IDG News Service —

Alison Brimelow, president of the European Patent Office, has referred the deeply contentious question about how to assess the patentability of software-related inventions to her office's top appeals body, the enlarged board of appeal (EBoA), the EPO said late Friday.

Referrals to the EBoA are rare, happening only with the most complex questions. Another issue being considered by the EBoA is the question of whether human embryos can be patented.

The patentability of software has provoked fierce debate in Europe over the past 10 years. Technically, software is unpatentable. However, many software-related inventions have been granted European patents.

In 2005 a proposed E.U.-wide law attempting to clarify the matter was scrapped because of the depth of divisions between the pro- and anti-patent lobbies.

Brimelow has been considering referring the issue to the EBoA for almost two years, ever since two related patent disputes in the U.K. highlighted inconsistencies in the application of the European Patent Convention, the rule book used by patent courts in all 34 member countries of the EPO, including all 27 E.U. member states.

In November 2006 Neal Macrossan, an Australian entrepreneur software developer, lost an appeal against the U.K. Patent Office's rejection of his patent application. He wanted patent protection for a method for producing documents "for use in the formation of a corporate entity using a data processing system."

On the same day the U.K. Court of Appeal threw out a challenge against a patent owned by IT company Aerotel for a computer program that created a new network infrastructure for a group of computers.

The three judges presiding over the cases considered the first a business method, and therefore unpatentable, while the second was seen as a patentable hardware change. Another U.K. judge called for a referral to the EPO's top appeals body to clarify the law concerning software patentability.

"Diverging decisions by the EPO's boards of appeal have created uncertainty regarding the patentability of programs for computers under the European Patent Convention (EPC)," the EPO said, adding that Brimelow has referred the questions to the EBoA in order to provide legal clarity.

"The answers to the questions are necessary to enable the further harmonious development of case law in this field," the EPO said.

The EBoA's conclusions "will lead to greater clarity concerning the limits of patentability, thereby facilitating application of the EPC by patent examiners and enabling both applicants and the wider public to understand the law regarding the patentability of programs for computers," it added.

The questions seek clarification not only on when a claim as a whole falls under the exclusion, but also on the circumstances under which individual features relating to programs for computers can contribute to the technical character of a claim.

They address four aspects of patentability in the field of computer programming, the EPO said.

The first question relates to the relevance of the category of a patent claim. The other three questions ask where the line should be drawn between what is excluded from patentability and what could be considered a patentable invention.