The appeal ruling on what is technically referral G 3/08, but which is more familiarly referred to as the software patents referral, has finally been published. The conclusion seems to be that the referral should never have been made in the first place, and there will be those who will find it hard to believe that they have awaited the ruling since October 2008. Roughly 20 of the 56 pages of judgment are concerned with that point (and arguably all 56), but the point is put very nicely. The Board does however take the opportunity to set out and confirm the approach of the EPO regarding the patentability of computer programs under the European Patent Convention (EPC) and offer useful analysis of each of the questions that were referred. The net result is, at the EPO at least, it is business as usual.
The opinion relates to four questions referred to the Enlarged Board in October 2008 by the President of the EPO concerning points of law of fundamental importance for the Office’s patenting practice in this field.
The Enlarged Board analysed in detail the development of relevant case law, and found that there was a divergence between two decisions of Technical Boards of Appeal. However, recognising that the “case law in new legal and/or technical fields does not always develop in linear fashion, and that earlier approaches may be abandoned or modified”, the Enlarged Board found that this constituted a legitimate development rather than a conflict of case law.
In the absence of conflicting Board of Appeal decisions, the Enlarged Board concluded that the legal requirements for a referral were not met. Nevertheless, the Board affirmed the right of the President of the EPO to “make full use of the discretion granted by Article 112(1)(b) EPC” in making a referral, and provided further guidance on how these requirements for such a referral should be interpreted.
The judgment can be read here http://documents.epo.org/projects/babylon/eponet.nsf/0/DC6171F182D8B65AC125772100426656/$File/G3_08_Opinion_12_05_2010_en.pdf
Commenting on the judgment, James Boon of Bristows stated: “The Enlarged Board has emphatically confirmed the present, more inclusive, approach of the EPO to the patentability of software. This is likely to have a significant impact in jurisdictions such as the UK where the approach of the Intellectual Property Office and the Courts is at least formally at odds with the EPO.” Myles Jelf, also at Bristows, commented “The opinion may be regarded with dismay by some (it acknowledges itself that the current EPO approach to patenting computer programs is in some way distasteful to many people) but as the settled view of the EPO, will be hard for the UK courts to ignore“.
Mark Kenrick, Partner at Marks & Clerk LLP, said: “Today’s decision by the Enlarged Board of Appeal is a very significant move, particularly for software makers who have struggled with the historic divergence and stricter treatment typically given to software in the UK. By confirming the EPO’s existing approach, the Enlarged Board of Appeal has given industry far greater certainty as to the state of the law at the EPO , which will hopefully bring considerably more clarity and consistency to the patentability of computer implemented inventions across Europe and its various national patent offices . It has taken the EPO some time to reach its current practice, and it is to be welcomed that this practice has now been confirmed.”
