The Chartered Institute of Patent Attorneys (CIPA) has said that
the IPO's guidance could cause uncertainty and increase the cost of
doing business in the software industry.
The IPO lost a case at the Court of Appeal earlier this year in
which its judgment that software from Symbian should not be awarded
a patent was overturned.
The judge in the case, Lord Neuberger, did not follow the
process set out by the IPO, which was derived from cases involving
Aerotel and Neal Macrossan, but the process set out in an earlier
judgment, in a case involving Vicom.
Many observers saw the ruling as a rejection of the IPO's
previous methods of judging software patent claims. The IPO has
said, though, that it will continue to apply the Aerotel/Macrossan
test to decide whether an invention qualifies for a patent.
"Since both tests are legitimate for determining excluded
matter, examiners will apply the structured approach of
Aerotel/Macrossan to address the fundamental question whether a
claim falls solely within the excluded matter," said the IPO's new
guidance. "The Office considers that as a matter of practice this
will achieve outcomes consistent with the Court of Appeal judgment
in Symbian more reliably."
CIPA said, though, that the IPO's approach was not helpful in
clarifying the situation for inventors.
"The IPO’s latest practice note means that innovators in the
computing technology field continue to face a difficult time at
home protecting inventions for which the European Patent Office
will grant patents, and which the UK Court of Appeal considers
should be patentable," said a CIPA statement.
"It states, perhaps surprisingly in view of Lord Neuberger’s
remarks, that examiners will continue in practice to apply the very
test that was criticised by Lord Neuberger as, in the IPO’s view,
it is intended to achieve the same outcome as the test applied in
Symbian," said CIPA. "There is what can best be described as a
grudging concession that computer-implemented innovations are
technical and can be patentable without an external effect."
The Symbian software was allowed a patent by the Court of Appeal
because it improved the operation of the software in a mobile
phone, which the court said meant that it had a technical
effect.
The new IPO guidance outlines the change in the IPO's approach
in the aftermath of the Symbian decision.
"The Intellectual Property Office has previously recognised that
an invention which either solves a technical problem external to
the computer or solves "a technical problem within the computer" is
not excluded," it said. "What Symbian has now shown is that
improving the operation of a computer by solving a problem arising
from the way the computer was programmed – for example, a tendency
to crash due to conflicting library program calls – can also be
regarded as solving "a technical problem within the computer" if it
leads to a more reliable computer."
"Thus, a program that results in a computer running faster or
more reliably may be considered to provide a technical contribution
even if the invention solely addresses a problem in the
programming," it said.
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