In a landmark case in which a system was denied a patent on the grounds that it was software, Court of Appeal judge Lord Justice Jacob asked the EPO to issue a definitive statement on software patents. He said that several EPO rulings contradicted each other.
EPO President Professor Alain Pompidou has written to Jacob and the UK Patent Office saying that there is an "insufficient legal basis" for a review by the Enlarged Board of Appeal.
The issue centres on Article 52 of the European Patent Convention, which lists the kinds of inventions which cannot be granted patents. "The following in particular shall not be regarded as inventions," it says. "Discoveries, scientific theories and mathematical methods; aesthetic creations; schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; presentations of information."
Jacob said, in his Macrossan ruling, that the application of these exemptions by the EPO's Boards of Appeal had been inconsistent.
"The decisions of the EPO Boards of Appeal are mutually contradictory. To say that is not to criticise anyone. On the contrary the Boards of Appeal have each done what they think is right in law – as befits tribunals exercising a judicial function. But surely the time has come for matters to be clarified by an Enlarged Board of Appeal," he wrote.
"The President of the EPO has the power to refer a point of law to an Enlarged Board where two Boards of Appeal have given different decisions on that question. That is now clearly the position. There are indeed at least four differing points of view," he said.
Pompidou said that he would not order a clarification by the Enlarged Board of Appeal until there was a divergence of approach by Boards of Appeal so great that one would award a patent while another would not.
"The [Macrossan] decision has led to a discussion within the EPO as to the possibility of referring questions regarding the exclusions to patentability set out in Article 52(2) EPC to the Enlarged board of Appeal," said Pompidou's letter to Jacob. "On the basis of these discussions I have decided that at the moment there is an insufficient legal basis for a referral."
"Leaving aside Board of Appeal case law the line of reasoning of which has been abandoned by later case law, I believe there are insufficient differences between current Board of Appeal decisions dealing with Article 52 EPC exclusions on important points of law that would justify a referral at this stage," said Pompidou.
He did say, though, that there could come a time when he would order a clarification. "The EPO will continue to monitor case law closely, whereby I believe the appropriate moment for a referral would be where the approach taken by one Board of Appeal would lead to the grant of a patent whereas the approach taken by another Board would not," he said.
Meanwhile, the High Court has made its first ruling based on the Macrossan precedent. Though Patent Office hearing officers have been applying the new precedent since the judgment was made, two cases heard together were the first to reach the High Court.
An appeal by a Mr Cappellini and one by Bloomberg against refusals to patent applications were both turned down. The original hearings had taken place before the Macrossan case concluded, but even with the Macrossan patent, the High Court ruled that the inventions did not merit patent protection.
Cappellini's invention was an algorithm designed to help a network of couriers meet at flexible 'nodes' to swap packages. Bloomberg's was a system by which data due to be delivered was altered to suit the needs of the person receiving the information from a network.
Both applications were originally refused under section 1(2) of the Patents Act, which follows Article 52 of the EPC, and excludes from patentability inventions which are "methods for performing mental acts, doing business or programs for computers as such". The High Court said that the Macrossan ruling did not change that decision in either case.