Patentable Subject Matter: The View from Europe

Author:Avi Freeman
Position:Partner in Beck Greener, European and UK Patent and Trademark attorneys and litigators
Pages:59-80
Patentable Subject Matter: The View from Europe117 59
Patentable Subject Matter: The View from Europe
Avi Freeman
a
(a) Partner in Beck Greener, European and UK Patent and
Trademark attorneys and litigators
DOI: 10.5033/ifosslr.v3i1.58
Follow! nay, I'll go with thee, cheek by jowl
1
Abstract
This article presents a review of the position regarding the availability of
patent protection for computer-implemented inventions (software in
particular) in Europe. The specifics of the European Patent Office
approach to this, i.e. providing a low threshold for exclusion on grounds
of non-patentable subject matter, but not allowing non-technical features
to contribute to an inventive step, is contrasted with that in the United
Kingdom, where the EPO-derived contribution approach still holds.
Some comparisons are made with the position in the United States, post
Bilski.
1. Introduction
Technology and innovation today look very different from how they looked 30 years ago, never mind
centuries ago, when early formal patent systems were being established at the time of Statute of
Monopolies 1623.
2
Stained glass windows and salt might have been cutting edge inventions then, but
now exactly what counts as an invention is of commercial and legal significance in Europe and
elsewhere, with parties on all sides having strong and well-rehearsed views. In the area of computer-
implemented or software-related inventions, in particular, this divergence of views is apparent.
On the one hand, some software developers and companies feel that patents are an essential tool to
protect investment in research and development and thereby encourage innovation. All aspects of
proprietary code are to be guarded to the fullest extent possible. In contrast, other companies or
organisations adopt an open source approach and may seek to rely on a collaborative and open
approach to promote innovation, relying on copyright protection and avoiding patents, and patent
thickets especially, also considering the specific statutory exclusions relating to the availability of
patent protection for software. Whenever an issue becomes prominent in this area, all arguments are
aired. For example, the amicus curiae briefs
3
filed at the European Patent Office (EPO) in the lead up
1 Demetrius to Lysander, A Midsummer Night's Dream - Act III. Scene 2. William Shakespeare
2 For a brief history with particular reference to the definition of the word invention, see the introduction to The
Requirement for an Invention in Patent Law, Justine Pila, OUP
3 Contrast, for example, the submissions of the Irish Free Software Organisation on the one hand, available at
International Free and Open Source Software Law Review Vol. 3, Issue 1
60 Patentable Subject Matter: The View from Europe
to the recent Enlarged Board of Appeal (hereinafter the Enlarged Board) opinion on this subject
demonstrate the firm views held across the spectrum.
Whatever position is taken on this, the law in Europe and the UK relating to the protection of
computer-implemented inventions (and software in particular) has developed over the decades since
the European Patent Convention has been in force. In this paper, I will discuss the current position
before the EPO regarding the exclusion of certain subject matter from patentability on the grounds
that it is not an invention. To do this, I will refer to the position in the UK, as the development of
the law before the EPO has gone hand-in-hand, or perhaps cheek-by-jowl, with that in the UK. Points
arising out of the Opinion of the Enlarged Board, G3/08 issued on 12th May 2010, will be discussed.
I will also briefly comment on the situation in the US, taking into the account the recent Supreme
Court decision of Bilski v Kappos
4
(hereinafter Bilski), and trying to identify useful issues in
common with (or different from) the situation in Europe.
I will not comment on the various attempts to obtain a European Community regulation on the
protection of computer-implemented inventions. Attempts to achieve this have previously failed and,
for now, the European patent community has enough on its plate dealing with the changes and
development of EPO law in this area. In addition, I will not comment on the law of other national
states. For a review of this, see, for example, the paper Computer Programs As Excluded Patentable
Subject Matter, by Brad Sherman.
