G 3/08 (Software Patents) decision is out - Tufty the Cat vindicated

Back in October 2008, the IPKat reported on a referral that had been made by the EPO President Alison Brimelow to the Enlarged Board of Appeal on the subject of patents for computer-implemented inventions (or software patents for short). The issue has been commented on extensively, both here and elsewhere, and many observations (or 'amicus briefs', if you prefer) were filed in response to the referral.

At least two of the IPKat's amanuenses, including myself, as well as some more eminent people including Lord Hoffmann (see here and here) came to the conclusion that the referral was inadmissible, for the simple reason that there was in fact no divergence in the current EPO case law.

The Enlarged Board has now issued their decision, as announced on the EPO website here, with the full decision available here.  Unsurprisingly (to me, at least), they have found the questions to be wholly inadmissible.  The decision in full runs to 61 pages, but the key points are in the headnotes, which state (with some of my comments and emphasis added):
"1. In exercising his or her right of referral a President of the EPO is entitled to make full use of the discretion granted by Article 112(1)(b) EPC, even if his or her appreciation of the need for a referral has changed after a relatively short time [This refers to the refusal by the previous EPO President, Alain Pompidou, to consider the questions raised by the UK Court of Appeal in Aerotel/Macrossan.  For more on this, see the IPKat's post here].

2. Different decisions by a single Technical Board of Appeal in differing compositions may be the basis of an admissible referral by the President of the EPO of a point of law to the Enlarged Board of Appeal pursuant to Article 112(1)(b) EPC.

3. As the wording of Article 112(1)(b) EPC is not clear with respect to the meaning of “different/abweichende/divergent” decisions the provision has to be interpreted in the light of its object and purpose according to Article 31 of the Vienna Convention on the Law of Treaties (VCLT). The purpose of the referral right under 112(1)(b) EPC is to establish uniformity of law within the European patent system. Having regard to this purpose of the presidential right to refer legal questions to the Enlarged Board of Appeal the notion “different decisions” has to be understood restrictively in the sense of “conflicting decisions”.

4. The notion of legal development is an additional factor which must be carefully considered when interpreting the notion of “different decision” in Article 112(1)(b) EPC. Development of the law is an essential aspect of its application, whatever method of interpretation is applied, and is therefore inherent in all judicial activity. Consequently, legal development as such cannot on its own form the basis for a referral, only because case law in new legal and/or technical fields does not always develop in linear fashion, and earlier approaches may be abandoned or modified [Tufty says: This is the key point.  As the Technical Board has stated, in for example T 1227/05, they need to be able to take into account technical developments to develop their case law on patentability.  This does not mean that later decisions become "conflicting" just because they depart from older case law, a point that the President did not seem to realise at the time of the referral].

5. Legal rulings are characterised not by their verdicts, but by their grounds. The Enlarged Board of Appeal may thus take obiter dicta into account in examining whether two decisions satisfy the requirements of Article 112(1)(b) EPC.

6. T 424/03, Microsoft does deviate from a view expressed in T 1173/97, IBM, concerning whether a claim to a program on a computer-readable medium necessarily avoids exclusion from patentability under Article 52(2) EPC. However this is a legitimate development of the case law and there is no divergence which would make the referral of this point to the Enlarged Board of Appeal by the President admissible.

7. The Enlarged Board of Appeal cannot identify any other inconsistencies between the grounds of the decisions which the referral by the President alleges are divergent. The referral is therefore inadmissible under Article 112(1)(b) EPC."
After reading the headnotes, it seems that there is no need to go any further.  There is, of course, some extensive discussion about why the questions raised are inadmissible.  The EBA have arrived at the same conclusions, although via slightly different routes and at much greater length, to me.  A further key point, however, is made at 7.2.7, where the EBA states:
"Given its object and purpose, the right of referral does not extend to allowing the President, for whatever reason, to use an Enlarged Board referral as a means of replacing Board of Appeal rulings on CII patentability with the decision of a putatively higher instance. For example, a presidential referral is not admissible merely because the European Parliament and Council have failed to adopt a directive on CII patenting or because consistent Board rulings are called into question by a vocal lobby (cf. the present referral, page 2, Section 1, paragraph 3). Even the essentially commendable desire for harmonisation expressed by Lord Justice Jacob in the Aerotel/Macrossan judgment can be taken up by the Enlarged Board only to the extent possible under the EPC, even if his suggestion might significantly advance the cause of legal uniformity in Europe. When judiciary-driven legal development meets its limits, it is time for the legislator to take over."
As many in the 'FOSS'/anti-patent world would undoubtedly say, perhaps it is now time for the legislator to take over. However, I would have very serious doubts about whether it will be possible to come to any sort of agreement among the member states of either the EU or the EPC that would stand any chance of resolving the issue once and for all.

The IPKat is happy that the EBA have settled this particular matter (or have they?), but he and Merpel are both quite confused by the passage about Alice Through the Looking Glass.  What is the name of the song? And what have haddock's eyes got to do with software patents?
G 3/08 (Software Patents) decision is out - Tufty the Cat vindicated G 3/08 (Software Patents) decision is out - Tufty the Cat vindicated Reviewed by Tufty the Cat on Wednesday, May 12, 2010 Rating: 5


  1. Summary: deviation is not divergence. Classic.

  2. The passage from Alice seems to have something to do with the patentability of music ("'... the tune's my own invention'"). That must be worth a reference to the Enlarged Board!

