G 3/08

Last updated
G 3/08
Scale of justice 2.svg

Enlarged Board of Appeal of the European Patent Office

Contents

ECLI:EP:BA:2009:G000308.20091016
Issued May 12, 2010
Board composition
Chairman: Peter Messerli (CH)
Members: Martin Vogel (DE) (rapporteur), Dai Rees (GB) (additional rapporteur), Michael Dorn (DK), André Klein (FR), Uwe Scharen (DE), Jean-Pierre Seitz (FR) [1]
Headwords
Programs for computers

Under case number G 3/08, the Enlarged Board of Appeal of the EPO issued on May 12, 2010 an opinion in response to questions referred to it by the President of the European Patent Office (EPO), Alison Brimelow, on October 22, 2008. The questions subject of the referral related to the patentability of programs for computers under the European Patent Convention (EPC) and were, according to the President of the EPO, of fundamental importance as they related to the definition of "the limits of patentability in the field of computing." [2] In a 55-page long opinion, the Enlarged Board of Appeal considered the referral to be inadmissible because no divergent decisions had been identified in the referral. [3]

The referral had been quoted as relating to the "deeply contentious question about how to assess the patentability of software-related inventions". [4] Alison Brimelow had been reported to have been considering referring the issue to the Enlarged Board of Appeal for almost two years. [4]

Some amicus curiae briefs had anticipated that the referral would be considered inadmissible under the legal provisions of the EPC, and in particular Article 112(1)(b) EPC. [5]

Background

In addition to the Boards of Appeal before which decisions of the first instances of the EPO can be contested, [6] the EPO includes an Enlarged Board of Appeal. This board does not constitute an additional level of jurisdiction in the classical sense. This instance takes decisions only when the case law of the Boards of Appeal becomes inconsistent or when an important point of law arises. Its purpose is "to ensure uniform application of the law" [7] and to clarify or interpret important points of law in relation to the European Patent Convention. Only the Boards of Appeal themselves and the President of the EPO can refer a question to the Enlarged Board of Appeal. In the first case, the Enlarged Board issues a decision, while in the latter case it issues an opinion. G 3/08 is a referral of the President of the EPO under Article 112(1)(b) EPC.

Under Article 52(2)(c) EPC, the patentability of programs for computers is excluded. However, Article 52(3) EPC provides that this exclusion only applies to the extent to which a European patent application or European patent relates to such programs for computers "as such". The interpretation of the exclusion, including the words "as such", have caused applicants, attorneys, examiners, and judges a great deal of difficulty since the EPC came into force in 1978. An interpretation, which is followed by the Boards of Appeal of the EPO, is that an invention is patentable if it provides a new and non-obvious technical solution to a technical problem.

Referrals to the Enlarged Board of Appeal are said to be rare, happening only with the most complex questions. [4] The patentability of software has provoked fierce debate in Europe over the recent years, [4] especially in relation to the proposed European Union (EU) directive on the patentability of computer-implemented inventions. The directive was rejected in 2005 by the European Parliament, a decision that was welcomed by those on both sides of the debate, by those supporting the patentability of software in Europe as well as those opposing it. [8]

Questions

Four questions have been referred by the President of the EPO to the Enlarged Board of Appeal. The four questions have been chosen to look at four different aspects of patentability in the field of computer programs. [2]

Question 1: Claim category

Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program? [9]

A divergence between decisions T 1173/97, making no distinction between categories of claims, especially between computer-implemented claims and computer program claims, and T 424/03, making a distinction between these two categories, is cited as justifying this question. [9]

Question 2: Claim as a whole

(a) 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 data storage medium?

(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program? [10]

A divergence between decisions T 1173/97 and T 258/03 is cited as justifying this question. [10] Under T 1173/97, computer programs are methods, and in order to have a technical character computer programs must demonstrate a further technical effect (which goes beyond the "normal" physical interactions between program (software) and computer (hardware)). Under T 258/03, a method acquires a technical character simply by involving technical means.

Question 3: Individual features of a claim

(a) 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?
(b) If question 3 (a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

(c) If question 3 (a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used? [11]

A divergence between, on the one hand, decisions T 163/85 and T 190/94, according to which a technical effect on a physical entity in the real world is required (to escape the exclusion under Article 52(2)(c) and (3)), and, on the other hand, T 125/01 and T 424/03, according to which the technical effects can be essentially confined to the respective computer programs, is cited as justifying this question. [11]

Question 4: The activity of programming

(a) Does the activity of programming a computer necessarily involve technical considerations?
(b) If question 4 (a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

(c) If question 4 (a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed? [12]

A divergence between decisions considering that a programmer's activity, i.e. writing computer programs, falls within the exclusions of Article 52(2)(c) (T 833/91, T 204/93, and T 769/92) and decisions having taken the opposite view (T 1177/97 and T 172/03) is cited as justifying the question. [12]

