An unexpected, good result: after more than a year and a half of review (referral G3/08), the EPO’s Enlarged Board of Appeal has declared that the four questions posed were all inadmissible. The patent office is thus does not have the power to decide for itself whether or not software should be patentable.

Table of contents

  1. Reader’s guide
  2. Outcome
  3. Other highlights
  4. EPO’s spin
  5. Info on

Reader’s guide

What’s in the 99 page opinion:

  • Pages 1-23: reasons for the referal, written Oct 23rd 2008
  • Pages 24-28: the questions of the referal, Nov 11th 2008
  • Pages 29-39: partiality review declares self impartial, Oct 16th 2009
  • Pages 40-99: this is the opinion, conclusion on page 99


Page 49 says that in order for a referral to be admissible under Article 112(1)(b) EPC, the questions have to either be:

they need to be answered in order to ensure uniform application of the law or they concern points of law of fundamental importance


two Boards of Appeal have given different decisions on the questions referred.

With this starting point, the review focusses exclusively on finding inconsistencies. It finds none. Case closed as inadmissible.

  • p83: “Question 1 is therefore not admissible.”
  • p92: “Thus no divergence in the case law supporting this question [2] has been identified by the referral and the question [2] is therefore not admissible.”
  • p94: “This question [3] is therefore also inadmissible.”
  • p96: “Hence the question [4] does not satisfy the requirement for a divergence in the case law and is therefore inadmissible”
  • p99: conclusion: “The referral of 22 October 2008 of points of law to the Enlarged Board of Appeal by the President of the EPO is inadmissible under Article 112(1)(b) EPC.”

Other highlights

The document is quite readable and provides some concise summaries as well as pointers to key decisions. A very good starting point for anyone who wants to get into the details. Here are some interesting sections:

A uniform understanding of where to draw the dividing line between applications relating to programs for computers as such, which are excluded from patentability under Articles 52(2)(c) and (3) EPC, and applications relating to patentable technical solutions, in the form of CIIs, still cannot be assumed despite considerable convergence in recent court rulings.

EPO spin

So it’s null and void. Useless. Nothing will happen as a result. Spun slightly, you could say the EBoA has not recommended any changes. That would be true, if disingenuous. But the EPO’s spin is jaw dropping: EBoA confirms EPO approach to computer programs.

Info on

Categories: Case Law


Sami Liedes · 13 May 2010 at 3:38 am

I’m not sure what’s good about this. Besides, I think the assertion that the decision means “The patent office is thus does not have the power to decide for itself whether or not software should be patentable” is just false. The EBA explicitly determined that the individual (not Enlarged) Boards of Appeal have the final power to make such decisions, until they conflict each other, and then the EBA has jurisdiction.

I wrote more on this here.

    Ciaran · 13 May 2010 at 10:12 am

    In summary, the EBoA said that the EPO has been consistent – but they didn’t say if the EPO was consistently wrong or consistently right.

    In Europe, no one really knows who’s supposed to be in charge of patent law. If the EBoA said, confidently “It’s us, we’re staffed by competent judges from European countries, we conclude that software should be patentable” – then other institutions (like the European Parliament) would be likely to accept that. On the contrary, the EBoA said:

    “…a presidential referral is not admissible merely because the European Parliament and Council have failed to adopt a directive on CII patenting … When judiciary-driven legal development meets its limits, it is time for the legislator to take over.”

    That’s what we want. We want the law to be set by the European Parliament, not by the EPO.

      simon · 13 May 2010 at 11:55 am

      “We want the law to be set by the European Parliament, not by the EPO.”

      Strictly speaking, this is not possible. The patent law is defined in the European Patent Convention (EPC), which is a completely separate treaty from the EU (and so not subject to the EU Parliament).

      The EPC can be (and has been) amended by the national governments of the member states (which include some states that are not EU members, such as Turkey).

      The EPO cannot “set” the law, but it does have to interpret and then apply the law. The outcome of this decision is that there will be no change in how the EPO interprets and applies the law.

        Ciaran · 13 May 2010 at 1:08 pm

        If it’s not possible for the EU to set patent law, what do you call the software patents directive that got rejected in 2005?

          simon · 13 May 2010 at 7:48 pm

          I guess it depends which law you are talking about.

          The EU Parliament (and the Directive) can change national law in the member states. However, it cannot make a legally binding change on the EPO (although it would certainly be influential).

          In contrast, the EBA decision can change at least the EPO interpretation of the law, but cannot make any legally binding change on national law (although again it would certainly be influential).

          So in a strict legal sense it is incorrect to see the EU Parliament and the EBA as alternatives because they are legislating (or having legal effect) over different domains.

          However, it is true that they might still be seen as alternative routes for implementing policy, given that there would probably be a significant overlap in practical outcome.

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