5
2. Patentable Subject Matter in the UK and Europe: the Law
2.1 The United Kingdom Patents Act 1977
Jumping straight into the modern era in the UK, we have today the Patents Act 1977 (hereinafter
the Act) and various minor modifications to it, but essentially the substantive law of patents and
patentability is as laid down in Sections 1 to 3 of the Act. These define the requirements for novelty,
inventive step and, separately, before one even considers these factors, that you have an invention.
The term invention is not defined.
A list of exclusions is then laid out, which defines a number of categories of things, which are said
not to constitute inventions for the purposes of the Act. In other words, things, which someone who
may well consider himself an inventor has come up with, but are deemed excluded subject matter.
The relevant sections of the Act are as follows:
http://documents.epo.org/projects/babylon/eponet.nsf/0/2345317E7EE223B3C1257774004EFBA9/$File/g3-
08_amicus_curiae_brief_IFSO_en.pdf (accessed 13.9.11) and those of Silicon Economics, Inc, available at
http://documents.epo.org/projects/babylon/eponet.nsf/0/1CA3C0F619E79F93C125777400549249/$File/g3-
08_amicus_curiae_brief_Silicon_Economics_en.pdf (also accessed 13.9.11)
4 561 U. S. (2010), [130 S. Ct. 3218 (2010)]
5 Includes a country-by-country summary available from WIPO Standing Committee meeting documents at
http://www.wipo.int/edocs/mdocs/scp/en/scp_16/scp_16_ref_scp_15_3-annex2.pdf. See also the article entitled
Developments in German case law regarding Computer-implemented inventions and some comparison with EPO
practice by Michele Baccelli, Markus Georg Muller and Thomas B. Koch in CIPA Journal, December 2010, Volume 39,
Number 12, pp 719 to 722. It is explained how German case law in this area shares some fundamental features with that
of the EPO, i.e. requiring at least some technical elements in a claim so as to avoid exclusion, although stipulating that non-
technical features cannot contribute to inventive step.
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Patentable Subject Matter: The View from Europe119 61
1.-(1) A patent may be granted only for an invention
6
in respect of which the following
conditions are satisfied, that is to say -
(a) the invention is new;
(b) it involves an inventive step;
(c) it is capable of industrial application;
(d) the grant of a patent for it is not excluded by subsections (2)... below...
7
Sub-section 2 provides the following:
(2) It is hereby declared that the following (among other things) are not inventions for the
purposes of this Act, that is to say, anything which consists of -
(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing
business, or a program for a computer;
(d) the presentation of information….
8
This is mitigated by the limitation that
…the foregoing provision shall prevent anything from being treated as an invention for
the purposes of this Act only to the extent that a patent or application for a patent relates
to that thing as such.
9
Thus, we have a list of exclusions, which are set to cover the items that are deemed not good subject
matter for a patentable invention. However, these exclusions will only apply if the application or
patent relates to that thing as such. The meaning and interpretation of these words have contributed
to a significant body of case law over the years since the Act has been in force.
The scope of the section is quite varied and its different parts seem unconnected. Various attempts
have been made over the years to identify what, if anything, links these seemingly disparate set of
things. In CFPH L.L.C.s application, Mr Peter Prescott QC, sitting as a deputy Judge, considered
this point. He said:
When we come to look at the list of excluded items, …and if we pay careful attention, we
can notice that they are like a miscellaneous rag-bag. Except superficially, they do not
constitute what logicians call a genus, or logical class.
6 Note that this section does not include the phrase in all fields of technology. However, given the requirement of Section
130(7) that states that this section is framed so as to have the same effect as the corresponding provisions of the EPC, it is
understood to be implicit. See, for example, The CIPA Guide to The Patents Act, 6th Edition, pp 10 and 11.
7 UK Patents Act 1977, Section 1(1)
8 UK Patents Act 1977, Section 1(2)
9 UK Patents Act 1977, Section 1(2)
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62 Patentable Subject Matter: The View from Europe
He goes on to say that they were not all excluded for the same reason. Indeed, he states:
……they were excluded for policy reasons; but the policy may not be at all the same in
each case…”
10
More recently, in the Aerotel decision
11
in the Court of Appeal, Lord Justice Jacob commented in
discussing the same point that:
…there is no evident underlying purpose lying behind the provisions as a group a
purpose to guide the construction. The categories are there, but there is nothing to tell you
one way or the other whether they should be read widely or narrowly.
