Europe clarifies its position on intellectual property

The EPO received around 100 submissions from interested parties when it was deliberating

Intellectual property is rightly seen a key competitive tool by businesses and politicians alike. This is why two pronouncements this week from Europe on the subject of patents matter so much.

Yesterday, the Enlarged Board of Appeal of the European Patent Office (EPO) handed down its long-awaited 'opinion' on the extent to which software can be patented under the European Patent Convention.

Its ruling stated that software can only be granted a patent on the grounds of its technical merit - a statement that reinforces the most recent decisions of the EPO.

“To be granted a patent, a program must provide a technical solution to a technical problem,” said Mark Kenrick, partner at intellectual property firm Marks & Clerk LLP. “That means a business method cannot be patented, but a clever way of implementing a business method on a computer can.”

The 'opinion' was required because, over the course of two decades, the position of the EPO has changed. Consequently, UK courts, which have always taken a much stricter approach to refusing patents that appeared to be based on business method, have questioned the consistency of the EPO's ruling.

The software development industry has also been seeking clarity and consistency from the EPO.

In October 2008, EPO president Alison Brimelow posed four questions on the subject of software patentability to the Enlarged Board, as is usual procedure under the Convention. Yesterday the seven members of the Enlarged Board decided that the decisions made in the most recent five years now form the legal position of the EPO, that is, that software can be be granted a patent only on the grounds of its technical merit.

So a patent won't be granted on a business method like it has been in the US, but it can be granted on a unique way of implementing that method in software.

“Today’s decision by the Enlarged Board of Appeal is a very significant move, particularly for software makers who have struggled with the historic divergence and stricter treatment typically given to software in the UK,” said Mark Kenrick, partner at intellectual property firm Marks & Clerk LLP. “By confirming the EPO’s existing approach, the Enlarged Board of Appeal has given industry far greater certainty as to the state of the law at the EPO, which will hopefully bring considerably more clarity and consistency to the patentability of computer-implemented inventions across Europe and its various national patent offices.”

Yesterday's decision makes it more likely that the UK courts will follow the line of the EPO, he added.