Referral G03/08 found inadmissible – software inventions may still be patented

May 19, 2010

For many years, applicants, practitioners and third parties affected by the status of software patents have requested and hoped for guidance from the Enlarged Board of Appeal on the issue of patentability of software. Some were hoping for a restricted practice, some for a more liberal approach. In the end, status quo prevailed. In a 55 page decision, issued on May 12, the EBA found the referral from the President of the EPO to be inadmissible.

The main reason for finding the questions inadmissible was lack of divergence in the cited decisions. In three of the four questions, the EBA came to the conclusion that the alleged divergence identified by the President was based on misunderstandings of the cited decisions, leading to incorrect assertions. Between the lines, the EBA indicate that they believe that this referral to the EBA could have been prepared with more care.

Only in one of the questions, the EBA admitted that there existed a difference in the reasoning between two TBA decisions. The question was related to the influence of claim wording on the exclusion from patentability, and more specifically asked whether the exclusion of computer software as such in Article 52(2) EPC is applicable only when a computer program was claimed as a computer program, and not, for example, as a record on a carrier.

The EBA recognized that the cited decisions (T1173/97 and T424/03) followed different approaches on this point. However, the EBA considered this to be a deliberate development of jurisprudence, and thus not cause for guidance from the EBA. As motivation for this conclusion the EBA made reference to numerous decisions citing T424/03 or cases following the same approach, and noted that no decision cited T1173/97 on this issue.

Although formally finding the question inadmissible, the EBA with their reasoning clearly accepts and confirms the approach presented in Comvik (T641/00) and Hitachi (T258/03), and developed and elaborated in Duns (T154/04). According to this approach, any technical means in a claim will be sufficient to avoid the exclusions in Article 52(2) EPC. At the same time, any individual feature may be disregarded when assessing inventive step with reference to Article 52(2) EPC. In practice, therefore, very few applications are refused as relating to software as such, but instead many software related applications are refused for lack of inventive step.

The EBA also noted that even if would be desirable to improve legal uniformity in Europe, as suggested by Lord Justice Jacob, judiciary-driven development of law is only possible to a certain limit. Beyond that limit, the legislator must take over. This has to be seen as a clear message from the EBA to the contracting states, that if there is any discontent with the current approach of the EPO regarding patentability of software, then the EPC should be amended.

Fabian Edlund
European Patent Attorney