One cannot form an overall approach to the categories. They form a disparate group no
common, overarching concept, for example, links rules for playing games with computer
programs or either of these with methods for doing business or aesthetic creations….
12
2.2 The European Patent Convention
The Act was introduced to replace the Patents Act 1949 so as to give effect to the European Patent
Convention (EPC), under which a similar set of provisions exists. Indeed, the UK Patents Act
13
indicates that Section 1 (amongst others) is supposed to have the same effect as the corresponding
provisions of the EPC.
Article 52 of the EPC provides the following:
1) European patents shall be granted for any inventions, in all fields of technology
14
,
provided that they are new, involve an inventive step and are susceptible of industrial
application.
(2) The following in particular shall not be regarded as inventions within the meaning of
paragraph 1:
(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing
business, and programs for computers;
(d) presentations of information.
15
Sub-section 3 then mitigates this effect, just as the corresponding section of the Act does
for the exclusions outlined therein. It provides:
(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred
to therein only to the extent to which a European patent application or European patent
relates to such subject-matter or activities as such.
16
10 [2005] EWHC 1589 (Pat), paragraph 21
11 [2007] RPC 7
12 [2007] RPC 7, paragraph 9
13 UK Patents Act 1977, Section 130
14 The expression in all fields of technology was introduced to EPC2000 so as to conform to Article 27 TRIPS
Agreement
15 EPC2000, Article 52(1) and (2)
16 EPC2000, Article 52(3)
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As can be seen, save for some minor differences, the wording of the Article 52 EPC is the same as
that of Section 1(2) of the Act.
2.3 Evolution in the United Kingdom From Merrill Lynch to Aerotel
There is also a string of cases before the Court of Appeal and lower courts in the UK that have led us
to the position we are now in. Before presenting a very brief review of a selection of these, it is worth
summarising the general method that is used by the UK courts in determining whether or not an
invention relates to patentable subject matter (computer programs in particular).
The position adopted by the UK courts is based on what may be called the contribution approach.
An assessment is made by the UK courts (or more normally by an examiner at the United Kingdom
Intellectual Property Office (UKIPO) acting in accordance with Practice Notices issued to inform
users of the UKIPO practice taking into account decisions of the Courts) to determine whether or not
an invention makes a technical contribution. If it does, then it avoids the exclusions. If it does not,
then it does not and the application is refused for failing to relate to an invention. As to what exactly
is a technical contribution, more later.
The string of cases is well known and can be found described in great detail in various cases on this
subject. One particularly thorough review is the clearly presented annex to the decision in Aerotel.
17
One of the first cases in the modern era that brought this matter to prominence was the decision of
the Court of Appeal in respect of Merrill Lynch's Application (1989).
18
This decision brought into the
UK the technical contribution approach law of the EPO from Vicom,
19
discussed below. The
application related to a business method for managing stocks, implemented using a computer
program.
In Merrill Lynch's Appn, Fox LJ said:
…it cannot be permissible to patent an item excluded by s.1(2) under the guise of an
article which contains that item -- that is to say, in the case of a computer program, the
patenting of a conventional computer containing that program. Something further is
necessary. The nature of that addition is, I think, to be found in the Vicom case where it is
stated: "Decisive is what technical contribution the invention makes to the known art".
There must, I think, be some technical advance on the prior art in the form of a new
result (e.g., a substantial increase in processing speed as in Vicom)…"
20
This was then qualified with the rider, that
…a novel and non-obvious improvement to an excluded category does not count as a
technical improvement…”
In other words,
inventive excluded matter could not count as a technical contribution
21
17 [2007] RPC 7 This case is of course one of the cases that played a part in the referral to the Enlarged Board of the EPO,
G3/08 to be discussed below.
