G 1/11: a new referral, but don't get excited

Miggy struggled to contain her excitement
as she considered the awesome prospect
of G 1/11 ...

While the recent decision G 2/10 from the European Patent Office's Enlarged Board of Appeal is complex and technical, at least it has the merit of addressing a practical question which confronts applicants and their representatives from time to time. (In case you missed yesterday's post, the Enlarged Board answered the question of whether you can disclaim an embodiment of your patent application without adding subject-matter, with an authoritative "sometimes").

The latest referral to the Enlarged Board of Appeal - G 1/11 - poses a question which is going to register many notches lower on the interest scale for everyone, other than a small number of EPO officials.  Contain your excitement as you savour the issue at stake, summarised in the IPKat's unofficial translation:

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"Should an appeal against a decision of an Examining Division, refusing the refund of search fees under R.64 (2) EPC, which is not related to a decision to grant a European patent or to refuse a European patent application, be handled by a Technical Board of Appeal or the Legal Board of Appeal?"

While the referring decision J 21/09 is currently available in German only, the file history shows that the appeal was assigned initially to a Technical Board of Appeal and then bounced to the Legal Board, which presumably doubted its own jurisdiction sufficiently to make the referral.

The outcome of this referral will have a practical effect on where future appeals end up but, since this is a matter which is out of the hands of applicants anyway, the eventual decision will likely be of academic interest (if even that) to everyone who is not a Registrar of an EPO Appeal Board.

(Thanks to the anonymous commenter on yesterday's post who mentioned this referral).

Broccoli (G 2/07) and Tomatoes (G 1/08): the decision is in

The IPKat reported in a post dated 11 June 2007 of a referral having been made to the EPO Enlarged Board of Appeal (G 2/07) on the subject of whether a process involving crossing and selection of broccoli could be patentable. Another referral was then made relating to a similar type of invention relating to crossing and selection of tomatoes (G 1/08). Now, after a mere three and a half years the Enlarged Board, having combined the two referrals, have issued decisions relating to both.

The questions raised in respect of the broccoli referral were:

1. Does a non-microbiological process for the production of plants which contains the steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, an additional feature of a technical nature?

2. If question 1 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?

The questions raised in respect of the tomatoes referral were:

1. Does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants fall under the exclusion of Article 53(b) EPC only if these steps reflect and correspond to phenomena which could occur in nature without human intervention?

2. If question 1 is answered in the negative, does a non-microbiological process for the production of plants consisting of steps of crossing and selecting plants escape the exclusion of Article 53(b) EPC merely because it contains, as part of any of the steps of crossing and selection, an additional feature of a technical nature?

3. If question 2 is answered in the negative, what are the relevant criteria for distinguishing non-microbiological plant production processes excluded from patent protection under Article 53(b) EPC from non-excluded ones? In particular, is it relevant where the essence of the claimed invention lies and/or whether the additional feature of a technical nature contributes something to the claimed invention beyond a trivial level?

The Enlarged Board has, in both decisions G 2/07 and G 1/08, answered the questions as follows:

1. A non-microbiological process for the production of plants which contains or consists of the steps of sexually crossing the whole genomes of plants and of subsequently selecting plants is in principle excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC.

2. Such a process does not escape the exclusion of Article 53(b) EPC merely because it contains, as a further step or as part of any of the steps of crossing and selection, a step of a technical nature which serves to enable or assist the performance of the steps of sexually crossing the whole genomes of plants or of subsequently selecting plants.

3. If, however, such a process contains within the steps of sexually crossing and selecting an additional step of a technical nature, which step by itself introduces a trait into the genome or modifies a trait in the genome of the plant produced, so that the introduction or modification of that trait is not the result of the mixing of the genes of the plants chosen for sexual crossing, then the process is not excluded from patentability under Article 53(b) EPC.

4. In the context of examining whether such a process is excluded from patentability as being "essentially biological" within the meaning of Article 53(b) EPC, it is not relevant whether a step of a technical nature is a new or known measure, whether it is trivial or a fundamental alteration of a known process, whether it does or could occur in nature or whether the essence of the invention lies in it.

There is, of course, much reasoning behind the answers, some of which has already been analysed by the prolific Oliver G. Randl in some detail here. I am tempted, as many others might be, to make comparisons with case law on the 'non-inventions' of Article 52(2) and (3) EPC, particularly by the liberal use of the meaning-free word 'technical' in these decisions. However, other than an apparent surface similarity, the comparison does not seem to bear close scrutiny and is probably not much help, if not misleading. In answering the questions, the Enlarged Board seem to me to be indicating that they are not establishing the same kind of 'technical effect' reasoning that is now well-established in the case law relating to Article 52(2). Instead, the use of the word technical in this case appears to be more about whether there is enough of a deliberate intervention in the crossing and selection process for there to be a new result. I wonder whether a known type of technical intervention would do just as well as a new one, provided the result of the process was new and inventive.

As for the significance of the decisions otherwise I will refrain from commenting further, mainly because cats don't like vegetables.

