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THE UK
INTELLECTUAL PROPERTY OFFICE (UKIPO) LIFTS ITS BLANKET REFUSAL OF “COMPUTER
PROGRAM” CLAIMS, WHILE SIMULTANEOUSLY, THE UK
PATENTS COURT STRENGTHENS
THE SCOPE OF THE EXCLUSION OF COMPUTER PROGRAMS “AS SUCH” FROM PATENT
PROTECTION
According to a new
practice notice, dated 7 February
2008,
the UKIPO will no longer require patent applicants to delete all claims
defining computer programs from their patent applications before such
applications can be allowed. Only those claims defining computer programs that
do not “contribute in a non-excluded field” will have to be deleted.
Under recent practice, all claims directed to
computer programs were objectionable, irrespective of whether any equivalent
apparatus or method claims (directed to the same computer implemented
invention) were allowable. This practice was believed by many to be incorrect,
because it placed too much emphasis on the way the patent claim was written
(the form of the claim), rather than on the nature of the invention itself when
viewed in light of the prior art (the substance of the invention).
The new practice note reflects the High Court decision in Astron
Clinica Ltd and others, and the Comptroller of Patents Designs and Trademarks,
(2008 EWHC 85 (Pat)) handed down on 25 January 2008. In that decision, the
Judge stated:
“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.”
However, only those claims 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” would be allowable in
practice.
The decision is welcome, as it means that where a computer
implemented invention is not “a computer program as such”, patent applicants
will be able to protect their invention using apparatus, method and computer
program claims. Claims to the computer program may be of considerable value to
the patent holder by allowing them to seek damages that arise directly from
infringing copies of the software being put on the market by third parties.
The Astron Clinica decision and practice
note do not otherwise change the interpretation of the exclusion of “computer
programs as such” in section 1 of the Patents Act 1977, and inventions that are
considered to relate purely to computer programs making no contribution in a
non-excluded field (providing no technical effect) will still not be allowed.
However, a recent decision of the Patents Court, Autonomy
Corp. Ltd., handed down on 7 February 2008, suggests that the test for what is and
what is not an excluded “computer program as such” has now become a little
stricter. While approving the comments of the Judge in Astron Clinica,
the Judge in Autonomy Corp. Ltd. added the following as summary of the
existing law:
“If the claimed contribution exists independently of
whether it is implemented by a computer, in the sense of embodying a technical
process lying outside the computer, then the contribution will not be a
computer program as such”
“The mere fact that a computer program reduces the
load on the processor or makes economical use of the computer’s memory or makes
more efficient use of the computer’s resources does not amount to making a
better computer, and thus does not take it outside the category of computer
program as such”.
These comments consolidate the view that most computer
implemented inventions will be required to provide an effect outside of the
computer itself for them to be allowable, and that computer programs that
operate internally to improve the working of the computer itself will continue
to face objection.
The Judge does offer some hope by saying:
“If the contribution […]
solves a technical problem in the functionality of a computer it is unlikely to
be a computer program as such”
But it is not clear what, if processor load, economical use
of the computer’s memory and more efficient use of the computer’s resources,
are not considered relevant, what “technical problems in the functionality of a
computer” remain. No doubt further case law will clarify this point.
If you have any questions about how the new practice note
or decisions affect your patent application or portfolio, please contact
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