The scope of protection for computer programs in Europe has been the subject of much confusing and inconsistent case law before the EPO technical boards over the past 25 years.
The whole question of patentability of computer programs under article 52 EPC is now likely to receive clarification as a result of a referral to the Enlarged Board of Appeal of the EPO.
Details of the referral are as follows:
Communication from the Enlarged Board of Appeal concerning case G 3/08
In accordance with Article 112(1)(b) EPC, the President of the European Patent Office has referred the following points of law concerning the limits of patentability of programs for computers within the meaning of Article 52(2)(c) and (3) EPC to the Enlarged Board of Appeal.
The case is pending under ref. No. G 3/08.
The questions referred are:
1. Can a computer program only be excluded as a computer program as such if it is explicity 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 explicity 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 text of the referral in the English language is available on the Website of the
European Patent Office under
The Enlarged Board of Appeal considering
the referral will be composed as follows:
P. Messerli (CH) (Chairman), M. Vogel (DE),
D. Rees (GB), M. Dorn (DK), K. Härmand (EE),
A. Klein (FR), J.-P. Seitz (FR).
It is expected that third parties will wish to use the opportunity to file written statements in accordance with Article 10 of the Rules of Procedure of the Enlarged Board of appeal (OJ EPO 2007, 303 ff). To ensure that any such statements can be given due consideration they should be filed together with any new cited documents by the end of April 2009 at the Registry of the Enlarged Board of Appeal, quoting case number G 3/08.
An additional filing of the statement and documents in electronic form would be appreciated
Article Published January 30, 2009