More on the decisions from the EPO here.

G 3/08 (Software Patents) decision is out - Tufty the Cat vindicated

Back in October 2008, the IPKat reported on a referral that had been made by the EPO President Alison Brimelow to the Enlarged Board of Appeal on the subject of patents for computer-implemented inventions (or software patents for short). The issue has been commented on extensively, both here and elsewhere, and many observations (or 'amicus briefs', if you prefer) were filed in response to the referral.

At least two of the IPKat's amanuenses, including myself, as well as some more eminent people including Lord Hoffmann (see here and here) came to the conclusion that the referral was inadmissible, for the simple reason that there was in fact no divergence in the current EPO case law.

The Enlarged Board has now issued their decision, as announced on the EPO website here, with the full decision available here.  Unsurprisingly (to me, at least), they have found the questions to be wholly inadmissible.  The decision in full runs to 61 pages, but the key points are in the headnotes, which state (with some of my comments and emphasis added):

"1. In exercising his or her right of referral a President of the EPO is entitled to make full use of the discretion granted by Article 112(1)(b) EPC, even if his or her appreciation of the need for a referral has changed after a relatively short time [This refers to the refusal by the previous EPO President, Alain Pompidou, to consider the questions raised by the UK Court of Appeal in Aerotel/Macrossan.  For more on this, see the IPKat's post here].

2. Different decisions by a single Technical Board of Appeal in differing compositions may be the basis of an admissible referral by the President of the EPO of a point of law to the Enlarged Board of Appeal pursuant to Article 112(1)(b) EPC.

3. As the wording of Article 112(1)(b) EPC is not clear with respect to the meaning of “different/abweichende/divergent” decisions the provision has to be interpreted in the light of its object and purpose according to Article 31 of the Vienna Convention on the Law of Treaties (VCLT). The purpose of the referral right under 112(1)(b) EPC is to establish uniformity of law within the European patent system. Having regard to this purpose of the presidential right to refer legal questions to the Enlarged Board of Appeal the notion “different decisions” has to be understood restrictively in the sense of “conflicting decisions”.

4. The notion of legal development is an additional factor which must be carefully considered when interpreting the notion of “different decision” in Article 112(1)(b) EPC. Development of the law is an essential aspect of its application, whatever method of interpretation is applied, and is therefore inherent in all judicial activity. Consequently, legal development as such cannot on its own form the basis for a referral, only because case law in new legal and/or technical fields does not always develop in linear fashion, and earlier approaches may be abandoned or modified [Tufty says: This is the key point.  As the Technical Board has stated, in for example T 1227/05, they need to be able to take into account technical developments to develop their case law on patentability.  This does not mean that later decisions become "conflicting" just because they depart from older case law, a point that the President did not seem to realise at the time of the referral].

5. Legal rulings are characterised not by their verdicts, but by their grounds. The Enlarged Board of Appeal may thus take obiter dicta into account in examining whether two decisions satisfy the requirements of Article 112(1)(b) EPC.

6. T 424/03, Microsoft does deviate from a view expressed in T 1173/97, IBM, concerning whether a claim to a program on a computer-readable medium necessarily avoids exclusion from patentability under Article 52(2) EPC. However this is a legitimate development of the case law and there is no divergence which would make the referral of this point to the Enlarged Board of Appeal by the President admissible.

7. The Enlarged Board of Appeal cannot identify any other inconsistencies between the grounds of the decisions which the referral by the President alleges are divergent. The referral is therefore inadmissible under Article 112(1)(b) EPC."

After reading the headnotes, it seems that there is no need to go any further.  There is, of course, some extensive discussion about why the questions raised are inadmissible.  The EBA have arrived at the same conclusions, although via slightly different routes and at much greater length, to me.  A further key point, however, is made at 7.2.7, where the EBA states:

"Given its object and purpose, the right of referral does not extend to allowing the President, for whatever reason, to use an Enlarged Board referral as a means of replacing Board of Appeal rulings on CII patentability with the decision of a putatively higher instance. For example, a presidential referral is not admissible merely because the European Parliament and Council have failed to adopt a directive on CII patenting or because consistent Board rulings are called into question by a vocal lobby (cf. the present referral, page 2, Section 1, paragraph 3). Even the essentially commendable desire for harmonisation expressed by Lord Justice Jacob in the Aerotel/Macrossan judgment can be taken up by the Enlarged Board only to the extent possible under the EPC, even if his suggestion might significantly advance the cause of legal uniformity in Europe. When judiciary-driven legal development meets its limits, it is time for the legislator to take over."

As many in the 'FOSS'/anti-patent world would undoubtedly say, perhaps it is now time for the legislator to take over. However, I would have very serious doubts about whether it will be possible to come to any sort of agreement among the member states of either the EU or the EPC that would stand any chance of resolving the issue once and for all.

The IPKat is happy that the EBA have settled this particular matter (or have they?), but he and Merpel are both quite confused by the passage about Alice Through the Looking Glass.  What is the name of the song? And what have haddock's eyes got to do with software patents?

