In the judgment issued on Friday, in an appeal brought to the Patents Court by four companies against a decision of the UK IP Office, Mr Justice Kitchin said that the Office was wrong to reject all patent claims to computer program products.
“I have reached the conclusion that claims to computer programs are not necessarily excluded by Article 52 [of the European Patent Convention],” he wrote.
He continued: “In a case where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable then, in principle, a claim to the program itself should also be allowable. I say “in principle” because the claim must be drawn to reflect the features of the invention which would ensure the patentability of the method which the program is intended to carry out when it is run.”
The appeal was brought by high-tech companies Astron Clinica, Software 2000, Surf Kitchen and Cyan Holdings against a decision of the UK Intellectual Property Office in July. The four challenged its refusal to accept patent claims that cover disks and downloads, even though the Office had allowed their other patent claims.
The patentability of software is a controversial issue across Europe. In 2006, the UK Court of Appeal backed a decision by the UK Patent Office (as it was then known) to refuse to grant Australian entrepreneur and solicitor Neal Macrossan a patent for a computer-based system he designed to help people complete the forms required to register a company.
The Court set out a four-step test examiners should use when deciding whether inventions relating to business methods and software are patentable. The judges said that patent examiners should properly construe the claim, identify the actual contribution it makes, ask whether it falls solely within the excluded subject matter, and check whether the actual or alleged contribution is actually technical in nature.
A week after the Court of appeal’s decision, the UK's Patent Office issued a practice note setting out how the Office would examine patent applications for software and business method inventions.
At the time, the Patent Office’s Director of Patents Sean Dennehey told an audience of patent attorneys attending the CIPA Congress in London that the Court of Appeal had adopted the approach proposed by the Office: “It is likely we will refuse something that looks like just software,” he added, “The UK Patent Office is obliged to follow the Court of Appeal and we will do that.”
After the UK’s highest court, the House of Lords, refused to hear Macrossan’s appeal, many patent practitioners believed that the Court of Appeal’s decision, and the IP Office’s interpretation of it, would stand for some time.
A number of patent attorneys in the UK said at the time that they would advise their clients to apply for patent protection in the UK via the EPO, rather than by applying to the UK IP office directly.
This is because many believe that examiners at the European Patent Office take a more liberal approach to business method and software patents than examiners in the UK.
Now, however, the UK Office may have to revise its practice – a move that Nicholas Fox, a patent attorney with Beresford & Co who advised the four companies and also represented them in the High Court, said would bring the UK back in line with EPO practice.
In his decision, Kitchen said that it is “highly undesirable” that provisions of the EPC are construed differently in the EPO from the way they are construed in the national courts of contracting states.
A spokesman for the UK IP Office said that it was still considering whether to appeal the ruling but acknowledged that if it did not appeal, or if it lost any subsequent appeal, then it would need to amend its practice note to deal with claims relating to disks and downloads.
Fox said that the decision made it clear that as long as something is a technical invention, then it is protectable even if it is implemented by a computer programme.
“[The IP Office’s practice note] said that they interpreted the Macrossan case as meaning that claims related to computer disks are unlikely to be allowable. The courts now say that there was no basis for that statement,” Fox told Managing IP. “In the Macrossan case, the Court of Appeal focused on what is a technical result. It didn’t consider the issue of the storage medium because it did not arise.”
The Office has 28 days in which to lodge an appeal.
