Software patents – what the European Patent Office ruling means

The European Patent Office's (EPO) long-awaited decision on the issue of software patentability brings little change at...

The European Patent Office's (EPO) long-awaited decision on the issue of software patentability brings little change at a European level but provides some hope for UK software companies, who suffer an unfair commercial disadvantage in attempting to obtain patent protection in their home market through the UK Intellectual Property Office (UKIPO).

Giving its verdict on questions raised about software patentability some 18 months ago by the EPO's president Alison Brimelow, the Enlarged Board of Appeal (EBOA) ruled the questions as "inadmissible" on largely technical grounds, while at the same time endorsing the legal approach taken at a European level. Thus, while no positive opinion was given, the decision may be viewed as encouraging by those in favour of patenting software inventions.

For the UK software industry, however, the decision does not go far enough. In the absence of any positive opinion, the UKIPO is unlikely to review its current stance on the patentability of software and computer-based inventions and adopt the more lenient test of invention applied in other European jurisdictions, because the EPO has given them no clear instruction to do so. As a result, UK-based software manufacturers will continue to be disadvantaged - forced to channel their patent applications through the European courts and uncertain about whether they could successfully defend against any infringement on their home turf.

However, there is now a glimmer of hope for the UK software industry. Recent UK case law has consistently refused to allow the more lenient European approach to testing for invention on the grounds that the EPO's interpretation of patent law in this area is inconsistent. That argument becomes more tenuous as a result of this decision and it is possible that UK manufacturers could challenge this thinking by quoting the Enlarged Board of Appeal's finding that the EPO's approach is in fact "practical and working well".

The UKIPO is likely to come under increasing pressure to adopt the European approach, but this change could take time, and require further appeals to the Court of Appeal. In the meantime, the UK's software industry will be forced to sit tight and wait for an opportunity to bring an appeal.

Nick Wallin is a patent attorney at Withers & Rogers LLP - a UK firm of patent and trade mark experts. Wallin represented Symbian in its successful court of appeal ruling in October 2008 on the issue of software patentability.

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