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UK Patents Court Holds Software Patents May Be Enforceable

By Sarah Sorscher — Edited by Wen Bu

In re Astron Clinica, High Court of Justice, Chancery Division, Patents Court (EWHC (Pat)), January 25, 2008, Case No. CH/2007/APP/0466
Opinion

On January 25, the United Kingdom High Court ruled that the U.K. Intellectual Property Office (IPO) cannot categorically reject patent claims for computer programs under Section 1(2) of the Patents Act of 1977 (designed to implement Article 52 of the European Patent Convention), which prohibits “programs for computers” from being considered inventions for the purposes of patenting. Noting the “apparent illogicality of allowing claims to a suitably programmed computer and to the method performed by the computer so programmed but not to the program itself,” Justice Kitchin, writing for the court, held that computer programs themselves (as recorded on suitable storage media) may be patentable if the program makes a conventional computer deliver a new technical effect.

The WLR Daily offers a synopsis of the decision.
David Pearce of IPKat expressed surprise at the decision in light of the strong language that had been used in the earlier U.K. Court of Appeal ruling in Aerotel/Macrossan and noted that this decision, if left intact, amounts to “falling into line with the EPO.”
Andres Guadamuz criticizes both this decision and the earlier EPO decisions for changing the meaning of an otherwise clear treaty provision.
The Register’s Kelly Fiveash takes a more positive view, commenting that the ruling “could open up the playing field for small UK businesses looking for a leg-up.”
Finally, Emma Barraclough of Managing Intellectual Property predicts that the ruling might reverse the trend of UK companies applying for patents through the EPO instead of directly through the UKIPO.

This decision reversed an earlier finding by the UKIPO that program claims by five different applicants were not allowable, while corresponding method and apparatus claims would be accepted. The decision had stated that patent claims would be allowed for 1) methods performed by running a suitably programmed computer and 2) computers that had been programmed to carry out that method, claims for patents on the programs themselves cannot be allowed.

Justice Kitchin cited rulings of the EPO Boards of Appeal establishing that the Article 52 exclusion did not apply where the claimed subject matter had a technical character. The court held these decisions to be in accord with the logical consequences of a corresponding line of precedent established by the U.K. Court of Appeal. It summarized earlier cases as drawing on two common elements: 1) claims to computer related inventions must be considered a matter of substance (whether a program has technical effects) and not form (whether a program is stored in a disk or running on a computer), and 2) that a claimed invention’s failure to make a relevant technical contribution is a basis for rejecting that claim.

Justice Kitchin also took care to point out that this holding is in accord with a 2006 decision by the Court of Appeal, Aerotel/Macrossan, which rejected the “any hardware” approach the EPO had introduced in a trio of recent cases. Aerotel/Macrossan criticized the approach taken in the EPO cases as excepting any claim involving a piece of physical hardware from the Article 52 exclusion. The court characterizes the UKIPO decision as a misinterpretation of Aerotel/Macrossan, which was never meant to extend the prohibition on patenting of computer programs over all programs and thus erase the “technical effect” test the UKIPO had previously adopted.

Justice Kitchin summarizes the Aerotel/Macrossan approach by laying down a four-step process to be followed in reviewing a computer program:

“i) properly construe the claim;
ii) identify the actual contribution;
iii) ask whether it falls solely within the excluded subject matter [of Article 52]
iv) check whether the contribution is actually technical in nature

The ruling recognizes that “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.” Though constrained by Aerotel/Macrossan from following recent EPO developments, Kitchin considers the current holding to be consistent with established EPO precedent, citing a recent Board of Appeal decision, Tao Group Limited (2007), as evidence that these earlier decisions are still followed by the EPO.

Posted On Feb - 1 - 2008 Comments Off

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