If for once the French want to speak English...

... the Enlarged Board of Appeal (EBA) does not allow them to. On 16 February, the EBA announced its decision in the case G 04/08 (language of the proceedings). The facts were as follows: the applicant Merial had filed an international application in French, which was published in French, and for which the EPO was the designated Office. Upon entry into the regional phase before the EPO, the applicant attached an English translation of the application to the request and asked that the language of the proceedings before the EPO be English.

The EBO decided that it is not possible to file a translation of the application into another one of the EPC's official languages upon entry into the regional phase before the EPO if an international application has been published in one of the EPC's official languages.

The EPO could also not - upon request of the applicant and after consultation with other interested parties - change by itself the language of the proceedings to another official language than the one the international application had been published in (art. 14(3) EPC). Rule 3(1), which had allowed this, had been deleted in 1991 and could not be re-introduced through case-law.

Another EBA referral on divisionals

Thanks to Laurent Teyssedre's blog, the IPKat has learned of a new referral being made to the EPO Enlarged Board of Appeal relating to when divisional applications can be filed. The question being asked goes like this:

"Is an application which has been refused by a decision of the Examining Division thereafter still pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal, when no appeal has been filed?"

The decision leading to the question, J 2/08, has not yet been uploaded to the EPO's decision database, but can be found here, courtesy of Laurent. The case relates to European application number 05027368.9.

What happened during prosecution should be fairly clear, given the above question. The IPKat, who thinks that the answer to the question is a clear 'no', merely wonders why the applicant didn't follow the apparently normal (yet, in the EPO's eyes, abusive) procedure of filing a divisional application (without, of course, paying the fees) on the day before oral proceedings were scheduled, just on the off chance that their application was refused. Failing that, they could have filed an appeal just for the purpose of keeping the application pending. Couldn't they?

G 3/08 Observations - Your Last Chance

If you want to have your say about whether patents for computer-implemented inventions are a good thing or not, it's time to get your skates on.  The final date for filing observations (or amicus curiae briefs, if you prefer) on the EPO President's referral to the Enlarged Board of Appeal is 30 April 2009.  See the IPKat's previous notes on the subject here, here, here and here for more details, and the EPO website here for the official lowdown.

As of the date and time of this post, the following observations have been filed:

Bakels, R. (PDF, 1.9 MB)

Balos, I. (PDF, 360 KB)

Bayer, C. (PDF, 270 KB)

BIKT et al (PDF, 4 MB)

Combeau, J. (PDF, 630 KB)

Cowsley, C. (PDF, 230 KB)

De Keyzer (PDF, 84 KB)

Duhme,Torsten, Dr. (PDF, 1 MB)   

epi (PDF, 280 KB)

Gustavson, Stefan (PDF, 220 KB) 

Hallén, Jacob (PDF, 225 KB)

HISPALINUX (PDF, 460 KB)

IBM (PDF, 970 KB)

intellect (PDF, 585 KB)

Lawrence, William (PDF, 915 KB)

Philips (PDF, 390 KB)

Piratenpartei (PDF, 400 KB)

Piratpartiet (PDF, 160 KB)

ScriptumLibre (PDF, 410 KB)

Sterckx, Sigrid, Prof. Dr. (PDF, 2.7 MB)

Straus, Joseph, Prof. Dr. (PDF, 1.2 MB)

Sylvestris, T. (PDF, 525 KB)

Thum, Simon (PDF, 170 KB)

Wessel, A. (PDF, 81 KB)

Of these, some are very interesting, some are fairly pedestrian, some are horribly wordy and full of legal 'analysis', footnotes and references, some are fairly predictable ill-informed anti-patent rants, while others are merely irrelevant.  The IPKat (who still can't see what on Earth TRIPs has to do with the EPO) will let his readers decide which are which.

One brief in particular, submitted by the IPKat's maverick sidekick Tufty Sylvestris (a.k.a. Tufty the Cat), argues that the referral is inadmissible because it does not comply with Article 112(1)(b) EPC.  This view, although in a small minority, appears to be shared by at least one other observer.  The IPKat prefers to remain on the fence, largely due to being completely bamboozled by all that legalspeak.  He hopes, however, that the Enlarged Board, whichever way they decide to go, will come up with some reasoning that we can all understand, instead of trying to impress us with their footnoting skills.  

More legalspeak here. Doublespeak here.

G 3/08: Have your say

This month's Official Journal of the EPO contains an announcement relating to the EPO President's referral under Article 112(1)(b) EPC on software patents. As well as reproducing the questions first announced back in October 2008 (commented on by the IPKat here, here and here) and the composition of the board, the announcement says the following:

"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 (Dg3registry_eba@epo.org)."

It's not clear to the IPKat whether comments received only by email will be accepted, but he thinks it's probably worth a shot.  The IPKat expects that this one will probably involve quite a lot of statements, and he hopes that DG3 is prepared for the deluge.  

