Hoffmann Eitle - München, London

23.10.2008 -

Software patents at the European Patent Office (EPO): referral from the President of the EPO to the Enlarged Board of Appeal

The President of the EPO, Mrs. Alison Brimelow, has referred a number of questions to the Enlarged Board of Appeal regarding the patentability of programs for computers under the European Patent Convention (EPC).

In view of recent diverging decisions by the EPO's Boards of Appeal, by answering the following questions, the Enlarged Board of Appeal shall ensure uniform application of the EPC and enable the further harmonious development of case law in this field.

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

2. 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?

3. (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?

4. (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?

The referral is pending before the Enlarged Board of Appeal under the case number G3/08. Further information can be found at:

http://www.epo.org/topics/news/2008/20081024.html (EPO announcement)
http://www.epo.org/patents/appeals/pending.html (pending referrals)
G308_en.pdf (full text of referral G3/08)

In case of any questions relating to this matter, Hoffmann · Eitle would be pleased to assist (pm@HoffmannEitle.com).