Statements by third parties (Amicus curiae briefs)

On November 11, 2008, the Enlarged Board of Appeal decided [13] to announce in the Official Journal of the EPO "further provisions concerning statements by third parties on the points of law concerning the patentability of programs for computers referred to it by the President of the European Patent Office". [14] The expected announcement was made in the Official Journal of January 2009. Namely, any written statements, [15] i.e. amicus curiae briefs, had to be filed by the end of April 2009. [16] [17]

Around a hundred amicus curiae briefs have been submitted, [18] including briefs by Accenture, the Association for Competitive Technology (ACT), the American Intellectual Property Law Association (AIPLA), the International Association for the Protection of Industrial Property (AIPPI), Apple Inc., BT, BUSINESSEUROPE, Canonical Group Ltd, the Computer & Communication Industry Association (CCIA), Chartered Institute of Patent Attorneys (CIPA), the Computing Technology Industry Association (CompTIA), DIGITALEUROPE, Ericsson, the European Patent Institute (epi), the Foundation for a Free Information Infrastructure (FFII), the Free Software Foundation Europe (FSFE), the International Federation of Intellectual Property Attorneys (FICPI), France Télécom, IBM, the Irish Free Software Organisation (IFSO), ITechLaw, the Japan Intellectual Property Association (JIPA), Prof. Donald Knuth, Licensing Executives Society International (LESI), Microsoft Corporation and General Electric Company, Philips, the Pirate Party, Pitney Bowes, the Polish Patent Office, Red Hat, SAP, Siemens, Prof. Joseph Straus, the UNION of European Practitioners in Industrial Property, and the United Kingdom.

Reception to the referral and further developments

According to the New York Times , the referral had been welcomed "by lawyers and software engineers alike". [19]

After the referral, the England and Wales Court of Appeal did not give the UK Intellectual Property Office (UK-IPO) leave to appeal to the House of Lords regarding the Symbian's Patent Application case, "because in its view it would be premature for the House of Lords to decide what computer programs are patentable before the issue has been considered by the Enlarged Board of Appeal of the [EPO]." [20] [21]

Interlocutory decision of 16 October 2009

In an interlocutory decision of 16 October 2009, the Enlarged Board of Appeal dealt with an objection of partiality raised in an amicus brief. The objection of partiality was against a particular member of the Board, Dai Rees, and against the Board as a whole. The Enlarged Board of Appeal concluded that there was "no reason to exclude Mr Rees from its composition in case G 3/08 or to replace further members." [22] The original composition of the Board therefore remained unchanged. [23]

Opinion

The reasons for the opinion first address the admissibility of the referral. After considering that the President of the EPO had not forfeited her right to a referral because the preceding President, Alain Pompidou, had declined in 2007 to refer questions to the Enlarged Board Appeal (when suggested to do so by British judge Lord Justice Jacob), [24] the Board considered the referred questions to be undoubtedly of fundamental importance under Article 112(1)(b) EPC. [25] The Board goes on by writing that the president's right of referral to the Enlarged Board does not extend to means of replacing Board of Appeal rulings with the decision of a putatively higher instance, [26] as Article 112 EPC / Article 112a EPC does not constitute a further instance ranking above the Boards of Appeal within the EPC judicial system. [27] According to the Board, "[the EPO's Boards of Appeal] are ... assigned interpretative supremacy with regard to the EPC in terms of its scope of application". [28] The notion of "legal development" and its normal character are also addressed, [29] in the context of the reference to "different decisions" in Article 112(1)(b) EPC, a requirement considered crucial for the referral to be admissible. [30] The Board then concludes its "fundamental considerations on the interpretation of Article 112(1)(b) EPC" [31] (before considering the questions of the referral themselves) as follows:

"the President [of the European Patent Office] has no right of referral under Article 112(1)(b) EPC simply in order to intervene, on whatever grounds, in mere legal development if on an interpretation of the notion of "different decisions" in the sense of conflicting decisions there is no need for correction to establish legal certainty." [32]

Reactions

Justine Pila argued that the basis for this decision is an interpretation of Article 112(1)(b) that is inconsistent with the principles of Articles 31 and 33 of the Vienna Convention, and that it offends the constitutional principles from which it was expressly derived. [33] Namely she criticizes that the Boards’ approach

  1. suffers from the same faulty logic for which the EBA criticized the President’s referral,
  2. lacks doctrinal and theoretical coherence, and
  3. is incapable of producing legal certainty, either within the EPC or national (European) patent systems.

She concluded by criticizing the opinion, stating notably that "the EBA [had] rendered a decision that is higher on democratic language than democratic content" and that "the only hope is for the European or national Legislatures to recognize that “judiciary-driven legal development” within the EPO has indeed met its limits".