Update (29 Jan): Given the comments below, to be sure to have your comments included, make sure you first send them to the following address:

Registry of the Enlarged Board (G 3/08)
80298 Munich
Germany

English: the language of choice at the EPO?

The IPKat frequently comments on the babylonian nature of the European IP system, in particular the curious fact that many important ECJ judgments and opinions are not made available in English even though that would allow them to be easily read by, the IPKat strongly suspects, 100% of European IP professionals, to whom they are primarily aimed. The situation at the European Patent Office is a little less crazy, since there are only 3 official languages: English, German and French. This sometimes makes life slightly difficult for European patent attorneys but, since EPAs are expected to be fluent in at least one language and have a working knowledge of the others, there should be little to complain about.

The IPKat was therefore very interested, and a bit surprised, to see that a UK firm of patent attorneys have recently been instrumental in having a referral made to the Enlarged Board of Appeal in their attempt to get English, rather than French, accepted as their language of choice in proceedings before the EPO.

As well as accepting applications directly, the EPO acts as a 'designated office' under the international Patent Cooperation Treaty (PCT) system. PCT applications, although managed centrally by the clearing house of the International Bureau of WIPO in Switzerland, can be filed in many different languages and in many different places, because a PCT application can, as well as being filed at the IB itself, be filed at a national patent office acting as a 'receiving office', which then passes on the application to WIPO for processing. This system, a largely cobbled-together affair resulting from many and various compromises among the PCT member states (of which there are now 139), has a few resulting oddities. One of these is that the language in which the application is filed at a receiving office becomes the language in which the application is eventually published, provided this is one of the PCT languages of publication (Rule 48.3 PCT), which include the 3 official languages of the EPO. The usual result is that, once a request for a PCT application published in English, French or German is made to enter the European phase, the language of the proceedings at the EPO will be that language. Two parts of the EPC (using the current EPC2000, rather than EPC1973) make this reasonably clear. Firstly, Article 153(3) EPC states:

"The international publication of a Euro-PCT application in an official language of the European Patent Office shall take the place of the publication of the European patent application and shall be mentioned in the European Patent Bulletin."

Secondly, Article 14(3) EPC states:

"The official language of the European Patent Office in which the European patent application is filed or into which it is translated shall be used as the language of the proceedings in all proceedings before the European Patent Office."

It is generally presumed that the language of the proceedings at the EPO for a PCT application published in English, French or German must therefore be the language of the PCT application. However, a possible chink in the armour is that little phrase highlighted above. Does this leave open the possibility for a PCT application filed and published in, for example, French to be prosecuted in English at the EPO if a translation is filed when the request for entry into the European regional phase is made? This is apparently what the attorneys in the case of J 8/07 are claiming, and the situation is apparently not as clear as might have been previously thought. [Please note that the IPKat is taking the liberty of translating the differently worded requirements of EPC1973 into EPC2000, to avoid further confusion.]

The PCT application in question was filed in French at the French patent office (INPI). INPI, acting as receiving office, only accepts applications in French. After being passed to the International Bureau, the application was then published as WO 02/081621. At the end of the international phase, a request was made by a UK-based attorney to enter the European regional phase. The attorney performed all the necessary steps to enter the regional phase, but also supplied an English translation of the patent specification, and made the following request:

"We wish the language of the proceedings to be in English. In this respect, we enclose an English language translation of the PCT patent application. This English language translation was prepared for parallel proceedings in Australia. [...] We submit that the language of the proceedings can be English since the EPC does not preclude this event on entry into the European regional phase. [...] [I]n accordance with J 18/90, we hereby request that in all written proceedings and decisions, the EPO uses English."

The examining division were having none of this, and continued writing to the representative in French, which the representative replied to in, of course, English. Finally, the examining division issued a decision, stating:

"1. Il n'est pas fait droit à la requête visant à substituter la langue de procédure française par l'anglaise.

2. Il n'est pas fait droit à la requête visant à ce que l'OEB utilise l'anglaise dans toutes les procedure écrites et décisions."

In brief, the examining division didn't think the applicant had the right to change the language of proceedings from one EPO official language to another. The representative then appealed this decision to the legal board of appeal, which issued their decision on 8 December 2008, a mere 2 years after that of the examining division, during which time EPC2000 entered into force. After considering the matter at length (and, of course, in French), the board decided that the question was a sufficiently important one for them to refer the following questions to the Enlarged Board:

"1° Lorsqu'une demande internationale de brevet a été déposée et publiée en vertu du Traité de coopération en matière de brevets (PCT) dans une langue officielle de l'Office européen des brevets (OEB), le demandeur peut-il, dès l'entrée dans la phase régionale devant l'OEB, déposer une traduction de la demande dans l'une des autres langues officielles de l'OEB avec l'effet que la langue de la traduction soit désormais considérée comme constituant la langue de la procédure qui doit être utilisée dans toutes les procédures devant les instances de l'OEB ?

2° Si la réponse à cette question est négative, les organes de l'OEB peuvent-ils utiliser dans la procédure écrite d'une demande européenne de brevets (ou d'une demande internationale entrée en phase régionale) une des langues officielles de
l'OEB autre que celle de la procédure utilisée pour la demande ?

