The EPO referrals: what's really going on?

Following the IPKat's initial and follow-up posts -- and the readers' comments -- on the referral to the Enlarged Board of Appeal of the European Patent Office of a number of questions relating to the exclusions from patentability of computer programs, this member of the blog team has been speculating on the deeper meaning of the EPO's current activity and what it could possibly signify.

Right: "Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?" Almost everyone has an answer -- but is it the right one?

Some people say that the referral of the questions is a feeble surrender to the demand of Lord Justice Jacob in Aerotel/Macrossan that the EPO resolve the contradictions in its earlier rulings -- contradictions the existence of which the previous President of the EPO denied -- or whether it is a resolute defence of the EPO's resistance to such pressures that have led it to ask its own questions of the Enlarged Board rather than those articulated by Jacob LJ. The nature of the questions has itself given rise to plenty of speculation. Are they there simply to remove perceived inconsistencies in EPO practice, or are they posed in order to provide an excuse to send out answers that will seek to bind practice in national offices too?

Others are speculating on the line-up of the Enlarged Board. Chaired by the Swiss (and therefore stereotypically neutral) Peter Messerli, the Board's other members consist of the legally qualified Messrs Vogel (Germany), Dorn (Denmark), Harmand (Estonia) and Seitz (France) together with the technically qualified Messrs Rees (UK) and Klein (France). What does this balance of personalities, and indeed nationalities, mean within the geopolitical profile of the EPO?
Debate still persists as to what the Enlarged Board will do. Does the fact that it has now been formally constituted mean that it has to give a ruling, or might it yet be able to decide that the provision of answers to the four questions referred to it is something that lies outside the range of its legal function? And as for the questions themselves, is it conceivable that they would have been posed at all, and particularly in the form in which they are asked, without careful and attentive consultations with senior members of the EPO staff? Is their precise content designed to enable the Enlarged Board, in answering them, to give a good account of itself which shows itself in a good light, or is it designed to invoke regret and repentence for past verbal or conceptual infelicities?

One might reasonably feel that there's a lot more happening than meets the eye. If readers have any further perceptions on the referral, the IPKat hopes they will share them here.
The EPO referrals: what's really going on? The EPO referrals: what's really going on? Reviewed by Jeremy on Wednesday, November 19, 2008 Rating: 5


  1. Jeremy,
    only Ms Brimelow really knows what is behind the referral, so you'll have to ask her.
    Why "others are speculating on the line-up of the Enlarged Board" would appear to be the result of a lack of knowledge of the Rules of Procedure of the Enlarged Board of Appeal.

  2. Please do enlighten us mere mortals then, oh superior anonymous one.

  3. David,
    sorry to disappoint you but there is no "superiority" involved.
    In addition to the Rules and perhaps the Business Distribution (both published in the EPO Official Journal) only some googling about the basic principles of court composition is necessary to work out why the present composition is as it is.

  4. Anonymous,
    Still not feeling like being helpful then?

  5. "And as for the questions themselves, is it conceivable that they would have been posed at all, and particularly in the form in which they are asked, without careful and attentive consultations with senior members of the EPO staff?"
    This certainly is an interesting point. When comparing the present referral with earlier papers filed on behalf of the EPO presidents it is apparent that the legal quality is quite different. Therefore the question arises whether DG5, most probably having written Mr Pompidou's response to Lord Justice Jacob question, was involved at all in this referral.

  6. Now me, I'm comparing Gerald Paterson's 1989 beautiful economy, in his second non-medical use, cat-out-of-the-bag Mobil Decision G2/88, a once in a generation milestone in the development of patent law in Europe, with what the unherdable cats of Paul Michel's CAFC laid before our eyes in Bilski. Will Peter Messerli and his team be able to give us another landmark Decision of the quality of Mobil? (Mind you, in Mobil, the TBA told the EPO President Braendli to get lost, so I guess anything could happen, this time around).

  7. David

    As a relatively recently qualified EPA you REALLY should know about this. It's the sort of thing you learn for exams but then forget about within a couple of years because it's never ever useful. Sadly, I give law paper tutorials so I sort of still remember it:$File/Business_distribution_scheme_EB_1-1-2008.pdf

    "Decisions shall be taken by an
    Enlarged Board of Appeal consisting
    of seven members, of whom no more
    than two may have the same

    And criticising the anon for being unhelpful is hardly appropriate when you're being equally obtuse by suggesting that there's "speculation going on about the line-up" when as far as I can tell, the only person speculating is you.

  8. Gerontius -- the rule is that "Decisions shall be taken by an Enlarged Board of Appeal consisting of seven members, of whom no more than two may have the same nationality." But that doesn't account for the division as between nationalities, does it?

  9. To be speculating on the significance of the division between nationalities within the EBA line up strikes me as extreme paranoia.

    Isn't it more likely that the line up is based upon (in no particular order):

    2)Appropriate knowledge / background
    3)Willingness to participate in something potentially so contentious and long running

    while also complying with the basic nationality rule?

  10. The Business Distribution document referred to by Gerontius gives a complete picture of what has to be taken into account when composing the Enlarged Board in relation to the case to be decided. When following these instructions the composition would appear to be almost automatic.