18 [1989] RPC 561
19 T0208/84 OJ EPO 1987, 14
20 As Jacob LJ says in Aerotel, Thus it was that this Court adopted the EPO's "technical contribution approach. [2007]
RPC 7, paragraph 84
21 [2007] RPC 7, paragraph 83
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64 Patentable Subject Matter: The View from Europe
So, for there to be a technical contribution as per the law of the UK, there must be some technical
contribution that does not fall within excluded subject matter. A contribution, which is merely an
advance in one of the areas of excluded subject matter, does not satisfy this test. A claim directed to
such an entity will be found bad for lack of technical contribution. This was the UKs way of
interpreting what the as such statement at the end of Section 1(2) actually means.
Two further Court of Appeal decisions have been handed down in this general subject area. The first,
Gale's Appn.
22
, related to a mathematical algorithm recorded on a Read Only Memory (ROM) chip.
The Court of Appeal decided that the invention did relate to excluded subject matter and that
…the claim is in substance a claim to a computer program, being the particular
instructions embodied in a conventional type of ROM circuitry, and those instructions do
not represent a technical process outside the computer or a solution to a technical problem
within the computer
Next, the matter arose again in the case of Fujitsu Limiteds application.
23
The patent application had
been refused by the Examiner at the United Kingdom Patent Office (as it was then called) and
appealed by the applicant to the High Court and, subsequently, to the Court of Appeal. The invention
in question was summed up by Aldous LJ as follows:
At the heart of the invention is a method for modelling a crystal structure for use in
designing inorganic materials in the fields of chemistry and physics. The basic idea
utilises a computer programmed so that the operator can select an atom, a lattice vector
and a crystal face in each of two crystal structures displayed on the display unit. Upon
instruction the computer, using the selected requirements, converts data representing the
physical layouts of the two crystal structures into data representing the physical layout of
the crystal structure that would be obtained by combining the original two structures in
such a way that the two selected structures are superposed. The resulting data is then
displayed to give a picture of the combined structure.
The judge concluded:
I believe that the application is for a computer program as such. In the present case
the combined structure is the result of the directions given by the operator and use of the
program. The computer is conventional as is the display unit. The two displays of crystal
structures are produced by the operator. The operator then provides the appropriate way
of superposition and the program does the rest. The resulting display is the combined
structure shown pictorially in a form that would in the past have been produced as a
model. The only advance is the computer program which enables the combined structure
to be portrayed quicker.
We now have the decision in Aerotel,
24
referred to above. This restates the law as it had developed to
that point and arrives at a four-point test for use by the UKIPO when examining applications in this
area. The test was suggested by Comptroller (one of the parties to the case) and accepted by the court
as a reasonable way to proceed. The test is as follows:
"(1) properly construe the claim
(2) identify the actual contribution;
22 [1991] RPC 191
23 [1997] RPC 608
24 [2007] RPC 7
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Patentable Subject Matter: The View from Europe123 65
(3) ask whether it falls solely within the excluded subject matter;
(4) check whether the actual or alleged contribution is actually technical in nature".
25
Subsequent to this, Practice Notices were issued by the UKIPO which confirmed that this is the way
such matters will be dealt with.
By and large, this is the situation in the UK today, with one or two modifications or embellishments,
but fundamentally, without change in substance. Thus, although there have been cases in the Court of
Appeal in this area since Aerotel, the basic four-point test of Aerotel stands. For example, in the recent
High Court decision of Gemstar-TV Guide International Inc and others v Virgin Media Limited,
26
Mann J said,
The proper approach is plainly the 4 stage test propounded in Aerotel
27
Furthermore, on commenting on the principle of authority he stated,
…A decision of the Enlarged Board of Appeal is apparently awaited in this area, but I
have to apply the law as it has been recently laid down in the Court of Appeal in
Symbian Ltd v Comptroller-General of Patents [2009] RPC 1, Aerotel v Telco;
Macrossan's Application [2007] RPC 7, together with the benefit of a helpful summary of
Lewison J in AT & T Knowledge Ventures Ltd [2009] EWHC 343.