3° Si la réponse à la deuxième question est positive, quels sont les critères à appliquer pour déterminer la langue officielle qui sera utilisée ?
En particulier, les organes de l'OEB doivent-ils faire droit à une telle requête émanant d'une ou des parties ?"

The IPKat has roughly translated the first question to the following:

"1 º When an international patent application is filed and published under the PCT in an official language of the EPO, can the applicant, upon entry into the regional phase before the EPO, file a translation of the application in one of the other official languages of the EPO with the effect that the language of the translation is seen as the language of the procedure that must be used in all the proceedings of the EPO?"

He is a bit stumped in trying to figure out what the second and third questions are asking exactly, but suspects that they are an attempt to figure out whether, if the official language is to be determined by the language of the PCT publication, a different official language can be used in EPO procedure anyway, and what criteria would apply for this.

The IPKat is not sure what the implications of the Enlarged Board's decision will be, if they decide to allow the official language to be changed in the way the representative in this case wants. It seems unlikely that many applications would be affected. He does, however, have some sympathy with the argument, put forward by the representative in this case, that the current state of affairs is discriminatory, since a Japanese applicant, for example, gets a free choice of which official language to use, whereas a US owner of a French subsidiary, having filed a PCT application in French, does not. Is this fair, or is it just one of those quirks of the international patent system we must live with?

The IPKat would welcome any further comments on this subject, particularly from those who may be more fluent readers of French than he is.

The EPO referrals: what's really going on?

Following the IPKat's initial and follow-up posts -- and the readers' comments -- on the referral to the Enlarged Board of Appeal of the European Patent Office of a number of questions relating to the exclusions from patentability of computer programs, this member of the blog team has been speculating on the deeper meaning of the EPO's current activity and what it could possibly signify.

Right: "Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?" Almost everyone has an answer -- but is it the right one?

Some people say that the referral of the questions is a feeble surrender to the demand of Lord Justice Jacob in Aerotel/Macrossan that the EPO resolve the contradictions in its earlier rulings -- contradictions the existence of which the previous President of the EPO denied -- or whether it is a resolute defence of the EPO's resistance to such pressures that have led it to ask its own questions of the Enlarged Board rather than those articulated by Jacob LJ. The nature of the questions has itself given rise to plenty of speculation. Are they there simply to remove perceived inconsistencies in EPO practice, or are they posed in order to provide an excuse to send out answers that will seek to bind practice in national offices too?

Others are speculating on the line-up of the Enlarged Board. Chaired by the Swiss (and therefore stereotypically neutral) Peter Messerli, the Board's other members consist of the legally qualified Messrs Vogel (Germany), Dorn (Denmark), Harmand (Estonia) and Seitz (France) together with the technically qualified Messrs Rees (UK) and Klein (France). What does this balance of personalities, and indeed nationalities, mean within the geopolitical profile of the EPO?
Debate still persists as to what the Enlarged Board will do. Does the fact that it has now been formally constituted mean that it has to give a ruling, or might it yet be able to decide that the provision of answers to the four questions referred to it is something that lies outside the range of its legal function? And as for the questions themselves, is it conceivable that they would have been posed at all, and particularly in the form in which they are asked, without careful and attentive consultations with senior members of the EPO staff? Is their precise content designed to enable the Enlarged Board, in answering them, to give a good account of itself which shows itself in a good light, or is it designed to invoke regret and repentence for past verbal or conceptual infelicities?

One might reasonably feel that there's a lot more happening than meets the eye. If readers have any further perceptions on the referral, the IPKat hopes they will share them here.

More on that referral

The IPKat recently reported the EPO president's referral of a number of questions to the Enlarged Board relating to patentablity of computer-implemented inventions (for want of a better term).  This prompted an unusual (for this blog at least) number of comments from the IPKat's very knowledgeable (though sometimes rather argumentative) readership.  Much of the commentary relates to the, by now very familiar, arguments about whether computer software is a suitable subject for a patent.  

The referral has, of course, been widely reported elsewhere, even in the pages of the New York Times.  It is widely assumed, even by some apparently knowledgeable legal types (see here), as well as most commenters here, that the referral will result in some kind of clarification of the law.  One observant IPKat commenter, however, (as well as other knowledgeable legal types here) has pointed out that there is a good chance the referral will be thrown out by the Enlarged Board instead of being even considered in detail, on the grounds that it doesn't comply with the requirement of Article 112(1)(b).  The last time this happened was in 1995, when the Enlarged Board decided that there was no conflict in the case law on patentability of plant and animal varieties (G 3/95). The provision in question reads:

(1) In order to ensure uniform application of the law, or if a point of law of fundamental importance arises:
[...]
(b) the President of the European Patent Office may refer a point of law to the Enlarged Board of Appeal where two Boards of Appeal have given different decisions on that question.

