Non-obviousness remains the ultimate obstacle

01 July 2010

As reported in Managing IP, the EPO Enlarged Board has rejected the president's software patent referral in opinion G 3/08 of May 12 2010, because the case law recited in the referral is not diverging. In order to arrive at this conclusion, the Enlarged Board provides a comprehensive analysis of EPO case law in relation to the questions raised in the referral.

In point 10.13.2 of the Reasons of G 3/08, the Enlarged Board makes the comment that it is "somewhat surprising" that the president's referral does not address any question as to the validity of previous case law's way of judging inventive step. The Enlarged Board nevertheless concludes that the current practice of assessing inventive step provides a "practicable system for delimiting the innovations for which a patent may be granted".

In view of the conclusions of G 3/08, the ultimate hurdle with regard to the patentability of computer-implemented inventions remains that of inventive step, given that the patentability exemptions of Articles 52(2)(c) and 52(3) EPC can usually be overcome by appropriate claim drafting and that novelty can be established even by non-technical features.

In respect of inventive step, G 3/08 refers in particular to decision T 154/04, which is said to summarise current practice. In essence, this decision confirms previous case law that stipulates that, even though an aim to be achieved in a non-technical field is allowed to appear in the formulation of the problem underlying the invention, the problem itself must be a technical problem. Indeed, only technical features and aspects of the claimed invention are taken into account for the assessment of inventive step, that is the innovation must be on the technical side, not in a non-patentable field if non-obviousness is to be successfully proved.

It remains to define the term technical. The case law provides no such definition and in G 3/08 the Enlarged Board even explicitly refrains from attempting to provide a definition (points 9.2 and 13.5.1 of the Reasons). Applicants filing patent applications for semi-technical software innovations relating to, for example, financial systems or graphical user interfaces may hence still hope for the case law to develop towards a broad interpretation of the term technical.