Aerotel, in so far as it considered the issues before the court, was not in itself controversial. However,
in the judgement, a number of inconsistencies and apparently irreconcilable conflicts were identified
between the respective positions taken by different EPO Boards of Appeal (hereinafter the
Board(s)).
Indeed, during the time that the UK Court of Appeal had been making the decisions discussed above
based largely on the original Vicom contribution approach, the law in this area before the EPO had
developed quite significantly, as I comment in more detail below. While the EPO was able to easily
do this, given the flexibility in its systems of decision making, it must be noted that the UK, on the
other hand, is not so flexible, which may explain the seeming divergence between current UK
jurisprudence and EPO decisions and the Board opinion. In the recent Court of Appeal case of
Symbian Limiteds application,
28
this is explained by Lord Neuberger giving the judgement of the
court, as follows:
…the Court of Appeal is bound by one of its previous decisions unless that previous
decision is inconsistent with a subsequent decision of the House of Lords (in which case,
the previous decision cannot be followed), is inconsistent with an earlier Court of Appeal
decision (in which case the court may choose which previous decision to follow), or can
be shown to have been arrived at per incuriam (i.e. without reference to a relevant
statutory provision or other authority)
…Jacob LJ, giving the judgment of the court, held that this court was also free to depart
(but not bound to depart) from one of its previous decisions on a point in the field of
25 [2007] RPC 7, paragraph 40
26 [2010] RPC 10, paragraph 34. The decision has recently been upheld by the Court of Appeal (see [2011] EWCA Civ
302) although the issue of excluded subject matter did not arise on appeal since the two patents (out of the three originals)
that were the subject of the appeal were found to lack novelty and so excluded subject matter never arose.
27 [2010] RPC 10, paragraph 35
28 [2009] RPC 1
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66 Patentable Subject Matter: The View from Europe
patent law if satisfied that the Board have formed a settled view on that point, which
differs from that arrived at in that previous decision. At [48], Jacob LJ made it clear that
the right to depart from a previous decision only arose if the "jurisprudence of the EPO"
on the point at issue was "settled", and that, even where that was the case, this court was
"not bound to do so": for instance in "the unlikely event" that it thought the jurisprudence
was plainly unsatisfactory.
29
In other words, there is an acknowledgement that the decision of the (EPO) Board will have had
some influence, especially if it has a settled view, but the ultimate guidance to a judge in the UK
Patents Court (and indeed to an examiner at the UKIPO), must come from UK authority.
In conclusion, I believe that the law in the UK is thus well-established on this point thanks to a
consistent and transparent sequence of cases. The test applied is the four-point test of Aerotel that
seeks to establish whether or not a technical contribution is provided. In other words, the approach
has been and is to look at the invention, sometimes beyond the language of the claims, and decide if
the requisite technical contribution is there.
30
There are advantages and disadvantages to such an approach. Whilst clearly, underlying a claim and
its scope is the precise wording that the patentee chooses, in decisions of the High Court on matters
relating to infringement or validity, it is the language of the claims that determines the scope of
protection (interpreted as necessary). The courts in the UK generally take the view that what matters
is the language in the claims by which the patentee has chosen to define his invention, even when
with hindsight it appears that an infringers product has taken the essence of an invention as described
in a patent.
However, when it comes to determining whether or not a patent application relates to an invention,
the wording of the claims seems not always to take the highest of positions in factors considered and
ruled on by the courts. No doubt there are reasons why the difference in approach is taken. When
considering novelty and inventive step, what is being considered is the extent of the exclusion as
defined by the claims
31
that is to be respected by third parties. In contrast, whether or not something
is an invention under the Act, Section 1 is perhaps more intrinsic to its nature and, hence, the
language chosen for inclusion in the claims by the patentee is not quite of the same importance.
Invention is, after all, not defined in the Act or the EPC.