The last time that questions on the subject of software patents were proposed (by Lord Justice Jacob, after his decision in Aerotel in October 2006), the then President replied that there was "insufficient legal basis for a referral under Article 112(1)(b) EPC. Leaving aside Board of Appeal case law the line of reasoning of which has been abandoned by later case law, I believe there are insufficient differences between current Board of Appeal decisions dealing with Article 52 EPC exclusions on important points of law that would justify a referral at this stage." (reported by the IPKat here).

The IPKat would like to know how the situation has changed since March 2007 to make such a referral admissible now, when it apparently wasn't before.  The case law cited by Ms Brimelow is all from before 2007 (the most recent one being T 424/03, from February 2006, which is alleged to be inconsistent with T 1173/97), so where are all the recent conflicting (or 'diverging') decisions? Do the decisions even diverge, or are they merely developments of the case law?  After reviewing the questions and their support in some detail, this Kat is of the opinion that the referral is not admissible and the questions cannot therefore be answered, at least not via this route.  The big question then becomes how will the Enlarged Board choose to let Ms Brimelow down, and how will the anti-patent lobbyists react when this happens?

As a public service, the IPKat will attempt to provide answers to each of the questions (with translations provided by an anonymous patent attorney):

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

Translation: Were we right to allow so-called 'media' claims?

The referral cites decisions T 424/03 (Microsoft/Clipboard Formats I) and T 1173/97 (Computer Program Product/IBM), which are alleged to be 'diverging' because, while T 424/03 placed emphasis on the way a computer program was claimed, T 1173/97 placed emphasis on the function of the computer program.  This argument is quite clearly wrong.  Not only does T 424/03 expressly approve the previous decision of T 1179/97 (so cannot therefore be said to be in conflict with it), but the emphasis on the way the program was claimed in T 424/03, i.e. in the form of a program on a carrier, was only in respect of overcoming the first 'technical character' hurdle specified by T 258/03 (Auction Method/Hitachi). This is all clear from point 5.3 of the reasons in T 424/03:

"Claim 5 is directed to a computer-readable medium having computer-executable instructions (i.e. a computer program) on it to cause the computer system to perform the claimed method. The subject-matter of claim 5 has technical character since it relates to a computer-readable medium, i.e. a technical product involving a carrier (see decision T 258/03 - Auction method/Hitachi cited above). Moreover, the computer-executable instructions have the potential of achieving the above-mentioned further technical effect of enhancing the internal operation of the computer, which goes beyond the elementary interaction of any hardware and software of data processing (see T 1173/97 - Computer program product/IBM; OJ EPO 1999, 609). The computer program recorded on the medium is therefore not considered to be a computer program as such, and thus also contributes to the technical character of the claimed subject-matter."

There is therefore no divergence in the approach taken in T 424/03 with respect to the way in which computer programs can be validly claimed. T 1173/97 further clarifies this at point 13:

"Finally, as has become clear from the above, the Board notes that it does not agree with the interpretation by the examining division of Article 52(2) and (3) EPC with reference to the Guidelines, C-IV, 2.3 (page 38 of the December 1994 edition) from which they concluded that a computer program claimed by itself or as a
record on a carrier is not patentable.
In the view of the Board, a computer program claimed by itself is not excluded from patentability if the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect which goes beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it is run.
"Running on a computer" means that the system comprising the computer program plus the computer carries out a method (or process) which may be of the kind according to claim 1.
"Loaded into a computer" means that the computer programmed in this way is capable of or adapted to carrying out a method which may be of the kind according to claim 1 and thus constitutes a system (or device or apparatus) which may be of the kind according to claim 14.
Furthermore, the Board is of the opinion that with regard to the exclusions under Article 52(2) and (3) EPC, it does not make any difference whether a computer program is claimed by itself or as a record on a carrier (following decision T 163/85, OJ 1990, 379, "Colour television signal/BBC", as cited above)."

The answer to question 1, which can be determined from either of the cited decisions, is neither yes or no, but that it does not matter what form the computer program is claimed, provided the program has the potential for causing a 'further technical effect'. 

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?
Translation: Were we right to effectively move the assessment of exclusion from patentability from Article 52 to Article 56 (inventive step)?

Yes, but only to the extent that the 'technical character' test is passed by having a physical article in the claim (see Hitachi).  The patentability test is instead assessed under Article 56, with features of the claimed invention that do not contribute to the technical character not considered as part of the solution to the technical problem.  Otherwise, the simple (but incomplete) answer is no.

2.(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?

See answer to 2(a).

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?
Translation: Can a technical effect exist in just a programmed computer or must it act on some physical entity?

No - see T 208/84 (Vicom).

3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

Not applicable (see above).  If the computer is unspecified, this might be an issue of sufficiency or of added subject matter, but not of patentability under A52 or A56. 

3.(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?

Yes - see Vicom again. It does not matter that the implementation is on a 'general purpose' computer, provided the effect provided goes beyond the normal interactions between software and hardware.

4.(a) Does the activity of programming a computer necessarily involve technical considerations?

Translation: Can a technical effect exist in just a computer program, or must it act on some other physical entity?

