On 12 May 2010 the EPO's Enlarged Board of Appeal confirmed the EPO's current practice in relation to patent application relating to computer implemented inventions (CIIs).
Current CII Practice at the EPO
The EPO has for a number of years routinely granted patents for computer implemented inventions (CIIs) that have a technical character. In particular, the EPO considers whether, in the case of a computer program, the program causes a "further technical effect" that goes beyond the 'normal' physical interactions between a computer program (software) and the computer (hardware) on which it is run. The EPO has also granted patents that include claims to computer programs per se.
Referral to the Enlarged Board
In October 2008 the then President of the EPO, Alison Brimelow, referred four questions concerning the patentability of CIIs to the Enlarged Board of Appeal (EBA). The European Patent Convention allows the EPO president to refer points of law to the EBA where two Boards of Appeal have given different decisions on that point.
In determining whether the referral was admissible, the EBA found it necessary to consider the meaning of "different decisions". The EBA determined that in order for such a referral to be admissible the decisions had to be "conflicting decisions".
The EBA then proceeded to review the EPO's case law relating to CIIs to determine if any Board of Appeal decisions conflicted. The only inconsistencies found by the EBA in the earlier case law of the EPO relating CIIs centred upon the patentability of claims to programs stored on a computer readable medium.
An EPO Board of Appeal determined in IBM (T1173/97) that a claim to a computer program per se was patentable if when running on a computer or loaded into a computer, it brings about, or is capable of bringing about, a technical effect that goes beyond the 'normal' physical interactions between the program and the computer. Furthermore, the Board decided that it made no difference whether the program is claimed by itself or stored on a carrier. However, another EPO Board of Appeal later decided in Microsoft (T424/03) that a claim to a program stored on a medium has a technical character since it relates to a computer readable medium.
The EBA decided that the difference of opinion in these cases is a legitimate development of the case law. Thus the decisions do not conflict; a prerequisite for an admissible referral.
Going Forward
It is believed that this decision is good news for Applicants of patents relating to CIIs. The EPO's current practice with regard to these applications should not change. Furthermore, it is hoped that certain comments in the EPO's decision may assist in swaying the practice of the UK IPO to be more favourable to applications for CIIs.
Contributor: Dr. Chris Benson
Chris practices before the UK IPO and EPO in matters involving the
protection of inventions implemented in software. For further
advice, please contact Chris at cbenson@hgf.com
or call +44 (0) 114 2743708.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
