On May 12, 2010, the Enlarged Board of Appeal issued an opinion under case number G3/08 relating to the patentability of computer implemented inventions.
As known, according to the European Patent Convention, programs for computer cannot be regarded as patentable subject matter, to the extent to which a European patent application relates to a computer program “as such”.

The proliferation of software and computer based products has forced the EPO to introduce more detailed guidelines for assisting examiners, applicants and attorneys in the filing and prosecution of an ever increasing number of computer related applications. The EPO has also issued a number of decisions addressing the patentatibility of computer programs and computer implemented inventions, in which it has been clarified that computer programs are patentable as far as they provide a technical contribution over the prior art. According to the case law of the Boards of Appeal of the EPO, a technical contribution should indicate “a further technical effect that goes beyond the normal physical interaction between the program and the computer”.

However, the decisions of the EPO concerning software and computer implemented inventions seemed to show some inconsistencies.

For this reason, on October 22, 2008, the President of the EPO referred a point of law to the Enlarged Board of Appeal. The referral, which was pending under case number G3/08, “concerns the application of the exclusion of computer programs as such”, which “is fundamental importance as it defines the limits of patentability in the field of computing”.

After having reviewed the matter, the Enlarged Board of Appeal concluded on May 12 that “the referral of 22 October 2008 of point of law to the Enlarged Board of Appeal by the President of the EPO is inadmissible under Article 112(1)(b)EPC”. The text of the opinion includes a discussion on the case law mentioned in the referral, focusing on the close relationship between patentability of software and inventive step and to the meaning of the terms used in the decisions cited in the referral. In general, the Enlarged Board of Appeal has found each of the questions raised in the referral to be inadmissible as based on incorrect understanding of the case law mentioned in the referral.

In conclusion, applications concerning computer programs or computer implemented inventions will continue to be treated on a case by case approach, considering the technical character of each potential invention and following the same approach that the EPO has put into practice in recent years.

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