Software Patents Under The European Patent Convention - Referral To The Enlarged Board of Appeal

Referral To The Enlarged Board of Appeal

Under Article 112(1)(b) EPC, the President of the EPO has the power to refer a point of law to an Enlarged Board where two Boards of Appeal have given different decisions on that question.

On 27 October 2006, in its judgment in Aerotel v Telco and Macrossan's Application, the Court of Appeal of England and Wales said (at para. 25) that "The decisions of the EPO Boards of Appeal are mutually contradictory" and (also at para. 25) that "surely the time has come for matters to be clarified by an Enlarged Board of Appeal". And even though the English Court of Appeal went on to say (at para. 25) that it "is formally no business of ours to define questions to be asked of an Enlarged Board of Appeal", it went on to suggest (at para. 76) questions which it thought that the President of the EPO may refer to an EPO Enlarged Board of Appeal.

In response, Alain Pompidou, then president of the EPO, is reported to have said that the EPO was very interested in developments in the case law of national courts and that he had "taken note of the UK decision, but a decision on whether or not it would be opportune to follow the suggestions for a referral has not yet been taken." Subsequently, however, it appears that Alain Pompidou has written a letter dated 22 February 2007 to Lord Justice Jacob of the Court of Appeal of England and Wales (with a copy to the United Kingdom Patent Office) advising that he has "decided that at the moment there is an insufficient legal basis for a referral under Article 112(1)(b)", and that "the appropriate moment for a referral would be where the approach taken by one Board of Appeal would lead to the grant of a patent whereas the approach taken by another Board would not".

Subsequently, the Board in decision T 154/04 refused to refer questions "explicitly taken from the questions proposed for referral to the Enlarged Board of Appeal in the "Aerotel/Macrossan" judgement" to the Enlarged Board of Appeal.

Eventually, on October 22, 2008, the current President of the EPO, Alison Brimelow, referred a point of law to the Enlarged Board of Appeal. The questions which were the subject of the referral related to the patentability of programs for computers under the European Patent Convention (EPC) and were, according to the President of the EPO, of fundamental importance as they related to the definition of "the limits of patentability in the field of computing." The referral had been quoted as relating to the "deeply contentious question about how to assess the patentability of software-related inventions". In May 2010 however, the Enlarged Board of Appeal considered the referral to be inadmissible because, in their opinion, no divergent decisions had been identified in the referral.