James Nurton and Stephen Mulrenan, London
The Enlarged Board of Appeal of the European Patent Office is set to give a definitive ruling on the patentability of computer programs in Europe, after EPO President Alison Brimelow last month asked it to address four questions.
Brimelow's move is the latest development in the controversy over software patents in Europe, and came just two weeks after the England and Wales Court of Appeal upheld the validity of a patent owned by telecoms company Symbian, ruling that software can be patented if it provides a technical contribution to the state of the art. That decision was seen as bringing UK practice closer to that of the EPO. Meanwhile, a decision on patentable subject matter from the US Court of Appeals for the Federal Circuit in the Bilski case was expected imminently as Managing IP went to press.
In her letter to Peter Messerli, chairman of the Enlarged Board, dated October 22, Brimelow said: "This point of law, which concerns the application of the exclusion of computer programs as such, is of fundamental importance as it defines the limits of patentability in the field of computing." She added that there are concerns that some of the decisions of the EPO boards of appeal have given "too restrictive an interpretation of the breadth of the exclusion": "It is clear that the European Patent Office should have the leading role in harmonising the practice of patent offices within Europe."
The four questions referred cover whether a computer program is excluded from patentability and where the line should be drawn on what is patentable (see box). In the letter, Brimelow also sets out in detail the diverging decisions of the EPO's boards of appeal, and explains why these divergences need to be addressed. If the Enlarged Board agrees to answer the questions, it is likely to take at least two years. It will be possible for interested parties to file amicus briefs or statements.
Nick Wallin, a partner of Withers & Rogers, told Managing IP the four questions could be seen as "an attempt to get some sort of definite guidance to answer most questions people have in this field". "At the end of this road, we'll end up with a clearer practice overall," added Gareth Fennell, a partner of Kilburn & Strode.
But practitioners also warned that the decision could make prosecution less predictable. "Patent attorneys have a system we can work with and we believe we understand the EPO practice. This referral threatens to open a whole can of worms," said John Collins, a partner of Marks & Clerk in London. Fennell added that the decision to refer the questions "casts a shadow of uncertainty over applicants prosecuting patents through the EPO" until the questions are answered.
Brimelow's move is the latest chapter in a controversy over the patenting of computer programs in Europe that goes back to the 1990s. Attempts to pass a directive to harmonise protection in the EU were dropped in July 2005, following strong opposition from anti-patent lobbyists. Without that guidance, national courts, as well as the EPO boards of appeal, have had to rule on a number of controversial patents.
At the EPO, a Board of Appeal decision from 2004 in an application made by Hitachi for a computerised auction system set out a two-step test for computer program patents: first, is the invention technical and, second, what is patentable in the technical parts of the invention?
National courts have followed slightly different routes. Last month, the Court of Appeal in London dismissed an appeal filed by the UK IP Office against a high court ruling allowing Symbian's patent for a method of accessing data in a computer device – which effectively enabled computers to run faster and more efficiently. The UK IPO had rejected the application on the ground that it related to nothing more than a computer program.
The three appeal judges said: "To start with a defensive point, the program in this case does not embody any of the items specifically excluded by the other categories in art 52; thus, it is not a method of doing business (as in Merrill Lynch), or a mathematical method (as in Gale), or a method for performing mental acts (as was probably the case in Fujitsu)." Although the judgment conceded that the concept of a technical contribution (which arose in the Macrossan/Aerotel case in October 2006, when the Court rejected a computer program patent) was "imprecise" and "could easily mean different things to different people", it added that this did not mean that the technical contribution test was "unhelpful or inappropriate".
In a statement, Symbian said: "This case will be relevant to all companies involved in developing, selling or marketing devices in the UK that run software. Symbian is very pleased with the certainty and clarity this judgment brings to UK patentees." Wallin, who acted for Symbian during its appeal to the High Court, said: "The decision brings back technical contribution, which is something that never really went away." However, he warned that the UK IPO could still appeal the case to the House of Lords.
Kilburn & Strode partner Richard Howson said that the Court had walked a tricky tightrope. "It has tweaked the UK approach to assessing software inventions where the effect of the software is internal to a computer, to give basically the same outcome as in the EPO; while at the same time at least appearing to follow some unhelpful Court of Appeal precedent." Myles Jelf of Bristows said that the decision made a lot of sense from a legal viewpoint, "as the contrary view could effectively have shut out all patent protection for anything that takes place within a computer".
Peter Prescott QC and Charlotte May represented the UK IPO and were instructed by the Treasury Solicitor. Daniel Alexander QC and Richard Davis acted on behalf of Symbian and were instructed by Withers & Rogers.
In giving its judgment in Symbian, the Court of Appeal acknowledged that divisions have existed between UK and EPO practice: "The fact that the two offices and their supervisory courts have their own responsibilities means that discrepancies, even in approach or principle, are occasionally inevitable." It continued: "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."
Practitioners were reluctant to predict the answers to the questions referred by Brimelow, but most hoped that the Enlarged Board would not significantly change EPO practice. "I expect the present approach will be validated," said Wallin. "But there is the possibility they could do something completely left-field."
Brimelow's questions for the Enlarged Board |
|
