ENLARGED BOARD OF APPEAL REJECTS “BRIMELOW REFERRAL“ (G3/08) AS INADMISSIBLE

30 mai 2010

In an opinion published on May 12, 2010 the Enlarged Board of Appeal rejected a referral of the President of the EPO, Alison Brimelow, consisting of four legal questions relating to the patentability of computer-implemented inventions as inadmissible and confirmed the established case law and practice of the EPO.

The referral:

Under the European Patent Convention (EPC) the President of the EPO has the right to refer a point of law to the Enlarged Board of Appeal – the highest instance forum for questions relating to the EPC - for decision in order to ensure uniform application of the law. In October 2008 Alison Brimelow took advantage of this right and formulated four legal questions pointing to alleged divergences between different decisions of the Technical Boards of Appeal on the application of Art. 52 (2), (3) EPC excluding “computer programs as such” from patentability seeking clarification from the Enlarged Board of Appeal

The opinion:

After carefully analyzing the allegedly diverging decisions cited in the referral, the Enlarged Board did not find divergences significant enough to justify a decision of the Enlarged Board of Appeal to ensure uniform application of the law. Rather, the opinion recognized a mere legal development of the case law necessary and desirable in every legal system. The Board very clearly pointed out that “it does not rule on abstract points of law” and that such referral is not admissible “because consistent Board rulings are called into question by a vocal lobby”. The opinion expressly confirmed the case law developed by the Technical Boards of Appeal on patent protection of computer-implemented inventions over the past 20 years.

Consequences for the applicant:

The opinion of the Enlarged Board of Appeal clearly confirms the established case law and practice of the EPO. In this respect, the clarification intended by the referral has actually been attained. This practice can shortly be summarized as follows: Inventions qualify as patentable subject-matter if they solve a technical problem with technical means. There is, however, no comprehensive definition of the term “technical”. But the technical problem may be in the field of software itself and need not lie outside the computer. Inventions which do not solve a technical problem as e.g. pure business methods are not patentable under the EPC.