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.