The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has handed down its long-awaited Opinion on the Referral G03/08 on May 12, 2010. The Referral G03/08 was made by the President of the EPO on October 22, 2008, relating to the patentability of computer implemented inventions, i.e. software inventions, under the European Patent Convention (EPC).

In the Referral, the President of the EPO raised four questions to the EBA to look at different aspects of patentability in the field of computer implemented inventions. Firstly, the relevance of the category of a claim is questioned. In other words, how the formulations of the claims play in determining the patentability of the claim is questioned. The next three questions concern themselves with where the line should be drawn between those aspects excluded from patentability and those contributing to the technical character of claimed subject matter. The questions arise from what was perceived to be a conflicting or divergent body of case law being developed by Technical Boards of Appeals.

Having analyzed the case law in detail, the EBA reached the conclusion that there was not a divergence between the decisions which were discussed in the Referral, and that the four questions in the Referral were therefore inadmissible.

Specifically, under Article 52.2 of the EPC, the computer programs are excluded explicitly from patentability. However, no any provisions of the EPC refers to the patentability of the claims to various matters which involve a computer program without necessarily literally being one, such as computer readable medium. The Referral took for example the divergent views expressed in T 1173/97 IBM (1999) and in T 424/03 Microsoft (2006) concerning whether a claim to a computer readable medium necessarily avoids exclusion from patentability under Article 52.2 of the EPC, to seek an answer on the patentability of the claims of various subject matters involving a computer program.

The Opinion of the EBA accepted that T 424/03 does deviate from a view expressed in T 1173/97 since the former is of the point that a claim directed to a computer readable medium cannot be excluded from patentability under Article 52.2 of the EPC while the latter holds a totally different view. However, the EBA treated this as a legitimate development of the case law and there is no divergence which would make the Referral of this point admissible. Further, the Opinion points out that no any decision whatsoever of one of the Boards of Appeal of the EPO follows T 1173/97 on this point while the conclusion arrived at in T 424/03 has not been challenged in any later decisions.

The EBA was of the point that a claim in the area of computer programs can avoid exclusion under Article 52.2 of the EPC merely by explicitly mentioning the use of a computer or a computer readable medium, i.e. having technical character. However, the EBA went on to point out that only those aspects involving technical character in a claim are taken into consideration when assessing whether the invention is novel and inventive. For example, if a claim to “a computer program X” falls under the exclusion of Article 52.2 of the EPC, a claim to “a computer readable medium storing program X thereon” or “a method of operating a computer according to program X”, which cannot be excluded from patentability under Article 52.2 of the EPC though, will always still fail to be patentable for lack of novelty or inventiveness.

Further, the EBA acknowledges that an assessment of patentability can be made based on a consideration of whether the computer implemented invention has “further technical effect” which extends beyond basic technical effects associated with the fact that the invention is implemented on a computer, such as electrical currents in the computer hardware due to implementing the computer program. Furthermore, “further technical effect” is not necessarily on a physical entity in the real word and associated with any particular hardware running a computer program thereon.

In summary, the Opinion of the EBA completely reaffirms the patentability of the computer implemented invention and confirms that the existing practice in the EPO in relation to the patentability of computer implemented inventions will continue.