News

A new High Court Decision suggests that the UK Intellectual Property Office (UKIPO) is wrong to automatically refuse patent application claims for computer programs.

Many patent applicants and Intellectual Property professionals were dismayed by the UKIPO’s November 2006 decision to begin refusing all claims drafted to computer programs. A recent decision of the High Court promises to overturn this decision, and require the UKIPO to return to the former practice of considering computer program claims on their individual merits.

The Background

In the UK and Europe, computer implemented inventions must clear a number of hurdles before they can be granted patent protection. Like their more traditional counterparts, they have to be new and non-trivial. However, as “computer programs as such” are expressly excluded from patent protection by Section 1(2) of the UK Patents Act 1977 (and the corresponding provisions of the European Patent Convention), computer implemented inventions must also make a contribution in a non-excluded field of technology. Only those computer implemented inventions that satisfy all of these criteria may be granted patent protection.

Protection for a computer implemented invention could traditionally be expressed by patent claims directed to an apparatus, a method and a computer program. In cases where the computer implemented invention is implemented by software, the claims to the computer program itself are extremely valuable to the patent holder as they allow the patent holder to seek damages arising directly from infringing copies of the software being put on the market.

Problems in the UK arose in November 2006, after the UKIPO issued a practice note in response to the Aerotel and Macrossan decisions of October the same year, to state that it would now refuse all patent claims directed to computer programs, regardless of whether any corresponding apparatus or method claims were allowable. This decision was a break from the UKIPO’s established practice of considering claims to computer programs on their merits, and represented a significant blow to patent holders by depriving them of valuable means of redress in infringement actions or licensing deals. The decision further attracted criticism from patentees and the intellectual property community alike, for putting the UKIPO at odds with Europe and introducing inconsistency in the protection afforded by patents.

Five patent applicants, comprising small UK businesses, joined forces in May 2007 to challenge the UKIPO’s practice after claims in their patent applications were refused: their protest was heard in the High Court last month. In the decision of Astron Clinica Ltd and others , and the Comptroller of Patents Designs and Trademarks, (2008 EWHC 85 (Pat)) handed down on 25 January 2008, the judge Justice Kitchen argues that the current UKIPO approach is essentially incorrect. He states:

“In a case where claims to a method performed by a computer 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 be allowable.”

The UKIPO may now have to change its practice again, and allow claims directed to computer programs so long as they relate to an allowable computer implemented invention. Not all claims would be allowable, however, only those that are“ drawn to reflect the features of the invention that would ensure patentability of the method which the program is intended to carry out if it is run”.

This decision does not affect the test for what constitutes an allowable computer implemented invention, and is unlikely to resolve the controversy in that area. However, returning to the practice in place pre-November 2006 would benefit patent applicants in the UK by allowing them to properly protect inventions that are already deemed to be patentable.