29 January 2010

Comparison of British and European CII approaches

A recent post titled "Patentable subject-matter - Where are we now?" of the IPKat weblog provides a refreshing overview on and comparison of the European and British approaches to CII as patentable subject-matter. The post also sketches the ongoing controvery between the European and the Britisch point of view and provides the following conclusion:

As far as the EPO Technical Boards of Appeal are concerned, nothing has changed. However, as far as the UK Patent Office and the Court of Appeal are concerned, the EPO case law is so full of contradictions that it cannot be followed in any meaningful way. Before the recent referral was made, the situation was at an apparent stalemate, with neither side willing to give way or refer to a higher authority that might be able to resolve the conflict (leave to appeal to the House or Lords, as it then was, for the Macrossan part of the Aerotel/Macrossan decision was refused, apparently because there were no sufficiently important issues to be decided).

The way that patentable subject-matter is decided at the EPO is in fact largely the same (with a few modifications and refinements along the way) as it has been for the past 25 years. The referral to the Enlarged Board is therefore, in the view of this author as well as other more eminent commenters on the issue, unlikely to have any effect if, as seems likely to happen, the referral is judged to be inadmissible under Article 112(1)(b). Even if the Enlarged Board do decide to answer some or all of the questions, it seems likely that they will merely refer to the current line of reasoning being followed by the lower Boards of Appeal as being correct, and will refrain from making any definitive statements on where the boundary of patentability should lie.

In the UK, the situation remains more difficult to assess given the difficulty of reconciling five different, equally binding, Court of Appeal judgments. For now, examination at the Patent Office continues to follow the Aerotel/Macrossan four-step test, with the qualification applied by the later decision of Symbian. Perhaps once the Enlarged Board arrive at their decision, some clarity will return to the UK approach, but this might require a trip to the Supreme Court to sort out the issues properly.

Although there has been much discussion of the differences between how patentable subject-matter is dealt with in the UK and European Patent Offices, it should be remembered that, in the great majority of cases, the same result will nonetheless be achieved.
It is generally expected that the EPO Enlarged Board will come to a decision within the next few months. Regardless of what this decision is, it should help to resolve at least some of the differences between the EPO and UK approaches. The author, who predicts that the Enlarged Board will rule the referral as being inadmissible, suspects that the issue is unlikely to be fully settled for quite some time to come, if at all.