It may take a significant number of court decisions for the UK law to change so as to be consistent
with the current situation at the EPO, following changes that have taken place concurrently, as
commented below.
2.4 Evolution Before the EPO: from Vicom Onwards
Turning to the EPO now, as explained above, the 1987 Vicom decision
32
as mentioned above, is the
first significant milestone. There have been many trajectories and changes that have taken place in the
law on this area before the EPO since Vicom, but, for the purposes of this paper, I will concentrate on
the main issue, which is the creation and adoption of, followed by the departure from, the
29 [2009] RPC 1, paragraph 33
30 See for example, in Fujitsus Application, where Aldous LJ, on commenting on Fox LJs judgement in Merril Lynchs
Application states By that statement Fox LJ was making it clear that it was not sufficient to look at the words of the
claimed monopoly. The decision as to what was patentable depended upon substance not form….
31 UK Patent Act 1977, Section 2 in combination with Section 125(1)
32 T208/84 OJ EPO 1987
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Patentable Subject Matter: The View from Europe125 67
contribution approach and the subsequent apparent conflict with the law in the UK. This conflict
contributed to the recent referral to the Enlarged Board.
2.4.1 Vicom The Contribution Approach
In Vicom, the invention in question related to a method of digital image processing using operator
matrices for convolving with a data array representing an image.
The Board concluded that:
…Generally speaking, an invention which would be patentable in accordance with
conventional patentability criteria should not be excluded from protection by the mere fact
that for its implementation modern technical means in the form of a computer program
are used. Decisive is what technical contribution the invention as defined in the claim
when considered as a whole makes to the known art….
The contribution approach was thus established, and it was followed in many cases, including, for
example, T 121/85 and T 38/86. In deciding if a claim is directed to excluded subject matter or not
(does it escape the as such clause) before the EPO, a determination is required as to the technical
contribution made to the known art.
2.4.2 The Demise of the Contribution Approach
The contribution approach lasted for some time before being rejected. A fundamental objection to it
can be summarised as that if one has to consider a contribution when deciding if a claim relates to
excluded subject matter, then you are in the realm of comparing the invention to the prior art (a
contribution must be made to something); in other words, an area that should be reserved for
considerations of novelty and inventive step.
A number of cases from approximately 1998 onwards (e.g. IBM
33
, Pension Benefits
34
) departed from
the contribution approach to varying extents, which have, more or less, brought us to the current
position before the EPO. In summary, this position is that any hardware will be enough to overcome
the low threshold for patentable subject matter, but that inventive step can only come from the
technical features of a claim. If then the claim is essentially, for example, software that when run on a
computer controls the computer to do business a new way, although the use of a computer and the
internet will get you over the hurdle of patentable subject matter, the fact that there is nothing
technically new and inventive means that the claim will fail for lack of inventive step.
Drawing again on the summary of case law provided in Aerotel, Jacob LJ explains how for some time
the EPO had been happily applying the contribution approach
…But then the EPO took a different course or courses, a course or courses relied upon
by both appellants here. A trilogy of cases of particular importance fall for discussion,
Pension Benefits (2000), Hitachi/Auction method (2004)
35
and Microsoft/Data Transfer
(2006).
36
They represent the most important of the latest decisions of the Boards in this
field….
33 T1173/97
34 T931/95
35 T258/03
36 T424/03
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68 Patentable Subject Matter: The View from Europe
In Pension Benefits, the Board indicated that the mere presence of technical means in an apparatus
claim is enough to remove it from the exclusion from patentability. In Hitachi/Auction Method, this
was also extended to cover method claims that refer to some technical means.
In Microsoft Data Transfer, considering the difference between different formulations of computer
related claims, the Board indicated that:
…the Board holds that the claim category of a computer-implemented method is
distinguished from that of a computer program. Even though a method, in particular a
method of operating a computer, may be put into practice with the help of a computer
program, a claim relating to such a method does not claim a computer program in the
category of a computer program…”
In view of the differences between some of these decisions, a referral was made by the President of
the EPO to the Enlarged Board, discussed below. However, before discussing in detail the decision
G3/08, the 1997 IBM decision is worthy of mention, since it gave us an important tool used by the
EPO today in assessing such cases. In this decision, the determination was made that a computer
program is not excluded subject matter if it is capable of providing a further technical effect, when
run on a computer, over and above the normal interaction of the program with the computer.
