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Friday, 7 November 2008

The UK-IPO's latest thoughts on software patents

The IPKat has just noticed a press release issued this morning by the UK-IPO. This follows the recent decision in Symbian (more here), in which the UK-IPO lost their appeal relating to the correct application of the Aerotel four-step patentability test.  They now say:

"The Court of Appeal did not give the UK-IPO leave to appeal to the House of Lords because in its view it would be premature for the House of Lords to decide what computer programs are patentable before the issue has been considered by the Enlarged Board of Appeal of the European Patent Office (EPO). The President of the EPO has now referred a series of questions on the patentability of computer programs to the Enlarged Board [see IPKat posts here and here]. This body 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 UK-IPO and other national Patent Offices within Europe.

In the light of this development,
the UK-IPO will not seek to appeal the Symbian judgment further. The UK-IPO agrees with the Court of Appeal in that it would now 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. The UK-IPO will have an opportunity to submit observations to the Enlarged Board of Appeal on the questions put to it. In order to inform any such observations the UK-IPO will undertake a study to determine the economic impact of patenting computer programs.

Although the Court of Appeal did not accept the UK-IPO’s view on the patentability of Symbian’s invention, the UK-IPO believes that the Court has confirmed that the so called "Aerotel/Macrossan" test, established by the Court of Appeal in a previous case, provides a legitimate approach to analysing whether an invention should be refused as no more than a computer program. The Court of Appeal declined to follow the EPO approach, considering it unclear at present. Therefore, the UK-IPO will continue to use the Aerotel/Macrossan test but in doing so it will take account of the Court of Appeal’s judgment in the Symbian case whenever appropriate.
"
The IPKat thinks the UK-IPO's view that the Enlarged Board will be able to settle the matter soon is hopelessly optimistic. For one thing, the Enlarged Board is not known for being quick at producing definitive decisions. Also, as has already been pointed out (see here), it seems very likely that the Enlarged Board will have to reject the referral, because it simply does not comply with the requirements of the EPC, which only allows such referrals in limited cases. This would not, however, be such a bad thing, provided the UK-IPO properly takes on board the guidance offered in Symbian and uses the word 'technical' often enough (even though nobody knows what it actually means).  After all, the aim should be to make sure the same result is obtained (by whatever means) regardless of whether a patent application is prosecuted before the UK-IPO or the EPO.  The IPKat also wonders what the "study to determine the economic impact of patenting computer programs" will be about. Shouldn't this be a question of how the law is supposed to be interpreted, rather than economic policy? 

6 comments:

MaxDrei said...

If you look at the various opinions of the CAFC judges in Bilski, you will find one (Mayer) who asserts that patents on programs are an impediment to the progress of the useful arts, while others assert the opposite. So there's a "game on" on this point. But didn't HMG perform a major survey of opinion within the interested circles at the time of the Directive, and concluded that the EPO had got it "about right" already. Talk about headless chickens.

Anonymous said...

I think we can all imagine what the EBoA will say about the UK-IPO's observations on the economic impact of patenting computer programs. Given that there may be children or other sensitive souls reading, I won't put it in writing.

One further thought: if the EBoA refuse to entertain the referral on the grounds that there is no divergence (that is, the recent strand of case law is definitive), is this not exactly what the UK-IPO (and everyone else) want - "a definitive statement of EPO practice"? Could this in fact be exactly what Alison Brimilow is hoping will happen? The end result is the same as a full EBoA decision, but without the years of handwringing. The UK courts can then stop the pretence that the EPO practice is not settled and the rest of us can find something else to worry about.

Anonymous said...

I'll buy that. Biggest point of dispute I have is that it's Brimelow rather than Brimilow.

Anonymous said...

Since the "economic argument" seems to be FFII's hobby horse du jour (as we've seen recently on this and other blogs), I am of the opinion that this "study to determine the economic impact of patenting computer programs" is a mere sop to appease the anti-lobby, who'd otherwise be incandescent that the UK-IPO will not appeal Symbian.

On the other hand, given that those same activists have criticised the EPO so much for "entering the debate" and "influencing lawmaking", I wonder whether there may be some vitriol in store for UK-IPO. I guess not, unless of course the conclusions of that study go against FFII's expectations...

Anonymous said...

Spot on. Ich stimme zu. Anybody out there from the FFII who will answer the commentator immediately above? Your go now.

Anonymous said...

if the EBoA refuse to entertain the referral on the grounds that there is no divergence (that is, the recent strand of case law is definitive), is this not exactly what the UK-IPO (and everyone else) want - "a definitive statement of EPO practice"? (...) The end result is the same as a full EBoA decision, but without the years of handwringing.

Not necessarily. If the EBA finds the referral inadmissible, that only means it does not find the decisions in question diverging. It does not mean the EBoA agrees with the substance of the decisions. It leaves open the possibility of a future referral of essentially the same questions by a TBA under Art. 112(1)(a) EPC.

So in theory the EBA might first declare current case law to be consistent, and at some later time declare that even though it is consistent, it is wrong.

Btw, I wonder if the fact that these questions are now pending will persuade one or more TBAs to refer further questions (as has happened in quite a few other cases).

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