Computer-implemented inventions under the EPC in the light of the Opinion of the EBA G 3/08 Association Internationale pour la Protection de la Propriété Intellectuelle 42th World Intellectual Property Congress André Klein Paris, 4 October 2010
2 Overview summary of the case G 3/08: setting the framework G 3/08: dealing with the questions the EBA'S views on CII as expressed in G 3/08 conclusions: on CII and beyond
3 Summary of the case In October 2008 four questions in connection with computerimplemented inventions (CII) were referred to the Enlarged Board of Appeal of the EPO by the President. They were (omitting follow-ups): 1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program? 2. Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable storage medium? 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 a claim? 4. Does the activity of programming a computer necessarily involve technical considerations?
4 100 amicus curiae letters were received After an interlocutory decision rejecting as unfounded an accusation of partiality, the EBA formed by 7 members including two rapporteurs - one technical, one legal - and two external judges - Mr Scharen (DE) and Mr Dorn (DK) - issued its opinion on 12 May 2010 The opinion comprises two main parts: 1. setting the framework of the EBA's competence 2. considering the questions
5 G 3/08: setting the framework Article 112 EPC: 1. In order to ensure uniform application of the law, or if a point of law of fundamental importance arises:... (b) 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.
6 when ruling on questions referred to by the President the EBA does not solve any particular case or rule on abstract points of law, the scope of the EBA's ruling is limited by the terms of the questions referred to it on these questions two Boards of Appeal must have given different decisions "different" decisions means that the decisions must conflict, development of case law is not enough: "The object and purpose of Article 112(1)(b) EPC is to have an Enlarged Board decision re-establish legal uniformity when it has clearly been disrupted, not to intervene in legal development" (see point 7.3.1 of the Reasons)
7 G 3/08: dealing with the questions within these limits the EBA then considered the questions questions 1 and 2 were directed mainly at the format required for a claim to overcome the exclusion under Article 52(2) and (3) EPC questions 3 and 4 concerned the contribution of certain features to the technical character of the claims the EBA examined the allegedly conflicting decisions cited in the referral in support of the questions on the background of the established case law of the Boards of Appeal
8 the EBA judged that the views expressed by the different Boards of Appeal in the cited decisions on the questions submitted to it either actually deviated but that this deviation was a legitimate development of the case law (question 1) or that they did not differ accordingly the EBA concluded that the questions and the referral of the President were inadmissible although the questions did not have to be answered, the EBA in the context of its assessment of admissibility expressed its views on a number of issues in relation to CII which might be of interest for the practitioner
9 The EBA'S views on CII as expressed in G 3/08 the EBA noted that by stating that whether a claim to a computer program is excluded from patentability should be determined independent of the prior art, T 1173/97, IBM had deliberately abandoned the former "contribution approach" - according to which the further technical effect required from a computer program to avoid exclusion had to be new - and that this choice stands as the established case law and cannot be overturned the EBA agreed that decision T 1173/97, IBM and T 424/03, Microsoft took different views on the exclusion of claims to a program on a computer-readable medium
10 it however noted that the former decision - which denied that mere recitation of the computer-readable medium could provide patentability - had not been followed in the later development of the case law towards the so-called "any hardware" or "any technical means" approach the EBA acknowledged that the present position of the case law is 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 in the EBA's view this did not mean however that the list of exclusions in Article 52(2) did not have any effect; the effect was on the assessment of the inventive step; a claim which specifies no more than e.g. "Program X on a computer-readable storage medium" will overcome the exclusion of Article 52 (2) and (3) EPC but will always fail to be patentable for lack of inventive step under Articles 52(1) and 56 EPC
11 the EBA indicated that it was aware that this approach is in some way distasteful to many people, but it has been consistently developed since T 1173/87 IBM and it was not the function of the EBA to overturn it, the more so since, somewhat surprisingly, the referral did not address this issue the EBA cited T 154/04, Duns for an exposition of the favoured method of taking into account subject-matter from the list of "non-inventions" in Article 52(2) EPC in the assessment of inventive step, as frequently used in decisions of the Boards of Appeals, which would appear to have created a practicable system for delimiting the innovations for which a patent may be granted
12 on the issue of which features contribute to the technical character of the claimed subject-matter, the EBA noted that the case law of the Boards of Appeal is consistent in considering all the features that are claimed, thus avoiding any weighing of features or search for the "essence" of the invention it is a well-established principle that features which would, taken in isolation, belong to the matters excluded from patentability b y Article 52(2) EPC may nonetheless contribute to the technical character of a claimed invention, and therefore cannot be discarded in the consideration of inventive step the EBA denied that the case law of the Boards of Appeal necessarily required that a technical effect be caused on a physical entity in the real world
13 finally, in connection with computer programs and programming it seemed to the EBA, although it may be said that all computer programming involves technical considerations since it is concerned with defining a method which can be carried out by a machine, that this in itself is not enough to demonstrate that the program which results from the programming has technical character for a program to have technical character the programmer must have had "further technical considerations" beyond "merely" finding a computer algorithm to carry out some procedure
14 CONCLUSIONS on CII and beyond in its opinion G 3/08 the EBA decided that the referral of the President was inadmissible since - on the questions raised - the decisions cited in support of the referral did not conflict or disrupt legal uniformity G 3/08 draws a picture of the present case law of the Boards of Appeal along with the "any hardware or technical means" approach, the requirement for further technical considerations in the context of computer programs and programming and the consideration of excluded subject-matter in the assessment of inventive step, which the EBA considered to lead to a practicable system as exposed in T 154/04, Duns
15 the questions referred to the EBA were restricted to CII but the same principles are at present consistently applied by the Boards of Appeal, in connection also with inventions involving other excluded subject-matter in the sense of Article 52 (2) EPC: - the subject-matter of T 154/04, Duns as referred to by the EBA is primarily a business method - see also e.g. T 619/02 (odour selection) for an application to nontechnical subject-matter beyond the list of Article 52 (2) EPC
Annex: relevant provisions of the EPC (1/2) Articles 52(2) and (3) EPC: The following, in particular, shall not be regarded as inventions: a) discoveries, scientific theories, mathematical methods; b) aesthetic creations; c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; d) presentations of information;...only to the extent to which a European patent application relates to such subject matter or activities as such. 16
17 Annex: relevant provisions of the EPC (2/2) Rules 42(1)(a), (c), 43(1), 44 EPC (Rules 27, 29, 30 EPC 1973) various references to technical field, problem and features. Article 52(1) EPC (as revised): "European patents shall be granted for any inventions, in all fields of technology,..."