The Board stated,
…It is thus necessary to look elsewhere for technical character in the above sense: It
could be found in the further effects deriving from the execution (by the hardware) of the
instructions given by the computer program. Where said further effects have a technical
character or where they cause the software to solve a technical problem, an invention
which brings about such an effect may be considered an invention, which can, in
principle, be the subject-matter of a patent.
The Board went on to indicate that
The Board takes this opportunity to point out that, for the purpose of determining the
extent of the exclusion under Article 52(2) and (3) EPC, the said "further" technical effect
may, in its opinion, be known in the prior art. Determining the technical contribution an
invention achieves with respect to the prior art is therefore more appropriate for the
purpose of examining novelty and inventive step than for deciding on possible exclusion
under Article 52(2) and (3).
The contribution approach, which was introduced so easily in Vicom, was dispatched with similar
verbal flourish.
Referring briefly now back to Aerotel, Jacob LJ produced a detailed analysis of the case law and
statute and demonstrated how it is clear that there are decisions taken by Boards that are different
and that in the interests of clarifying these matters, which relate to a highly commercially significant
area, the EPOs highest authority, the Enlarged Board, should step in to clear the air.
3. The EPO Today: Opinion G3/08 of the Enlarged Board of Appeal and Some Current Cases
There has been historical disagreement between the judges of some member countries (e.g. the UK)
and the EPO Boards. As mentioned above, this has been mentioned in various decisions of the
respective courts in different countries. Jacob LJ in the Aerotel judgement acknowledges that there is
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Patentable Subject Matter: The View from Europe127 69
no means for a referral to be made to the Enlarged Board via a decision of a court of a member state
(no matter how high). However, there is a clear indication that, in the view of the court, the approach
followed by the EPO is not correct.
On the other side, in a subsequent EPO decision, Duns Licensing Associates
37
, as well as dealing with
the appeal in question, a response was made to Jacob LJs suggestions in Aerotel. The Board says:
the "technical effect approach" endorsed by Lord Justice Jacob in the
Aerotel/Macrossan judgement (see paragraphs Nos. 26(2) and 38) …is not
consistent with a good-faith interpretation of the European Patent Convention
in accordance with Article 31 of the Vienna Convention on the Law of Treaties
of 1969.
38
It appears that the Board was responding to the suggestion of Jacob LJ in Aerotel that the matter be
referred to the Enlarged Board.
This exchange was summarised by Neuberger LJ in Symbian
39
as follows:
…This Court in Aerotel (e.g. in [24] and [25]) suggested that it might be
adopting a somewhat different approach from that taken by the Board in some of
its decisions. Similarly in Duns (e.g. in [12 and 13]) the Board indicated that it
was taking a different approach from that adopted by the Court of Appeal.
Indeed, each tribunal was rather deprecatory about the approach of the other
see, for instance, [25] of Aerotel (where the approach of the Board in
different applications was described as "mutually contradictory") and [12]
of Duns (where it was suggested that the approach adopted in Aerotel was "not
consistent with a good-faith interpretation of the [EPC]")….
Eventually, a referral
40
was made and Opinion G3/08 of the Enlarged Board was issued on 12th May
2010.
3.1The Structure of the EPO
A few preliminaries about the structure of the EPO will be helpful before going into the specific
details of this Opinion. The EPO has a number of sections and divisions that are charged under
authority of the EPC itself to execute certain tasks.
41
These include the receiving section,
42
the search
divisions
43
and the examining divisions
44,
which are all responsible for the stages in the processing of
a European application (as their names would suggest) from filing to grant.
On top of this, a judicial body of the EPO is made up of its Boards