EPO President Refers Four Questions With Respect To Computer Implemented Inventions To Enlarged Board Of Appeal Referral Of October 22, 2008 - Case G 3/08

Profession:Bardehle Pagenberg Dost Altenburg Geissler
 
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By Johannes Lang, Dr Hans Wegner, Dr Rudolf

Teschemacher

First published in BARDEHLE PAGENBERG IP Report 2008-V,

www.bardehle.com

On October 22, 2008 the President of the European Patent Office,

in accordance with Article 112 (1) (b) EPC, referred four questions

relating to the patentability of computer implemented inventions to

the Enlarged Board of Appeal of the EPO:

Question 1: Can a computer program only be excluded as a

computer program as such if it is explicitly claimed as a computer

program?

Question 2: (A) Can a claim in the area of computer programs

avoid exclusion under Article 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?

Question 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?

Question 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?

As a reason for this somewhat surprising referral, the President

of the EPO, Mrs. Alison Brimelow, indicates that there were

concerns by national courts, in particular the UK courts, and the

public "that some decisions of the boards of appeal have given

too restrictive an interpretation of the breadth of the

exclusion" from patentability of programs for computers as

such provided in Article 52(2) and (3) EPC. In fact, in October

2006, the UK Court of Appeal under Lord Justice Jacob had asked in

the Aerotel case the...

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