Yes - 'technical character', as defined by T 258/03, can involve something as simple as pencil and paper. Programming involves at least this, so is therefore inherently technical. This does not, however, mean that the result of the program possesses the further technical effect required for patentability.

4.(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?

No - see answer above.

4.(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?

Not applicable - see above.

In summary it seems that, once question 1 is answered, all the others simply fall away, leaving nothing to be decided that has not already been established by many Boards of Appeal decisions.  In the IPKat's view, these questions are very poorly drafted and seem to result from a very obvious (deliberate?) misreading of the case law of the EPO Boards of Appeal.  He has no doubt that, provided the Enlarged Board follow the meaning of Article 112, they will have little hesitation in refusing the referral. 

EPO Enlarged Board Referral on Software Patents

The IPKat has just learned that a referral has been made to the Enlarged Board under Article 112(1)(b) by the President of the EPO Alison Brimelow (right) on question of software patents. The full text of the referral can be found here (pdf document), and the EPO announcement here. Thanks are due to a very eminent subscriber for pointing this out.

As a background to the questions, Ms Brimelow states:

"Even in the 1960s, as the founding fathers of the European Patent Office drafted a new European patent law, it was clear that the patentability of computer programs was a complex issue. Legislative attempts to change or clarify the law in this field have met with more controversy than success, although Article 52 EPC was amended to state that inventions ‘in all fields of technology’ are patentable, thus making an implicit requirement explicit.

As the EPC was drafted, the feeling was that it was better not to define the exclusion precisely in law, but rather that the matter should be left in the hands of the EPO and the national courts. This flexibility is important as technology develops and new technologies emerge. Nevertheless, to quote a working group in 1972: “it was stressed that a matter as important as computer programmes [sic] should not be left in a state of prolonged uncertainty pending legal developments”. Diverging decisions of the boards of appeal have indeed created uncertainty, and answers to the questions arising from these decisions are necessary to enable the further, harmonious development of case law in this field.

Currently there are concerns, also expressed by national courts and the public, that some decisions of the boards of appeal have given too restrictive an interpretation of the breadth of the exclusion. It is clear that the European Patent Office should have the leading role in harmonising the practice of patent offices within Europe.

The four questions have been chosen to look at four different aspects of patentability in this field. Firstly the relevance of the category of the claim is questioned. The next three questions concern themselves with where the line should be drawn between those aspects excluded from patentability and those contributing to the technical character of claimed subject-matter: the second question concerns the claim as a whole; the third, individual features of a claim; the fourth, relevant for defining the skills of the (technically) skilled person, concerns the activity (programming) which underlies the resulting product (computer program).

It is hoped that the referral of these questions to the Enlarged Board of Appeal will lead to more clarity concerning the limits of patentability in this field, facilitating the application of the law by examiners and enabling both applicants and the wider public to understand the law regarding the patentability of computer programs according to the EPC."

The questions are as follows:

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?

2.(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?

3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

3.(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?

4.(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?

4.(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?

As the extensive background to each of the questions details, each of them is deliberately aimed at aspects of the sometimes contradictory nature of the Technical Boards of Appeal decisions that have been made on the subject over the last couple of decades, from Vicom to Duns Licensing, via IBM, Hitachi and Microsoft, among others.

The closing summary gets to the real meat of the issue:

"From the historical documents it appears that the authors of the EPC agreed that a computer program could only be patentable if it had technical character. This view is supported by the different comments given by delegates referring to the amendment of paragraph 1. However, this technical character, necessary to avoid the exclusion laid down in Article 52(2) EPC, was not defined.

Furthermore, the wording of Article 52(2) EPC provides no indication as to whether the exclusion of certain items is based on the fact that the items mentioned lack the necessary technical character or whether the exclusion is based on broader social or political considerations. The possibility that some excluded items are indeed technical is left open by the phrase “shall not be regarded as inventions”. Consequently, from the wording of Article 52(2) EPC, no conclusion can be drawn concerning the question of whether a computer program is technical or not.

In the absence of guidance from the law and its preparatory documents, and in view of the existence of divergences of opinion regarding how the computer program exclusion should be applied, it is considered appropriate at this stage to refer the questions set out in the previous section to the Enlarged Board of Appeal for its opinion."

The IPKat must admit that he is quite surpised, not to say a bit shocked, at the appearance of this referral. He was gradually coming round to believing that the questions had being largely settled (heavily fudged though they may be), after the kerfuffle around Aerotel and Duns Licensing, followed by the dampening down of Symbian (IPKat commentary here). He had the impression that national courts, the UK in particular, were eventually beginning to be persuaded to step in line with the EPO lead, even though the EPO stance had 'evolved' somewhat over the years as a result of the demands of patent applicants. As regular readers will know, this Kat has been banging on for a while now about the sometimes strange reasoning that the EPO has been using over whether to exclude or not to exclude, particularly when it comes to what exactly is meant by 'technical'. Humpty Dumpty has, of course, been mentioned in this context before.

