Legal Commentary

Today, the Enlarged Board of Appeals of the European Patent Office (EPO) issued the long-awaited G 3/08 opinion that considered software patentability standards under the European Patent Convention (EPC). The decision considered several questions referred by the EPO President concerning the meaning of Article 52 EPC, which includes an exclusion for computer programs as such.  

This essentially means that the EPO allows patents for software that has a further technical character--that is, it is more than software "as such." For example, Microsoft obtained an EPO patent to a method for using a "clipboard" to transfer data into computer files because the invention gave a general purpose computer added functionality.  The issues presented in 3/08 related to the line between patentable and unpatentable software claims under this standard.

If you believe that no news is good news, then 3/08 is wonderful news because the 61-page decision found the referral inadmissible and, therefore, declined to reach the merits.  It's an interesting (if non-committal) read, and some of the questions raised are fascinating.  Consider the following:  "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?"  Great question--but the EPO Enlarged Court of Appeal declined to consider this one and all of the others.

In part, the Court's refusal concerned an interpretation of the EPC:

Development of the law is an essential aspect of its application, whatever method of interpretation the judge applies, and is therefore inherent in all judicial activity. In that light an element of legal development can even be seen whenever a specific case is subsumed under an abstract regulation. That is especially true of Anglo-Saxon law, where a decision on an individual case has far greater implications as a precedent than judgments in continental civil law. Consequently, 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. 

The Enlarged Board of Appeals determined that later developments of the law do not necessarily conflict with earlier opinions, rather that "Such corrections are a normal part of the application and development of the law and do not constitute a difference that could be corrected by means of a presidential referral to the Enlarged Board. . ."