See also

References and notes

  1. ↑ Peter Messerli, Case number: G 3/08, Order, European Patent Office (EPO), Enlarged Board of Appeal, Munich, November 6, 2008 (page 23 of pdf document). Corrected by the later order: "Change of composition of the Board (compare to order of 6.11.08): Due to an administrative error Ms. K. Härmand was designated to sit in the present case, instead of Mr. U. Scharen, who should have been designated according to the business distribution scheme of the Enlarged Board of Appeal. This is hereby corrected." in Peter Messerli, Case number: G 3/08, Order (same link as above), EPO, Enlarged Board of Appeal, Munich, ??(30??).02.2009 (page 28 of pdf document). Consulted on May 1, 2009.
  2. 1 2 Referral from the President of the EPO, October 22, 2008, cover letter.
  3. ↑ G 3/08, Headnote 7.
  4. 1 2 3 4 Paul Meller, EU software patent issue goes to appeals body, New York Times, October 24, 2008
  5. ↑ See for instance Joseph Straus, Re: Case No. G3/08, Referral of the President of the European Patent Office under Article 112 (1) (b) EPC of October 22, 2008, Statement According to Article 11 b Rules of Procedure of the Enlarged Board of Appeal, Munich, April 27, 2009, and in particular, point 8.1: "Only under very strict conditions, namely, when there is a contradictory case law by “two boards” and not a progressive development of the law by a “one board,” as it seem to be at hand in the present referral may the President refer questions to the Enlarged Board of Appeal."
  6. ↑ Article 107 EPC
  7. ↑ Article 112(1) EPC
  8. ↑ Patents Directive killed by European Parliament, OUT-LAW News, 06/07/2005
  9. 1 2 Referral, pages 4-6.
  10. 1 2 Referral, pages 7-8.
  11. 1 2 Referral, pages 9-10.
  12. 1 2 Referral, pages 11-13.
  13. ↑ Under Article 10(2) of its Rules of Procedure (Rules of Procedure of the Enlarged Board of Appeal (RPEBA) (OJ 5/2007, 303)).
  14. ↑ Case number: G 3/08, Decision of the Enlarged Board of Appeal of 11 November 2008, European Patent Office, Enlarged Board of Appeal, November 11, 2008 (page 24 of pdf document). Consulted on November 23, 2008.
  15. ↑ That is, any written statements in accordance with Article 10 of the Rules of Procedure of the Enlarged Board of Appeal (EBA) (OJ EPO 2007, 303 ff). See also Rules of Procedure of the EBA.
  16. ↑ EPO, Communication from the Enlarged Board of Appeal concerning case G 3/08, OJ EPO 1/2009, page 32.
  17. ↑ EPO web site, Your say on the patentability of computer programs Archived 2009-03-01 at the Wayback Machine , News, February 19, 2009. Consulted on February 22, 2009.
  18. ↑ G 3/08, Summary of the proceedings, II. 1.
  19. ↑ Paul Meller, European software patent referral receives welcome, New York Times, October 27, 2008
  20. ↑ UK Intellectual Property Office web site, Patentability of computer programs, recent Court of Appeal judgment and questions raised by the President of the European Patent Office, Press notice, reviewed 7 November 2008. Consulted on May 6, 2009.
  21. ↑ The UK-IPO's latest thoughts on software patents, IPKat blog, November 7, 2008. Consulted on November 8, 2008.
  22. ↑ Case Number: G 0003/08, Interlocutory Decision of the Enlarged Board of Appeal of 16 October 2009
  23. ↑ G 3/08, Summary of the proceedings, II. 4.
  24. ↑ G 3/08, Reasons 2.
  25. ↑ G 3/08, Reasons 4.
  26. ↑ G 3/08, Reasons 7.2.7
  27. ↑ G 3/08, Reasons 7.2.5
  28. ↑ G 3/08, Reasons 7.2.2
  29. ↑ G 3/08, Reasons 7.3.5
  30. ↑ G 3/08, Reasons 7.3
  31. ↑ G 3/08, Reasons 8.
  32. ↑ G 3/08, Reasons 7.3.8
  33. ↑ "Justine Pila"., Software Patents, Separation of Powers, and Failed Syllogisms: A Cornucopia from the Enlarged Board of Appeal of the European Patent Office (May 1, 2010). Oxford Legal Studies Research Paper No. 48/2010. Available at SSRN: http://ssrn.com/abstract=1612518

Further reading

Related Research Articles

The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields are regarded as valid by national courts.

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office (EPO), which were both issued on April 8, 2004.

T 931/95, commonly known as Pension Benefit Systems Partnership, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on September 8, 2000. At the time, it was a landmark decision for interpreting Article 52(1) and (2) of the European Patent Convention (EPC) but has now largely been superseded by the decisions in T 641/00 and T 258/03.

