On May 12, 2010, the Enlarged Board of Appeal ("EBA") handed down an Opinion on the patentability of computer-implemented inventions following a referral by the President of the European Patent Office. It ruled the referral inadmissible. Nevertheless, the Opinion, running to 55 pages, is still of interest, because it sets out why the EBA considers the existing body of case law to be consistent, and in so doing inevitably sets out how the examination of computer-implemented inventions is and should be conducted. For those representing the more extreme positions in the public debate on this subject—about a hundred amicus curiae briefs were filed in relation to this referral—it is now clear that they will have to direct their efforts to convincing the legislature that a change of law is required. It is also likely that national interpretations of the law in at least some contracting states to the European Patent Convention ("EPC"), notably England, will now develop further.
Under the EPC, the President of the EPO may refer a point of law to the EBA in order to ensure uniform application of the law, or if a point of law of fundamental importance arises, where two Boards of Appeal have given different decisions on that question. The Boards of Appeal referred to here are Technical Boards of Appeal, the bodies that normally decide appeals against decisions in application or opposition proceedings. The EBA ruled the referral inadmissible because it did not consider the decisions identified in the referral to be different or, insofar as they were different, that these differences reflected a legitimate development of the case law.
The EBA's Interpretation of the Case Law
There are basically four aspects of patentability: There must be an invention in a field of technology, it must be new, it must involve an inventive step, and it must be susceptible to industrial application. According to the EPC, programs for computers as such are not to be regarded as inventions, and thus do not meet the first of the four requirements. Note the significance of the phrase "as such," because it is these two words that have long formed the basis for allowing patents in Europe to all manner of inventions that are or can be implemented purely in computer code. Because the claims of a patent application or patent define the invention, the questions posed in the referral at issue relate to both the relevance of the way in which a computer-implemented...