Journal of Intellectual Property Law & Practice Advance Access published online on June 4, 2009
Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpp072
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© The Author (2009). Published by Oxford University Press. All rights reserved.
The characteristics of technical character and the ongoing saga in the EPO and the English courts
Legal context: In 2006, the English Court of Appeal took the unprecedented step in Aerotel of inviting the then EPO President, Alain Pompidou, to refer several questions to the Enlarged Board of Appeal regarding patentability of computer-implemented inventions. Pompidou declined, stating that case law on patentability of computer-implemented inventions was clear and there were no meaningful inconsistencies between decisions on the subject. Recently, the current EPO President, Alison Brimelow, decided surprisingly to refer four questions on this matter to the Enlarged Board of Appeal. The English Court of Appeal also independently delivered its decision in Symbian, indicating that irrespective of the different approaches between the jurisdictions, the end result concerning applications for computer-implemented inventions is practically identical. Whether this is true is far from certain, particularly given recent EPO decisions, such as Circuit simulation/Infeneon Technologies.
Key points: The approaches taken by the different EPO Boards of Appeal as to what constitutes a ‘technical character’ and, therefore, an ‘invention’ under Article 52 are markedly different from that taken by English courts. These approaches may lead to different outcomes where an application for a computer-implemented invention is examined.
Practical significance: Analysing the EPO position on patentability of computer-implemented inventions is not only important to understand the current EPO position, but is also highly relevant for future development of English jurisprudence. English courts have persistently refused to follow EPO developments in the last decade mainly under the pretext that these developments were not coherent and were self-contradictory. Furthermore, English courts have recently maintained that regardless of the different approaches taken in England and the EPO, the end result of decisions in both jurisdictions is practically identical. This paper analyses the EPO approach and the latest developments regarding computer-implemented inventions, compares it to the approach taken in England and Wales, and assesses whether applicants for computer-implemented inventions are likely to find themselves in a more favourable position in either of these jurisdictions.
Correspondence: * University of Buckingham. Email: noam.shemtov{at}buckingham.ac.uk