  3. A long 60 pages just to confirm current case law as bang on (with a remarkable absence of any caveats or nuances). Still, it does give them scope to start out quite respectful towards the Referral, and then become quite dismissive by the end.

  4. Worth a look


  5. I guess I was right with my initial hunch then.


  6. Of course it is up to politics to act. The mistake is that the "patentable subject-matter" issue in genral, and software patentability in particular so far has been treated as a specialist patent law problem, in a legalistic way.

    Should we hope for a major crisis that has a similar effect as the present crisis in Greece?

  7. The EBOA was very kind to issue this first class rebuke while Mrs. Brimelow still is in office, as if it was sending a message to her and her successors saying "better think it over twice before you bother us again". This decision is the ultimate tribute to her presidency, I'm glad to see that there are some people left in this outfit who are allowed to think.

  8. The important element in this EBoA decision is not that the referral is dismissed, but that the two allegedly conflicting decisions are not what current EP case law is about.

    The EBoA is very clear in expressing support for the approach followed in T 154/04 (Duns): "An elaborate system for taking that effect into account in the assessment of whether there is an inventive step has been developed, as laid out in T 154/04, Duns." and "It would appear that the case law, as summarised in T 154/04, has created a practicable system for delimiting the innovations for which a patent may be granted."

    The core elemenent in T 154/04 is "Novelty and inventive step, however, can be based only on technical features".

  9. The interesting point will be to see how the UK Courts now deal with the Aerotel/Macrossan test. A key point in Symbian was in paragrpah 46 The fact that there are now three such decisions of the Board subsequent to Aerotel which appear to support the approach disapproved in Aerotel might suggest that this court should now adopt that approach. We do not agree. First, there is no decision of the Enlarged Board.

    There still strictly isn’t a decision but given the forcefulness of paragraph 10.13 of G3/08 I can’t see much room for maneuver

  10. From SCOTUS, no Bilski Decision yet, on 35 USC 101 (their Art 52). Will G3/08 help them forward at all? Were they hoping for some help?

    Surely not. In KSR, SCOTUS has done obviousness (103) already, and in a way incompatible with G3/08. Because America lacks the EPO's effective "technical" Art 56 filter, 101 patent-eligibility is a real ticklish problem.

    No wonder Bilski is taking a long time.

  11. I quite like the thing about the cup with the picture on it - maybe even SCOTUS would get that!

    Nevertheless, regardless of whether you use the "contribution" approach or the "technical inventive step" approach, the EPO and UKIPO still seem to have very different ideas about "technical"

  12. The opinion shows that the EPO needs to do some serious quality control in its legal department (or whatever part of it wrote the referral). It is clearly unacceptable that the EBA needs to teach the president elementary logic as it does in point 11.2.3.

    In a few years the EPO might lose face in an even more brutal way when the EBA declares some of the recent "raising the bar" Rule amendments incompatible with the EPC.

    The good thing is that Question 1, although inadmissible, gave the EBA the opportunity, which it took, to explain certain crucial points of the established case law in a way that will hopefully make an end, at least among national judges, to the most common misconceptions.

    Maybe the best part is the beginning of point 10.13.1. In response to the argument in the referral that "if one were to follow the reasoning of T 424/03, overcoming the exclusion of programs for computers would become a formality, ..." the EBA responds that this indeed is the consequence of following the precepts of T 1173/97, which is the very decision that the referral uses to show that there are conflicting decisions which merit the referral of Question 1.

  13. @Gobhicks:
    Not only the EPO and UKIPO have different ideas about "technical", there are also clear divergences between different Boards of the EPO. Hard to say if a (better worded) referral could have cleared that up, but I think it would have had a chance. Especially in respect of alleged technical effects that somehow hinge on the intervention of the human mind.

  14. Here is what I just posted to the Patently-O thread, in reply to a writer who categorizes "technical" as "toxic"

    "Take the question in the context of civil law and the way the law develops in such jurisdictions. No Binding Precedent, just a bunch of blind TBA members, groping forward into the cloud that is the future.

    Looking back the way we came, all is crystal clear. Moving forward, the EBA has its 24 TBA scouts out there, feeling their way forward.

    On obviousness, 103 (Art 56), the EPO is in much better shape than SCOTUS. As to 101 (Art 52), we in Europe await Bilski, to see what sort of a fist SCOTUS can make of that ticklish problem.

    Somebody on the parallel IPKat thread complains about different EPO Boards having different views on "technical", in the context of claimed subject matter that involves a "mental act". Good so. Their argument will flush out the purest line of legal advance. Meanwhile, I must say, if that's the limit of what's wrong at the moment with "technical", it's a pretty small gripe. Wasn't it Lord Justice Jacob, who pointed out that, when it comes to the validity of a claim, a "puzzle at the edge" is not a good enough reason to revoke the claim. So it is too, with "technical"."

  15. @MaxDrei: I guess that someone was me, and yes, it is a very small gripe and certainly not intended as a criticism of the EPO technicality/COMVIK approach.

    As the EBA observed, the various Boards seem to agree that the COMVIK approach is the correct approach (or at least an approach that leads to the correct results when properly applied). Given that this already appears to be settled, at least witin the EPO, the way forward is to clarify the concept of technicality where that is possible.

  16. "However, I would have very serious doubts about whether it will be possible to come to any sort of agreement among the member states of either the EU or the EPC that would stand any chance of resolving the issue once and for all."

    You don´t need that to pass national clarifications to the European Patent Convention.


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