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Software patent rulings become Patent Office benchmark

The UK Patent Office will use the judgments in two recent Appeals Court patent cases as the benchmark for all future disputes over the patentability of software. The cases will replace all past case law as the basis for future decisions, it said.09 Nov 2006

The decision is contained in a practice note issued by the Patent Office less than two weeks after the court made its decision. The cases, considered together, involved applications by Aerotel and by Neal Macrossan.

"This notice announces an immediate change in the way patent examiners will assess whether inventions are for patentable subject matter," it said. "The Office takes the view that Aerotel/Macrossan must be treated as a definitive statement of how the law on patentable subject matter is now to be applied in the UK. It should therefore rarely be necessary to refer back to previous UK or European Patent Office (EPO) case law."

The Macrossan case was closely watched by patent experts because it dealt with the controversial area of software patents. The court ruled that Macrossan's invention – an online system which helped with form filling – could not be patented because it was "a computer program as such".

David Woods, a lawyer with Pinsent Masons, the law firm behind OUT-LAW, said that the Patent Office's notice will clarify a controversial area for those seeking patents. "The Patent Office's position is clear," he said. "They are not going to look at a body of jurisprudence, they are going to look at one case. And they are not going to be hugely influenced by Europe because they have put a marker down that says that they appreciate that Europe has taken a different approach and they will follow the UK case."

Software is patentable in the US and in some cases in Europe. The law in the UK says that inventions which are business methods and computer programs and nothing more cannot be patented. There is a strong lobbying effort in Europe calling for software patents across Europe, but many smaller developers are opposing the potential move.

In allowing it to proceed to the Appeals Court, one judge ruled that Macrossan had "a real prospect of success", but Macrossan lost his appeal.