In January the High Court demanded the re-examination of six
companies' patent applications, saying that the UK-IPO was wrong to
reject them on the grounds of their being software.
The UK-IPO, which told OUT-LAW.COM at the time that it was
considering an appeal, has accepted the ruling and changed its
advice to companies on the question of software patents.
"This ruling is a narrow one which places a greater emphasis on
the substance of what has been invented than the words used in the
claim," said a statement from the UK-IPO. "It does not have the
effect of making computer programs generally patentable in the UK
but it does allow innovators to enforce all aspects of their
patentable inventions directly."
The question of what can and cannot be patented in the realm of
software is a complex one which has been the subject of a number of
rulings in recent years. The legislation provides that it is not
possible to patent a computer program 'as such', meaning something
which is only a computer program is excluded subject matter.
UK patent law comes from the European Patent Convention (EPC),
but the UK-IPO has traditionally differed from the European Patent
Office (EPO) in how it interprets the law, and is less likely to
award patents to software inventors.
The legal tests for whether software should be awarded a patent
or not were laid down when a case involving applications by Aerotel
and Macrossan reached the Court of Appeal in 2006.
In January's High Court case Mr Justice Kitchin found that there
were some types of patent applications that should have been
allowable but which were rejected by the UK-IPO. It ruled in a case
brought by six failed software-related patent applicants that their
cases were unfairly rejected by the UK-IPO.
That ruling criticised the UK-IPO's approach in interpreting the
Aerotel/Macrossan findings too narrowly, unfairly excluding all
software patents.
"The question I must now consider is whether the decision
prohibits the patenting of all computer programs and, in
particular, those which under the old approach would have been
considered to make a conventional computer operate in a new way so
as to deliver a relevant technical contribution," wrote Mr Justice
Kitchin in his High Court ruling.
"UKIPO has apparently concluded that it does and so has reverted
to its previous practice of rejecting all computer program claims…I
do not detect anything in the reasoning of the Court of Appeal
which suggests that all computer programs are necessarily
excluded," he wrote.
The Aerotel/Macrossan case produced a four step test which must
be followed to determine whether something can be awarded a patent
or not. That test asks that patent examiners: "i) properly construe
the claim; ii) identify the actual contribution; iii) ask whether
it falls solely within the excluded subject matter; iv) check
whether the contribution is actually technical in nature".
The High Court backed that test, but took issue with the way the
UK-IPO had applied it. It also agreed with the patent applicants
when they said that the UK's interpretation should not differ too
greatly from the EPO's.
"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 a Contracting state," Mr Justice Kitchin
said. "The new approach can be interpreted to produce a result
consistent with that obtained by applying the reasoning of the
Boards of Appeal."
