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.
