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EPO Enlarged Board Endorses Current EPO Practice For Examining Computer-Implemented Inventions

In case G 3/08, the President of the European Patent Office asked the Enlarged Board of Appeal a number of questions relating to the examination of patent applications concerning computer-implemented inventions.

The official reason for this referral was a supposed divergence within the European Patent Office as to how such patent applications were examined. However, in their Decision the Enlarged Board of Appeal states that no such divergence exists, and therefore the referral is inadmissible. There has been much speculation that the referral to the Enlarged Board was contrived in response to political pressure. In this Decision, the Enlarged Board forcefully makes the point that, at least as far as the European Patent Office is concerned, the interpretation of the European Patent Convention is the job of the Boards of Appeal. While the President of the European Patent Office does have the power to refer questions to the Enlarged Board of Appeal, the President may only do so “when there is a divergence or, better, conflict in the case law making it difficult if not impossible for the Office to bring its patent granting practice into line with the case law of the Boards of Appeal.” The Enlarged Board carried out a detailed review of the case law, and came to the conclusion that although there are differences between previous Decisions of the Boards of Appeal, these differences simply reflected legal development and did not adversely affect the patent granting ability of the European Patent Office.

As an aside, the Enlarged Board explicitly refused to consider the meaning of the word “technical”, a concept which is central to the examination of patent applications in the field of computer-implemented inventions. In our view, there is no clear definition of the word “technical” which can be applied in all scenarios, and therefore it is not surprising that the Enlarged Board has decided not to comment. As such, there will always be an element of uncertainty in the outcome of patent applications directed to computer-implemented inventions.

While this Decision will not change the way in which the European Patent Office examines patent applications related to computer-implemented inventions, it is hoped that it will help to bring about conformity to the manner in which national courts and patent offices do so. In this regard, it is noteworthy that the UK Court of Appeal stated in Actavis v Merck that it may depart from the binding nature of one of its previous Decisions if EPO jurisprudence was settled and not plainly unsatisfactory.