Case: G 3/08, Programs for computers
The referral of the President to the Enlarged Board of Appeal was dismissed as inadmissible because there was no conflicting case law found. In this decision, the Board interpreted the notion "different decisions" in Art. 112(1)(b) EPC to mean "conflicting decisions". When there are no conflicting decisions, the Board does not have the capacity to make a decision. Moreover, legal development by itself cannot form the basis for a referral, only because case law in new legal or technical fields does not always develop in a linear fashion and earlier approaches may be abandoned or modified. So, the object and purpose of Art. 112(1)(b) EPC is to have an Enlarged Board decision re-establish legal uniformity when it has clearly been disrupted, not to intervene in legal development. Note that obiter dicta may be taken into account when determining whether two decisions are conflicting.
Even though the case was inadmissible, the decision strongly confirms the existing case law regarding programs for computers by pointing out that there hardly are any conflicing decisions. The Board only identified one potential point of conflict, namely a difference between positions taken in
T 1173/97 ("With regard to the exclusions under Art. 52(2),(3) EPC, it does not make any difference whether a computer program is claimed by itself or as a record on a carrier") and
T 424/03 ("the subject-matter of claim 5 has technical character since it relates to a computer-readable medium, i.e. a technical product involving a carrier").
However, according to the Board, this difference was a legitimate development of the case law. Moreover, the earlier decision T 1173/97 was not followed in any subsequent case law on this point, whereas T 424/03 has not been challenged in any later decision.
The Board summarized the present position of the case law as follows. A claim in the area of computer programs can avoid exclusion under Art. 52(2)(c),(3) EPC merely by explicitly mentioning the use of a computer or a computer-readable storage medium. However, if a claim to program X falls under the exclusion of these provisions, a claim which specifies no more than "Program X on a computer-readable storage medium" or "A method of operating a computer according to program X" will always still fail to be patentable for lack of an inventive step under Art. 52(1) and Art. 56 EPC. Merely the article applied is different.
Most importantly in this decision, the Board has confirmed that features which are by themselves excluded subject-matter do not contribute to inventive step. The decision points to T 154/04 for a summary of the system for delimiting the innovations for which a patent may be granted. The Board further notes that they are not aware of any divergence in this case law.
The decision further elaborates on the difference in scope between a computer program and a computer-implemented method. In short, there is a logical distinction between a method carried out by a computer and the sequential list of instructions which specify that method.