Admissability referral President EPO
• It would be too limiting to declare a referral by the President inadmissible simply because the formal requirement that two Boards of Appeal must be involved has not been fulfilled. At least this holds true when, as is the case here, the Board of Appeal has delivered the allegedly different decisions in different compositions
“Different decisions” criterion requires a divergence or conflict in the case law
• The "different decisions" criterion would appear to show that the President is only intended to be allowed to refer a question to the Enlarged Board 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.
• legal development as such cannot on its own form the basis for a referral, only because case law in new legal territory does not always develop in linear fashion, and earlier approaches may be abandoned or modified. Otherwise the "different decisions" feature of Article 112(1)(b) EPC would lose its meaning.
• While the development of the law may superficially appear to give rise to different decisions within the meaning of that provision, on its own it cannot justify a referral to the Enlarged Board. A referral is justified only if at least two Board of Appeal decisions come into conflict with the principle of legal uniformity. The object and purpose of Article 112(1)(b) EPC is to have an Enlarged Board decision reestablish legal uniformity when it has clearly been disrupted, not to intervene in legal development.
• Hence the President has no right of referral under Article 112(1)(b) EPC simply in order to intervene, on whatever grounds, in mere legal development if on an interpretation of the notion of "different decisions" in the sense of conflicting decisions there is no need for correction to establish legal certainty.
Fundamental principles of law supported by EPO
• According to current constitutional thinking, the predictability and verifiability of all state action are indispensable elements of a democratic legal order based on the separation of powers, the rule of law and respect for human rights including fundamental procedural rights.
Boards of Appeal: role of independent judiciary
• Finally, the Boards of Appeal, which in their decisions are bound only by the EPC (Article 23(3) EPC), are assigned the role of an independent judiciary in this patent system (Articles 21 to 23 EPC; see also G 6/95, OJ EPO 1996, 649, Reasons, points 2 ff.), even if for the present, pursuant to Article 4(2) EPC and to EPC Part 1 Chapter III, they are not an independent organ of the Organisation but structurally integrated departments of the Office under Article 15 EPC.
Harmonization philosophy and taking account of national decisions
• On the other hand, the interpretation of the EPC or equivalent national regulations by the courts of the Contracting States has no direct consequences for Office departments; but that does not mean that in interpreting the Convention the Boards of Appeal should not take account of relevant national decisions on harmonised European patent law, in keeping with normal practice. This is implied by the harmonization philosophy behind the EPC.
Computer Implemented Inventions
T 1173/97 – IBM; Exclusion computer program
• clear that the Board considered that a claim to a computer program product could not escape the exclusions of Article 52(2) EPC merely by comprising a computerreadable medium. Reasons, points 6.2 and 6.3 cited above at least suggest that the Board also considered that claiming a computer loaded with a program or the execution of a program on a computer would not be sufficient to escape the exclusion.
• the identified further technical effect need not be new. By taking this position the Board consciously abandoned the socalled "contribution approach"
T 424/03 – Microsoft
• Further technical effect only important for inventive step
T 1173/97 v T 424/03: Development instead of conflict in case law
• Contradiction on relevancy of “computer program as a record on a carrier” or “computerreadable medium, i.e., a technical product involving a carrier”
• Firstly and most importantly the referral does not identify, and we are not aware of, any decision whatsoever of one of the Boards of Appeal of the EPO which follows T 1173/97 on this point
• Secondly, the conclusion arrived at in T 424/03 has not been challenged in any later decisions; nor was it isolated but rather came as the last of a series of decisions, the logic of which is consistent and, at least to our knowledge, has also not been challenged in any later decision of a Board of Appeal of the EPO
• Thus the position taken in T 424/03 that a claim to a program on a computerreadable storage medium is necessarily not excluded from patentability by the provisions of Articles 52(2) and (3) EPC is in fact a consequence of the principles laid out in T 1173/97;
• Thus in the judgement of the Enlarged Board, although T 424/03 does deviate from a view expressed in T 1173/97 this is a legitimate development of the case law and since T 1173/97 has not been followed by any Board on this particular point there is no divergence which would make the referral of this point to the Enlarged Board of Appeal by the President admissible. Question 1 is therefore not admissible.
State of the case law
• The present position of the case law is thus that (phrasing the conclusion to match Question 2 of the referral) a claim in the area of computer programs can avoid exclusion under Articles 52(2)(c) and (3) EPC merely by explicitly mentioning the use of a computer or a computerreadable storage medium.
• But no exposition of this position would be complete without the remark that it is also quite clear from the case law of the Boards of Appeal since T 1173/97 that if a claim to program X falls under the exclusion of Articles 52(2) and (3) EPC, a claim which specifies no more than "Program X on a computerreadable storage medium," or "A method of operating a computer according to program X," will always still fail to be patentable for lack of an inventive step under Articles 52(1) and 56 EPC.
Distinction between a method carried out by a computer and a program as a sequence of instructions specifying a method
• Since formulations like "a program loaded on a computer" and "a disk storing a computer program" are commonplace in the art, the Enlarged Board considers that the skilled person understands the word "program" to refer to the sequence of instructions specifying a method rather than the method itself.
Inventive step and the consideration of features
• It is in fact a wellestablished principle that features which would, taken in isolation, belong to the matters excluded from patentability by Article 52(2) EPC may nonetheless contribute to the technical character of a claimed invention, and therefore cannot be discarded in the consideration of the inventive step.
• the fact that fundamentally the formulation of every computer program requires technical considerations in the sense that the programmer has to construct a procedure that a machine can carry out, is not enough to guarantee that the program has a technical character (or that it constitutes "technical means" as that expression is used in e.g. T 258/03, Hitachi). By analogy one would say that this is only guaranteed if writing the program requires "further technical considerations".