  11. Looks to me like the division or nationalities could also very easily be accounted for by a random selection of 7 out of 34 countries. Apart from Switzerland, which was always going to be represented since Messerli is the current EBoA chairman.

    Just wanted to apologise for attacking David without noticing it was Jeremy who wrote the original post with its inconceivable speculation. Also, sorry for misremembering that it was CPA rather than EPA success David was celebrating recently.

  12. How did you find out the make-up of the EBA for this case? I can't find it on the EPO web-site, and only yesterday many people (including me) were unaware of the selection.

  13. I hope I'm wrong, but I'm dubious of a good result coming out of this referral, whether the EBA takes it up or not.

    I was struck by the directness of some comments by Dai Rees, who will be one of two technical members of the panel. (I don't know when the paper was written. says it's been on the website of a EPO examiner since about 2004):

    “For a long time we used to say that computer programming, or the field of programming, was one of the things that was not included. The Sohei decision, in 1994, was really ground breaking because the Boards of Appeal said that if the invention was to do with how you programmed something, how you implement something on the computer, and if that implementation requires inventiveness, then that is patentable. What they were saying was that programming is a technical art, in the view of the Board of Appeal. That was the first time that was said and that changed our approach a great deal...

    "We do not have a definition of ‘further technical effect’; we have examples and we can make some fairly good generalisations. One of them is if it acts on physical data, e.g. an image, or the control data for an X-ray machine. If it has an effect on the way the computer, as a whole, operates, the operating system. A graphical user interface can be a good example, maybe reducing something to a single click. Or if it is saving memory, increasing speed, and so on. The third one, which is what I tried to explain from Sohei, is if what is claimed is an implementation which requires technical programming skill, if you like, programming inventiveness."

    I suspect the UK would have trouble with the broadness even of the first two examples, without qualification. (I have even heard Judge Jacob say he thought Vicom was "wrongly decided on its own test"). But it's the third one, "programming inventiveness", that in the UK - whether from the mouths of the UKIPO, the then minister David Sainsbury, Peter Prescott in CFPH, or Robin Jacob in Aerotel - has consistently been rejected as "related to the subject matter or activities of [computer programs] as such".

    If it wanted to be really helpful, the EBA would look at this difference of substance square on. Otherwise, it is just going to be moving the deckchairs around.

    PS. I'm struck by Roy Marsh's praise for Mobil G2/88. Mobil was a terrible decision - a great example of why the final word on the law ought to rest with a Court, that also sees the effects of how patents can get asserted in the real world; rather than internally in a Patent Office, which only sees the ivory-tower process of grant. (A patent office also with arguably a significant interest in the question, re the growth/preservation of parts of its own business).

  14. (I don't know when the paper was written. says it's been on the website of a EPO examiner since about 2004)

    According to "Document Properties" the .pdf was created 12 November 2001. So that was somewhere between Pension Benefit and COMVIK. This is also clear from page 7.

    As far as I can tell the legal content of the document is really just a reflection of then-current case law. Rees is not giving any strong personal opinions.

    He does mention "programming inventiveness", but as another name for "technical programming skill", or - in the words of Sohei - "technical considerations". So it still is "technical (programming) inventiveness".

    rather than internally in a Patent Office

    It's not internal when external judges are among the members of the EBA.

    (A patent office also with arguably a significant interest in the question, re the growth/preservation of parts of its own business).

    Uhm, national courts have about the same interests in growth/preservation of parts of their own business. Now if EPO management was deciding it would have been a whole different story, but that is not the case.

  15. Could the anonymous perhaps expand on why Mobil was a "terrible" decision? He thinks it self-evident, but it isn't to me, and wasn't to its author Herr
    Paterson. Something about supposed difficulties in infringement litigation, I gather. Could he/she perhaps help me, with references to the ongoing difficulties that the courts say they're in, as a result of Mobil? OK, I'm at the coal face, and lack the elevated viewpoint of a high-flying English patent litigator but, all the same, I don't see Munich as an ivory tower, and there's a fair amount of patent litigation also going on where I am, in Germany.

  16. Reflecting further on G2/88 Mobil and the Rules of Procedure of the Enlarged Board of Appeal, I note that dissent opinions are now allowed, but weren't for Mr Paterson (English barrister) back in 1989. So,maybe Mr Rapporteur Paterson himself thought it a "terrible" decision but could do nothing against the majority, but can now at last say what he always thought, anonymously, on this blog. (Or does any reader know better, perhaps unearthing Paterson musings on the subject, since he retired from DG3). As to timing, Paterson got his EBA Decision out in a little over a year. Now, with time needed (under the amended Rules) for Amicus briefs, heaven knows when the EBA can get the current referral done and dusted.


  18. The link above doesn't work for me but, anyway, if one goes to the G3/08 file on the EPO website and looks at page 24/24 one sees Mr Messerli saying that OJEPO will soon carry an announcement that will be of interest to all interested parties impatient to comment.

  19. Perhaps this will work better:

  20. Or you could try this. It only takes a little HTML.


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