EPO Enlarged Board clarifies presidential right

The European Patent Organisation president may only make a referral to the Enlarged Board of Appeal (EBoA) if decisions by two appeal boards show a clear divergence in law, the Enlarged Board has clarified.

Four questions concerning the patentability of computer-implemented inventions, which were referred by EPO President Alison Brimelow in 2008, have been deemed inadmissible.

An article of the European Patent Convention is the basis for finding the referral inadmissible. It only allows a referral of a point of law to be made to the EBoA by the EPO president if two appeal boards—directly below the EBoA—have given different decisions.

Jan-Malte Schley, an associate at Fish & Richardson PC in Munich, said: “The meaning of ‘different’ is decisive. Constructing the meaning of different has to be about a clear divergence. In case law, there is the usual development over a period of years. The fact that there are two decisions that are not identical within their reasoning or their outcome is insufficient. There needs to be a kind of definable divergence in law.”

To push home its point, the EBoA, made up of high-ranking members of other appeal boards and national courts, said in its decision: “The object and purpose of the article is to have an [EBoA] decision re-establish legal uniformity when it has clearly been disrupted, not to intervene in legal development.”

While noticeable legal developments have occurred in the computer-implemented invention field, said Schley, the EBoA has found no decisions to be contradicting or diverging.

“The EBoA cannot take a question that is hinting at developing law from the president,” said Schley. “That is a referral that can come from the appeal boards. The president has no right to intervene to push law development in a certain direction; [the questions] are inadmissible here.”

The EBoA might also be reaffirming its own position in light of the referral. Schley said: “It is a kind of statement to show that really the appeal boards, especially the EBoA, are like courts. They are independent, and they don’t want to be politically pushed into something.”

Brimelow, who is soon to vacate her role, referred four questions to the EBoA in 2006. Her predecessor, Alain Pompidou, originally rejected a request by a national court of appeal to provide clarification on what computer-implemented inventions are excludable under an article of the European Patent Convention.