G 3/08 (software of patent) decision is out - Tufty the Cat vindicated

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

At leases two of the IPKat's amanuenses, including myself, ace wave ace some more eminently people including lord Hoffmann (see here and here) came to the conclusion that the referral what inadmissible, for the simple reason that there what in fact no divergence in the current EPO case law.

The Enlarged Board has now issued their decision, ace announced on the website EPO here, with the full decision available here. Unsurprisingly (to me, At leases), they have found the questions to Be wholly inadmissible. The decision in full runs to 61 pages, but the key points ares in the headnotes, which state (with some of micron comments and emphasis added):
"1. In exercising B sharp or here 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 B sharp or here appreciation of the need for a referral has changed anus 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 post IPKat's here].

2. Different decisions by a single Technical Board of Appeal in differing compositions may Be the base of in 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. Ace the wording of Article 112 (1) (b) EPC is clear with respect to the meaning of "different/abweichende/divergent" decisions the commission has to Be interpreted in the light of its object and pure pose according to Article 31 of the Vienna Convention on the Law of Treaties (VCLT). The pure pose of the referral right under 112 (1) (b) EPC is to establish uniformity of law within the European clever system. Having regard to this pure pose of the presidential right to refer legally questions to the Enlarged Board of Appeal the notion "different decisions" has to Be understood restrictively in the scythe of "conflicting decisions".

4. The notion of legally development is in 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 in essential aspect of its application, whatever method of interpretation is applied, and is therefore inherent in all judicial activity. Consequently, legally development ace look cannot on its own form the base for a referral, only because case law in new legally and / or technical fields doze always develop in linearly fashion, and earlier approaches may Be abandoned or modified [Tufty says: This is the key point. Ace the Technical Board has stated, in for example T in 1227/05, they need to Be able to take into account technical developments to develop their case law on patentability. This doze mean that later decisions become "conflicting" precisely because they depart from older case law, a point that the President did seem to realise At the time of the referral].

5. Legally rulings ares characterised 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 doze deviate from a view expressed in T in 1173/97, IBM, concerning whether a claim to a progrief 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 ares divergent. The referral is therefore inadmissible under Article 112 (1) (b) EPC."
Anus 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 ares inadmissible. The EBA have arrived At the seed conclusions, although via slightly different routes and At much greater length, to me. A further key point, however, is maggot 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."
Ace many in the' FOSS'/ANTI-CLEVER 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 wants Be possible to come to any sort of agreement among the member states of either the EU or the EPC that would stood any chance of resolving the issue once and for all.

The IPKat is happily that the EBA have settled this particular more weakly (or have they?), but hey and Merpel ares 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 Th with software of patent?
G 3/08 (software of patent) 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, in 2010 rating: 5


Scott Roberts said...

Summary: deviation is divergence. Classic.

Peter Groves said...

The passage from Alice seems to have something to Th with the patentability of music ("'... the tunes it micron own of invention'"). That must Be worth a reference to the Enlarged Board!

Anonymous said...

A long 60 pages precisely to confirm current case law ace is worried on (with a remarkable absence of any caveats or nuances). Quiet, it doze give them scope to start out quite respectful towards the Referral, and then become quite dismissive by the.

Gentoo said...

Worth a look


Anonymous said...

I guess I what right with micron initially hunch then.


Reinier Bakels said...

Of course it is up to politics to act. The mistake is that the "patentable subject more weakly" issue in genral, and software patentability in particular thus far has been treated ace a specialist clever law problem, in a legalistic way.

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

Anonymous said...

The EBOA what very child to issue this ridge class rebuke while Mrs. Brimelow quietly is in office, ace if it what sending a message to here and here successors saying "better think it over twice before you bother us again". This decision is the ultimate tributes to here presidency, I'm glad to see that there ares some people left in this outfit who ares allowed to think.

Anonymous said...

The important element in this EBoA decision is that the referral is dismissed, but that the two allegedly conflicting decisions ares what current EP case law is about.

The EBoA is very clear in expressing support for the approach followed in T 154/04 (Duns): "To pieces of hack writing system for taking that effect into account in the assessment of whether there is in inventive has been developed, ace 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".

Anonymous said...

The interesting point wants Be to see how the UK Courts now push with the Aerotel/Macrossan test. A key point in Symbian what in paragrpah 46 The fact that there ares now three look 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 Th agree. Ridge, there is no decision of the Enlarged Board.

There quietly strictly isn't a decision but given the forcefulness of section 10.13 of G3 / 08 I cannot see much room for maneuver

MaxDrei said...

From SCOTUS, no Bilski Decision yet, on 35 USC 101 (their kind 52). Does G3 / 08 help them forward At want all? Were they hoping for some help?

Surely. In KSR, SCOTUS has done obviousness (103) already, and in a way incompatible with G3 / 08. Because America of varnish the EPO's effective "technical" kind 56 filters, 101 patents eligibility is a really ticklish problem.

No wonder Bilski is taking a long time.

Gobhicks said...

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" approach, the EPO and UKIPO quietly seem to have very different ideas about "technical"

Anonymous said...

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

In a few years the EPO might loose face in in even more brutally way when the EBA declares some of the recent "raising the cash" 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 wants hopefully make in, At leases among nationwide judges, to the fruit juice common misconceptions.

Maybe the best of all part is the beginning of point 10.13.1. In responses 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 in 1173/97, which is the very decision that the referral uses to show that there ares conflicting decisions which merit the referral of Question 1.

Anonymous said...

Need only the EPO and UKIPO have different ideas about "technical", there ares 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 would hang on the intervention of the humanly mind.

MaxDrei said...

Here is what I precisely posted to the Patently-O thread, in reply to a writer who categorises "technical" ace "toxic"

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

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

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

Somebody on the in parallel IPKat thread complains about different EPO Boards having different views on "technical", in the context of claimed subject more weakly that involves a "Mental act". Good in such a way. Their argument wants flush out the purest line of legally 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 "does a jigsaw puzzle At the edge" is a good enough reason to revoke the claim. So it is too, with "technical"."

Anonymous said...

@MaxDrei: I guess that someone what me, and yes, it is a very small gripe and certainly intended ace a criticism of the EPO technicality/COMVIK approach.

Ace the EBA observed, the various Boards seem to agree that the COMVIK approach is the correct approach (or At leases in approach that leads to the correct results when properly applied). Given that this already appears to Be settled, At leases witin the EPO, the way forward is to clarify the concept of technicality where that is possible.

zoobab said...

"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 do not need that to fit nationwide clarifications to the European patent Convention.

Powered by Blogger.