The Enlarged Board clarifies position on computer implemented inventions

On 12 May 2010, the EPO Enlarged Board of Appeal (EBoA) announced its decision in G3/08, thereby providing guidance on how the EPO should assess claims relating to computer implemented inventions (CIIs).

Background
Under the EPC, a “computer program” is not patentable subject-matter[1], but this exclusion only applies to the extent that the claimed subject-matter relates to a computer program “as such”[2]. Over the years, the EPO Boards of Appeal (BoA) have issued a series of decisions concerning how far this exclusion goes and specifying the conditions for assessing whether or not a claimed CII relates to patentable subject-matter. However, the former President of the EPO, Alison Brimelow, perceived a divergence in this case law, with different BoA decisions appearing to specify conflicting assessment conditions. Consequently, the President referred a series of questions to the EBoA[3] to address this perceived divergence and to clarify when a CII is or is not patentable subject-matter.

Decision
The EBoA did not answer the questions that the President had referred and decided, instead, that the President’s referral was itself inadmissible. The President may only refer a question to the EBoA under limited circumstances[4], one of which requires there to have been divergence of BoA decisions. The EBoA held that there had not been any divergence in the BoA decisions cited by the President – any perceived divergence is simply the natural development of EPO jurisprudence regarding the patentability of CIIs. Therefore, this EBoA decision does not change how the EPO assesses the patentability of CIIs.

The EBoA’s analysis to determine that there has not been a divergence of case law provides clarity (if more were actually needed) on the patentability of CIIs, in particular:

• A computer program that, when run on a computer, brings about a “technical effect” beyond the “normal” physical interactions between the program and the computer is not considered subject-matter excluded from patentability. The concept of a “sufficient technical effect” may be seen as “shades of grey”. At one extreme, a computer program to process X-ray images to improve their clarity should not be excluded from patentability due to the technical effect of these improved results; at the other extreme, a computer program to calculate pension contributions is
    likely to be viewed as lacking the necessary technical effect. Your usual patent advisor at Boult Wade Tennant can advise you on this on a case-by-case basis.
• A method of operating a computer can never be considered subject-matter excluded from patentability, nor can an apparatus (e.g. a computer loaded with a program) or a computer-readable medium storing a computer program.
• In particular, a claim to a CII can avoid being considered as excluded subject-matter merely by explicitly mentioning the use of a computer or a computer-readable storage medium.  

Whilst the above conditions mean that objections that a claim relates to a computer program “as such” should continue to be rare and easily overcome, applicants should be mindful of the EPO’s approach to assessing inventive step. This decision reiterates the current position that, if program X were to be considered non-patentable subject-matter (by virtue of not bringing about enough of a further technical effect as outlined above), then a claim to "Program X on a computer-readable storage medium" or "A method of operating a computer according to program X" will lack an inventive step – i.e. the mere recitation of a computer or a storage medium may be sufficient to avoid excluded subject-matter objections, but will not be sufficient to avoid inventive step objections. 

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[1] Articles 52(1) EPC and 52(2)(c) EPC
[2] Article 52(3) EPC
[3] http://www.boult.com/news/BulletinDetails.cfm?BulletinID=209
[4] Article 112(1)(b) EPC

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