EPO President Alison Brimelow has referred the contentious issue
to the EPO's Enlarged Board of Appeal, the body which gives the EPO
legal guidance. The Board is independent of the operation of the
EPO and takes as its only authority the EPC itself.
"It is hoped that the answers to these questions will lead to
greater clarity concerning the limits of patentability, thereby
facilitating application of the EPC by patent examiners and
enabling both applicants and the wider public to understand the law
regarding the patentability of programs for computers," said an EPO
statement regarding the referral.
Countries that sign up to the EPC structure their patent law
around it. It says that things which are only programs for
computers and nothing more are not patentable, but different
countries interpret this in different ways.
The EPO can grant patents, but these must be confirmed by the
national patent-granting authority in any country in which the
applicant wants the patent to take effect.
The UK courts have taken a stricter view than those in other
countries of what should be excluded as software and the UK's
patent-granting authority the UK Intellectual Property Office
(UK-IPO) and the courts reject some patents that the EPO
grants.
Brimelow has decided that confusion exists even within decisions by
EPO boards of appeal, and has asked the Enlarged Board to issue a
ruling on the inconsistencies.
"Considering that diverging decisions of the EPO's boards of
appeal have created uncertainty, EPO President Alison Brimelow has
referred a number of questions to the Enlarged Board of Appeal of
the EPO in relation to the patentability of programs for
computers," said an EPO statement.
"Guidance is sought on how some of the finer aspects of this
exclusion are to be applied," said the statement. "The questions
seek clarification not only on when a claim as a whole falls under
the exclusion, but also on the circumstances under which individual
features relating to programs for computers can contribute to the
technical character of a claim (in which case they are relevant for
assessing novelty and inventive step)."
The Court of Appeal in the UK recently rejected the UK-IPO's
refusal to grant an EPO-issued patent in the UK. In that case
Symbian won the right to patent a piece of software that helps
other pieces of software run more quickly.
The judge in that case said that the approaches of the UK-IPO and
EPO should be harmonised as far as was possible to reduce the
discrepancies between their practices.
"It is, of course, inevitable that there will be cases where the
EPO will grant patents in this field when UKIPO should not," said
Lord Neuberger in that ruling. "However, the fact that such
discrepancies have been characterised as 'absurd' by Lord Justice
Nicholls…emphasise[s] the strong desirability of the approaches and
principles in the two offices marching together as far as
possible."
"This means … that, where there may be a difference of approach or
of principle, one must try to minimise the consequent differences
in terms of the outcome in particular patent cases," he said in
that case.
The UK Court of Appeal asked the EPO to issue a ruling on software
patents last year following a case that has set a standard for UK
patent law involving inventor Neal Macrossan. Lord Justice Jacob
wrote to the EPO to ask it to refer the issue to the Enlarged
Board, saying that there were now at least four contradictory
appeals board rulings in the area.
Brimelow's predecessor as President of the EPO rejected that
request.
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