The IPKat is very keen to see these questions being settled properly at the EPO level, which should hopefully provide applicants with some degree of predictability as to what they might and might not be able to get away with in future. As many people from either side of the software patents debate often fail to realise, what patent practitioners actually want in the main, rather than more patents for bad inventions, is some degree of certainty so they can provide a decent service for their clients. Their jobs are not made any easier, and their clients' pockets are certainly made much lighter, by the swinging pendulum of the UK approach and the uncertain shifting reasoning of the EPO approach. Failing certainty, it would be nice just to have slightly more rigidly defined areas of doubt and uncertainty. At the moment we don't have even that.

The outcome of the referral process, resulting in a decision by the enlarged board on these questions, is unlikely to be known for some time, possibly a year or two given past behaviour. The IPKat wonders whether this will mean that all those applications containing computer program claims, or even those merely referring claiming 'computer implemented inventions', will now have to be put on hold. We (patent attorneys, that is) certainly hope not, but the IPKat thinks that this might be an inevitable effect of trying to sort out the issue properly (but, he suspects, not once and for all).

For more on this referral, see the IPKat's further comments here.

EPO Enlarged Board: Rebuff 1/08

Patentanwalt Rainer Boeckelen of TBK-Patent has kindly informed the IPKat of a recent decision of the EPO Enlarged Board of Appeal that has as yet not apparently received much in the way of publicity, at least not via the EPO's own list of decisions of the Board. This might have something to do with its assigned case number R 0001/08 [should we be expecting up to 9998 other decisions this year, perhaps?] which, at least to those familiar with the usual labelling of EPO appeal decisions (T for technical board, J for legal board, G for enlarged board and W for wobble board), might sound a bit odd. This is because the decision is the first to issue as a result of the new EPC2000 provision of Article 112a that allows for a petition for review of a decision of a lower board to the enlarged board but (and it's a big but) only if:

"(a) a member of the Board of Appeal took part in the decision in breach of Article 24, paragraph 1, or despite being excluded pursuant to a decision under Article 24, paragraph 4;
(b) the Board of Appeal included a person not appointed as a member of the Boards of Appeal;
(c) a fundamental violation of Article 113 occurred;
(d) any other fundamental procedural defect defined in the Implementing Regulations occurred in the appeal proceedings; or
(e) a criminal act established under the conditions laid down in the Implementing Regulations may have had an impact on the decision."

The petitioner in this case was the proprietor of the patent in question, EP0916347, which had been unsuccessfully opposed but, on appeal, revoked by the technical board of appeal on the grounds of a lack of inventive step in the proprietor's auxiliary request (the main request also having failed). The proprietor complained that they had not been given an opportunity to respond to any allegations of lack of inventive step in the request, and were consequently very surprised when the patent was revoked. In their view, the appeal board was guilty of a fundamental violation of Article 113, partly because, according to rule 111(2), decisions of the EPO which are open to appeal should be reasoned.

The Enlarged board thought otherwise. On reviewing the preparatory documents illustrating the reasoning behind the introduction of Article 112a, it was clear to the board that the review procedure was meant to be "an extraordinary legal remedy the filing of which does not affect the force of res judicata of the decision under attack", meaning that the provisions were to be applied in a strictly limited fashion. It was not the purpose of Article 112a to allow a case to be decided by a third instance (after, in this case, the opposition division and appeal board), but to "provide the right for judicial review founded on a limited number of grounds that have been exhaustively defined by the legislator". The fact that the auxiliary request was not argued (for or against) in the appeal proceedings, partly as a result of the opponent/appellant not appearing in person, did not mean that it was automatically allowable. The proprietor had already been given an opportunity to argue for the validity of the request, and it should not have been surprising to them when the board issued its decision. No provision of the EPC required that the party must be provided with all foreseeable arguments for or against a request in advance, and not to do so was not a fundamental violation of the right to be heard. The enlarged board then unanimously decided that the petition for review was not allowable.

The IPKat can see how this one was always going to be a slim possibility, and suspects the attorneys in this case would have though so too, but he congratulates them (and their clients, of course) for having the nerve and money to have a go anyway. It was reasonably clear from the outset that Article 112a was never going to be particularly useful as a third instance at the EPO, but it is useful for the rest of us to find out just how little use the provision is likely to be, now that we have had the opportunity to read what the enlarged board actually thinks of it.

New EBA referral

Thanks to Edward Tomlinson (Frohwitter) for pointing out to the IPKat a new referral that has recently been made to the EPO enlarged board, in decision T 1319/04. The questions being asked are as follows:

" 1. Where it is already known to use a particular medicament to treat a particular illness, can this known medicament be patented under the provisions of Articles 53(c) and 54(5) EPC 2000 for use in a different, new and inventive treatment by therapy of the same illness ?

2. If the answer to question 1 is yes, is such patenting also possible where the only novel feature of the treatment is a new and inventive dosage regime ?

3. Are any special considerations applicable when interpreting and applying Articles 53(c) and 54(5) EPC 2000 ?"