Joff Wild

Now that the experts have had time to digest the implications of yesterday's decision of the EPO's Enlarged Board of Appeal on the patentability of computer programs, I have started to get some detailed opinions on its implications. So here are a few.

Peter Finnie, a partner at Gill Jennings & Every LLP:

The Enlarged Board of Appeal’s (EBA) decision yesterday (12 May 2010) that ruled inadmissible the referral made by Alison Brimelow as President of the EPO was hardly much of a surprise. Was Lord Justice Jacob in Aerotel/Macrossan the only one who thought that the EPO case law on the patentability of computer-implemented inventions was diverging? It seems so.

At para 7.2.7 of the decision, the EBA states that “a presidential referral is not admissible merely because the European Parliament and Council have failed to adopt a directive on CII patenting or because consistent Board rulings are called into question by a vocal lobby [Lord Justice Jacob]”.

So, no new law. But perhaps it isn’t as unhelpful as it seems.

UK practice remains at odds with EPO practice and UK judges (and the UK IPO) have therefore been reluctant to give much weight to any EPO decisions on CII patenting. This has made it very difficult to obtain patent protection for CII in the UK where the requirement for technical contribution is set at a very high level indeed. There is no excuse for refusing leave to send a CII case on patentability up to the Supreme Court now that the EBA has issued it’s decision with a lengthy explanation of current EPO law and practice (with a mild rebuke for wasting it’s time on such things). Harmonisation is a two-way process. Time for the UK to harmonise? 

From Bristows:

As Lord Justice Jacob pointed out in the UK Court of Appeal, billions (euros, pounds or dollars) turn on the issue of whether software should be afforded patent protection. The Enlarged Board had an opportunity to restrict the scope of patentability of software but declined to take it, ruling that the referral was inadmissible on the basis that there was no real divergence in the decisions of the EPO. This confirmation of business as usual is likely to upset those pressing for freedom to use and re-use software without restriction. In considering the specific questions raised by the referral, the Enlarged Board largely confirmed the present approach of the EPO to the computer program exclusion. This involves what may be superficially regarded as a very low threshold for patentability since the exclusion may be avoided by the mere explicit mention of the use of a computer–readable storage medium. An application will not be refused under the computer patent exclusion so long as it involves some technical effect. The real test is whether, even having satisfied that requirement, there is – as with any patent application – an inventive step. In this regard, the Enlarged Board emphasised the need to consider all of the claimed features together to determine whether the claimed subject-matter has a technical character. Perhaps more controversially, however, the Board held that there was no requirement for software to have a technical effect on a physical entity in the real world in order to be patentable. The Enlarged Board noted that while the formulation of every computer program requires technical considerations, in the sense that the programmer has to construct a procedure that a machine can carry out, that is not enough to guarantee that the program has a technical character. This is only guaranteed if writing the program requires “further technical considerations”.

Commenting on the decision, James Boon at city law firm Bristows stated: “The Enlarged Board has emphatically confirmed the present, more inclusive, approach of the EPO to the patentability of software. This is likely to have a significant impact in jurisdictions such as the UK where the approach of the Intellectual Property Office and the Courts is at least formally at odds with the EPO.” Myles Jelf, also at Bristows, commented: “The opinion may be regarded with dismay by some (it acknowledges itself that the current EPO approach to patenting computer programs is „in some way distasteful to many people?) but as the settled view of the EPO, will be hard for the UK courts to ignore.” 

From Mark Kenrick, a partner at Marks & Clerk LLP:

“Today’s decision by the Enlarged Board of Appeal is a very significant move, particularly for software makers who have struggled with the historic divergence and stricter treatment typically given to software in the UK. By confirming the EPO’s existing approach, the Enlarged Board of Appeal has given industry far greater certainty as to the state of the law at the EPO , which will hopefully bring considerably more clarity and consistency to the patentability of computer implemented inventions across Europe and its various national patent offices . It has taken the EPO some time to reach its current practice, and it is to be welcomed that this practice has now been confirmed.”

For a non-UK perspective on the decision see the IPJur blog, which concludes:

It is ... clear that the EBoA felt a bit abused by the President's attempt to use it as an instrument to clarify a political issue which had already caused the legislator to fail.

Bottom line: The Enlarged Board of Appeal won't interfere in the business of defining the limits of patentability of computer-implemented inventions; stick to present case law as it is known. Nevertheless, the G 03/08 Opinion provides some lengthy comments on available case law and how to properly understand its meaning.