By Johannes Lang, Dr Hans Wegner, Dr Rudolf
First published in BARDEHLE PAGENBERG IP Report 2008-V,
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
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...