The law concerning patents for softwarerelated inventions in Europe has followed a tortuous development with divergent approaches being adopted both in the European Patent Office (“EPO”) and in national patent offices and courts (see summary in our Q2 2008 newsletter). A recent referral to the EPO Enlarged Board of Appeal has, however, raised hopes that an authoritative decision may be given shortly (this year or next year), clarifying for the future the limits of software patentability in Europe.

Divergent approaches: EPO and national courts (England)

The approaches of the EPO and national courts have diverged in many respects, one of which is described below. When considering software patentability, the EPO Boards have tended to focus on the “technical contribution” or “technical character” of an invention. The exclusion from patentability of computer programs “as such” has been interpreted as referring to cases in which the invention has no “technical character” or makes no “technical contribution” to the known art. The English Court of Appeal, in its decision in Aerotel v. Telco/Macrossan ([2007] RPC 7), suggested that it might be adopting a different approach. It adopted a four stage test for assessing patentability which involved checking for a technical contribution after considering excluded subject matter:

(1) properly construe the claim;

(2)identify the actual contribution;

(3)ask whether it falls solely within the excluded subject matter; and

(4)check whether the contribution is actually technical in nature.

More recently, in an appeal relating to Symbian’s application for a patent relating to the mapping of dynamic link libraries in a computer (Symbian v Comptroller General of Patents [2008] EWCA Civ 1066), the Court of Appeal has sought to reconcile the two approaches. It observed that there is no reason why the test as to patentability should not turn on whether the contribution can be characterised as “technical”. Such an approach may be reconciled with the Aerotel four stage test simply by conflating the third and fourth stages so that they are decided together.

The Court of Appeal concluded by finding in favour of Symbian. It could be said that the Symbian instructions “solve a ‘technical’ problem lying with the computer itself”. As a matter of [practical] reality there is more than just a ‘better program’, there is a faster and more reliable computer.”

The next instalment…

In October last year, the President of the EPO referred a point of law – concerning the application of the exclusion of computer programs as such – to the Enlarged Board of Appeal of EPO (case G3/08). The referral raises four questions, one relating to the form of the claims and three relating to where the line should be drawn between those aspects excluded from patentability and those which contribute technical character.

In light of the referral, the UK Intellectual Property Office (UK-IPO) stated that it would not seek to appeal the Symbian judgment to the House of Lords. It considered that it would be premature to seek a view from the House of Lords when European practice is likely to be settled shortly by a decision of the EPO’s Enlarged Board of Appeal. In the meantime, the UKIPO issued a Practice Notice (dated 8 December 2008) stating that it would continue to apply the structured approach of Aerotel/Macrossan to determine the patentability of a computer programrelated invention.

The EPO Enlarged Board of Appeal has invited third parties to file written observations in relation to case G3/08 by the end of April 2009. At least one has already been filed and it is likely that they will be numerous.

As observed by the UK-IPO, the Enlarged Board of Appeal has the ability to make a definitive statement of EPO practice and as such also carries significant weight in terms of the practice adopted by the UKIPO and other national Patent Offices within Europe. It is to be hoped that the decision of the Enlarged Board of Appeal in due course does indeed provide the definitive guidance which is sought to clarify the limits of software patentability in Europe.