<i>Aerotel Ltd v Telco Holdings Ltd</i>

Aerotel v Telco and Macrossan's Application is a judgment by the Court of Appeal of England and Wales. The judgment was passed down on 27 October 2006 and relates to two different appeals from decisions of the High Court. The first case involved GB 2171877 granted to Aerotel Ltd and their infringement action against Telco Holdings Ltd and others. The second case concerned GB application 2388937 filed by Neal Macrossan but refused by the UK Patent Office.

T 1173/97, also known as Computer program product/IBM or simply Computer program product, is a decision of a Technical Board of Appeal of the European Patent Office (EPO), issued on July 1, 1998. It is a landmark decision for interpreting Article 52(2) and (3) of the European Patent Convention (EPC) and whether computer programs are excluded from patentability under the EPC.

Article 123 of the European Patent Convention (EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Under the European Patent Convention (EPC), a petition for review is a request to the Enlarged Board of Appeal of the European Patent Office (EPO) to review a decision of a board of appeal. The procedure was introduced in Article 112a EPC when the EPC was revised in 2000, to form the so-called "EPC 2000". A petition for review can essentially only be based on a fundamental procedural defect. Its purpose is not to obtain a reconsideration of the application of substantive law, such as points relating to patentability. The petition is a restricted form of judicial review, limited to examining serious errors of procedure which might have been committed by the Legal or Technical Boards of Appeal, prejudicing the right to a fair hearing of one or more appellants. Before the entry into force of the EPC 2000 in December 2007, it was not possible for a party who did not have his requests granted in an appeal to challenge the final decision of the Legal or Technical Board of Appeal on any grounds.

In case G 1/15, the Enlarged Board of Appeal of the European Patent Office (EPO) affirmed the concept of partial priority. That is, a patent claim in a European patent application or European patent may partially benefit from the priority of an earlier application.

G 1/19 is a decision issued by the Enlarged Board of Appeal of the European Patent Office (EPO) on 10 March 2021, which deals with the patentability of computer-implemented simulations.

G 1/21 is a decision issued on 16 July 2021 by the Enlarged Board of Appeal of the European Patent Office (EPO) regarding the legality of holding oral proceedings at the EPO by videoconference without the consent of the parties. Namely, the Enlarged Board of Appeal held that "[d]uring a general emergency impairing the parties' possibilities to attend in-person oral proceedings at the EPO premises, the conduct of oral proceedings before the boards of appeal in the form of a videoconference is compatible with the EPC even if not all of the parties to the proceedings have given their consent to the conduct of oral proceedings in the form of a videoconference." The reasoning in the written decision further indicates that, if a party so requests, oral proceedings must be held in person at the EPO premises, except in absolutely exceptional cases.

G 1/10 is a decision issued on 23 July 2012 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that Rule 140 EPC cannot be used to request corrections of the text of a European patent.

G 2/10 is a decision issued on 30 August 2011 by the Enlarged Board of Appeal of the European Patent Office (EPO) on the subject of disclosed disclaimers. It lies from decision T 1068/07 by Technical Board of Appeal 3.3.08, who referred a question to the Enlarged Board.

G 1/11 is a decision issued on 19 March 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that a Technical Board of Appeal rather than the Legal Board of Appeal is competent for an appeal against a decision of an Examining Division refusing a request for refund of a search fee under Rule 64(2) EPC, which has not been taken together with a decision granting a European patent or refusing a European patent application. In other words, the decision deals with the delimitation of competence between the EPO's Legal Board of Appeal and its Technical Boards of Appeal.

G 1/12 is a decision issued on 30 April 2014 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that an appellant's identity in a notice of appeal can be corrected under Rule 101(2) EPC, provided the requirements of Rule 101(1) EPC are met. The Enlarged Board of Appeal also held that an appellant's identity can be corrected under Rule 139 EPC, first sentence, under the conditions established by the case law of the Boards of Appeal.

G 1/09 is a decision issued on 27 September 2010 by the Enlarged Board of Appeal of the European Patent Office (EPO), holding that, following refusal of a European patent application, the application remains pending until the expiry of the time limit for filing a notice of appeal, so that a divisional application under Article 76 EPC may be filed before the EPO even after the refusal of an application. More specifically, the divisional application may be filed until expiry of the time limit of two months for filing a notice of appeal under Article 108 EPC.

G 2/93 is a decision issued on 21 December 1994 by the Enlarged Board of Appeal of the European Patent Office (EPO). The decision deals with deposits of biological material. More specifically, the decision deals with the time limit for the deposit of such material. The current provision in Rule 32(2)(a) EPC provides for a time limit of sixteen months from the date of filing or from the date of priority, whichever expires earlier.

This page is based on this Wikipedia article
Text is available under the CC BY-SA 4.0 license; additional terms may apply.
Images, videos and audio are available under their respective licenses.