Appeals Body Ducks Question of Software Patentability

No change: That's the result of an 18-monthlong appeals process that the president of the European Patent Office hoped would clarify the rules on whether software may be patented.

In October 2008, EPO President Alison Brimelow referred four questions on the patentability of software to the EPO's Enlarged Board of Appeal, its highest appeals court, on the grounds that a number of patent cases had reached "different decisions." With the referral, she hoped to remove uncertainty regarding the patentability of programs for computers under the European Patent Convention (EPC), which governs the EPO's activities, and open the way for the EPO to issue patents on computer programs.

EPO rules today only allow the patenting of computer-implemented inventions if they involve "technical considerations" - often taken to mean that the patent also covers a physical element controlled by the computer program.

Now, the board has come back with its verdict: The referral of the decisions is "inadmissible." Brimelow's questions remain unresolved.

In its verdict, the board takes a long route to its short answer, noting that it even had to study what "different" meant in the context of the patent convention before making its ruling. (After referring to other treaties, it decided that different meant "conflicting" so two decisions are only "different" if they are in conflict.)

In its 55-page ruling, the board wrote that, "Defining a computer algorithm can be seen [... ] as a pure mathematical-logical exercise [or] as defining a procedure to make a machine carry out a certain task."

Depending on which of these views is favored, the board wrote, "the question whether computer programming always involves 'technical considerations' may be answered negatively or positively."

Either view is valid, but it was apparently the intention of the writers of the EPC to take the negative view, the board concluded: that the abstract formulation of algorithms does not belong to a technical field -- and is therefore not patentable.

However, past patent rulings have shown varying views of the technical considerations inherent in computer programming, prompting Brimelow to seek clarification from the board.

On the main question referred to it, the board found that while there was a divergence between two decisions of lower appeal bodies within the EPO, the years that passed between those decisions meant that they represented a legitimate development of patent case law, rather than a conflict. With no conflict, the appeal was therefore inadmissible -- and Brimelow's questions left, for the time being, unanswered.

The European Patent Office issues patents in countries signatory to the EPC, including the member states of the European Union and neighbors including Norway, Switzerland and Turkey.

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