Joff Wild

Nearly two years ago now, the UK’s most senior patent judge, Lord Justice Jacob, asked the EPO’s then-president Alain Pompidou a series of questions relating to the patentability of computer programs. There was, Jacob said, real uncertainty as to what the position was under the European Patent Convention and the situation needed clarifying. Pompidou rejected the request.

That Jacob may actually have had a point was amply demonstrated a few months later when a president of one of the EPO’s boards of appeal heavily criticised him for the decision he handed down in the case in which he had raised the questions. The judge, said Stefan Steinbrenner, had issued a judgment that was “irreconcilable” with European law. In a Europe where courts of all EPC member states are supposed to apply the same law, that is clearly a huge worry.

Now, it seems, current EPO president Alison Brimelow agrees. In sending a list of detailed questions to the expanded Board of Appeal regarding the patentability of computer programs, Brimelow looks like she wants to ensure there is complete clarity on the subject, so that everyone, everywhere understands exactly how things stand and decisions handed down by courts can reflect that. While this may bring long term benefits, in the shortv term - as we wait for the answers - there could actually be greater uncertainty (see below). Last week Marshall Phelps observed that Europe thinks it does not grant software patents, but that actually it does. When the enlarged board answers the president’s questions, maybe we can all have the same certainty as Microsoft’s VP of IP Strategy and Policy.

Not being a patent law expert, I am not going to opine on Brimelow’s questions. Both the IP Kat and IPjur blogs do so in ample detail – and they know what they are talking about. I will, however, make a few observations:

1. The failed CII Directive was all about providing certainty with regards to the patentability of computer implemented inventions in Europe. We al know how controversial that was.

2. Given that, I think we can expect to see Brimelow subjected to some very heavy criticism from anti-software patent groups. Not that it will bother her that much.

3. They will claim that the questions will give the EPO the chance to do what the campaigners have always said that the EPO would do – introduce software patents in Europe via the back door (ie, without any democratic scrutiny); Phelps’s opinion – and the opinions of countless European patent attorneys – notwithstanding.

4. As a result, the whole thing could get very messy indeed.

STOP PRESS: I received a press release this aftrnoon from Marks & Clerk, the UK patent and trademark attorney firm, pointing out that until the Enlarged Board responds to Brimelow's quesitons there will be greater uncertainty than we have had for a while. Also, exisiting applicaitons in this area could be delayed:

... The EBoA may now decide to dismiss her concerns. In order to do so, it would need to provide substantial reasons explaining why the decisions of the Boards of Appeal are consistent. Should the EBoA decide to address the questions and therefore clarify the law, the process could take several years, holding up the grant of patents in borderline cases. This would therefore stymie attempts by developers of ‘pure’ software – technical solutions to technical problems that do not extend beyond the computer itself – to patent their creations.

Mark Kenrick, Partner at Marks & Clerk, one of Europe’s leading firms of Patent and Trade Mark Attorneys, commented: “It is surprising that Ms. Brimelow sees a need for legal clarity here as the EPO has created a workable and understandable approach which we can live with. This month’s Court of Appeal judgment on the Symbian case brought the UK position very close to that of the EPO, but this referral could well send the debate back to square one.

“Whilst further clarification of the law will of course be welcome in the long term, in the short term the referral will replace reasonable clarity with uncertainty. More worryingly it could create a backlog that would potentially be damaging to European business. The inconsistencies raised by Ms Brimelow are interesting but unlikely to affect the outcome of future cases.”

If the EBoA chooses to clarify the law, there will be renewed uncertainty in the UK until the UK Court of Appeal is again asked to give judgment on the issue, effectively restarting the process that ended with the Symbian judgment earlier this month.

Mark Kenrick concluded: “This is a setback on the road to greater clarity on the correct approach to software patent law. The EPO had previously considered its decisions to have been consistent, and the recent Symbian ruling stated that the UK approach was fundamentally compatible with the EPO position. This provided a real prospect of consistency between the UK and EPO. Only time will tell whether this referral will clarify this difficult area of law. There is, however, little doubt that we will be left with renewed uncertainty in the short term.”