by the EPO. In particular, the EPO will continue to allow patents for inventions which represent a technical problem to a technical solution (irrespective of whether or not they are implemented using a computer program). However, the opinion may be more significant for harmonising national courts across Europe, which have not necessarily always followed the EPO approach.