Referral on the patentability of programs for computers - FAQ
Questions
- What is a referral?
- Why can the President of the EPO make such a referral?
- What is the role of the Enlarged Board of Appeal? Who are the members, and who nominates them?
- Could the Enlarged Board of Appeal refuse to treat the referral?
- Are opinions of the Enlarged Board of Appeal binding?
- What is the intention behind this referral, and why now?
- Is this referral being made following external requests, e.g. from member states?
- Could the referral lead to a fundamental change in the EPO patenting practice, e.g. abandoning the current practice?
- How and where can the outcome of this referral be challenged?
Answers
What is a referral?
A referral is simply one or more questions concerning a point of law, which are to be answered by the Enlarged Board of Appeal (EBoA). The questions can either come from a board of appeal or from the President of the EPO. In the case of a referral by a board of appeal, the EBoA issues a decision. In the case of a referral by the President, the EBoA issues an opinion.
Why can the President of the EPO make such a referral?
The President of the EPO is empowered by Art. 112(1)(b) of the European Patent Convention (EPC) to refer a point of law to the EBoA. A referral is made in order to ensure uniform application of the law or if a point of law of fundamental importance arises. A prerequisite is that two boards of appeal have given different (i.e. conflicting) decisions on that point of law.
Top of pageWhat is the role of the Enlarged Board of Appeal? Who are the members, and who nominates them?
According to Art. 22 EPC, the Enlarged Board of Appeal (EBoA) is responsible for deciding or giving opinions on points of law referred to it by a board of appeal or the President. The purpose of such a referral is to ensure uniform application of the law or if a point of law of fundamental importance arises, rather than ruling on abstract points of law. For these cases the EBoA consists of five legally and two technically qualified members. The Chairman of the EBoA is the Vice-President of Directorate General 3 (Appeals - DG3); for each individual case he will designate the composition of the EBoA in accordance with the Board's business distribution scheme. The members are independent and are not bound by any instructions (Art. 23 EPC).
In case G3/08, the technically qualified members of the EBoA were: Dai Rees (GB, Chairman, EPO Board of Appeal 3.5.05) and André Klein (FR, Chairman, EPO Board of Appeal 3.4.02). Other than the Chairman, the legally qualified members were: Martin Vogel (DE, Member, EPO Board of Appeal 3.1.01), Michael Dorn (DK, Judge, High Court of Eastern Denmark), Uwe Scharen (DE, Presiding Judge of the 10th Senate, Bundesgerichthof) and Jean-Pierre Seitz (FR, Member, EPO Board of Appeal 3.1.01).
Top of pageCould the Enlarged Board of Appeal refuse to treat the referral?
It cannot simply refuse to treat the referral. However, it could decide that the referral is inadmissible, if, for example, it considers that the requirements set out in Art. 112(1) EPC have not been met. This provision requires that two boards of appeal have given different (i.e. conflicting) decisions on a point of law of fundamental importance, whereby the ‘two boards’ requirement is also met when a single board in different compositions issues conflicting decisions.
Top of pageAre opinions of the Enlarged Board of Appeal binding?
Contrary to a common law legal system, under the EPC decisions from appeals have a very limited binding effect. Decisions on questions put to the EBoA by a board of appeal are only binding on that board for the specific appeal in question.
The decision or opinion of the EBoA does however de facto bind every board of appeal: under Article 21 of the Rules of Procedure of the Boards of Appeal (OJ EPO 2007/11, 536), if a board wants to deviate from a decision or opinion of the EBoA it has to refer the matter once more to the EBoA. In practice the examining divisions of the EPO will also follow the decisions and opinions of the EBoA.
National patent offices and courts are not bound by the interpretation of the EPC given by the EBoA. However, various references from national judgements indicate that they regard the EBoA as an important authority for guidance on how the EPC is to be interpreted.
Top of pageWhat is the intention behind this referral, and why now?
At present there is a degree of uncertainty and controversy when it comes to assessing the patentability of applications which relate, to a lesser or greater extent, to programs for computers. It is hoped that an opinion from the EBoA will give guidance that provides clarity and legal certainty for examiners, applicants and the wider public.
Top of pageIs this referral being made following external requests, e.g. from member states?
While there have been requests from national courts and applicants (most notably from the England and Wales Court of Appeal in the Aerotel/Macrossan judgement), this has not influenced the decision to refer. Differences in practice between the EPO and national courts do not provide a proper legal basis for a referral (for details see G3/08, Reasons 7.2.2 and 7.2.7). The case law of the boards of appeal is continually monitored in all fields and, where necessary, the option of referring a matter to the EBoA is investigated.
Top of pageCould the referral lead to a fundamental change in the EPO patenting practice, e.g. abandoning the current practice?
The EBoA's opinion cannot change the EPC, which requires that computer programs as such are excluded from patentability (Art. 52(2)(c) and (3) EPC). Guidance is sought on how some of the finer aspects of this exclusion are to be applied by examining divisions and boards of appeal.
Top of pageHow and where can the outcome of this referral be challenged?
There is no mechanism to challenge an opinion of the EBoA as it constitutes the highest instance of the EPO. According to the Rules of Procedure of the Boards of Appeal (RPBA), if a board of appeal considers it necessary to deviate from the opinion of the EBoA, it shall refer the matter back to the EBoA (Art. 21 RPBA).
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