UK: Patently Obvious? Getting Protective Over Software Programs

Last Updated: 29 May 2008
Article by Richard Taylor

The debate over whether and to what extent it should be possible to patent software and computer-implemented inventions has heated up again following the decision in Astron Clinica and others Applications [2008] EWHC 85 (Pat). This key court decision brought into question how the law should be applied in the UK.

What The Ruling Said

Those with an interest in software development will no doubt have been intrigued by the High Court's ruling in Astron Clinica which said that the UK Intellectual Property Office (UK IPO) was wrong to refuse patent claims for computer programs. Five companies: Software 2000 (laser printing), Astron Clinica (cosmetic surgery imagery), Inrotis (identifying proteins in drug therapy), SurfKitchen (mobile internet services) and Cyan Technology (chip programming) have seen their appeals upheld by the High Court in May 2007 after their individual claims were rejected by the UK IPO.

The background to the case is that in Europe the law takes a narrower approach to software patents than the US, and excludes computer programs "as such" from the scope of what can be patented. European Patent Office guidelines interpret the words "as such" to allow patents to computer programs if they make a contribution to the art that is "technical" in nature - for example, a program that improves the ability of mobile phones to access the Internet.

The approach in the UK was set in November 2006 in a pair of landmark cases known as Aerotel and Macrossan. In those cases, the English Court of Appeal said that in assessing patentability you need to identify the actual contribution of the invention, and ask whether the actual contribution falls solely within subject matter that the law excludes from patentability, such as computer programs. If the "contribution" does fall solely within the category of computer programs then no patent will be granted. On this basis the Court refused to allow a patent for Mr Macrossan's computer program, which allowed the user to produce company incorporation documents via an interactive website. But it did allow that Aerotel could be granted a patent to a new combination of apparatus for making pre-paid telephone calls.

The problem in Astron Clinica was how the UK IPO then interpreted the Aerotel and Macrossan Judgments. The UK IPO considered that the Judgments meant that it could not grant patents for computer programs at all. It has been rejecting all claims to computer programs ever since the Judgments were handed down.

Justice Kitchin's ruling went against this interpretation. In each of the five inventions being considered, the UK IPO had allowed patent claims to the "method" that the companies had invented. For example, in the case of Software 2000, it had allowed a patent to a method of generating bit masks for use with laser printers which results in higher quality images, implemented by programming a computer in a particular way. But it had rejected the patent to the program itself. The Court held that the UK IPO was wrong to "blanket ban" computer programs in this way. It said that if the method performed by running a computer program was patentable then a claim to the program should be patentable as well.

What The Ruling Means

This ruling will be welcomed by patent lawyers. Software patents are a controversial field, as anyone who witnessed the ferocious opposition to the European Software Directive a couple of years ago will testify. There will be some in the computing community who will remain implacably opposed to all software patents always, and will see the ruling as a move towards wider patent monopolies that stifle application development. Others will see it as giving software developers due reward for their innovations. Whichever side of the line you fall, having inconsistent approaches across Europe helps no one, and so Justice Kitchin's ruling should be seen as a positive and helpful step.

The ruling does not, though, open the gate to a more liberal US-style approach to software patents. The underlying bedrock of European law on software patents is unchanged - software remains unpatentable in Europe, unless the invention brings more to the party than the software alone. Nevertheless, the UK IPO may well lodge an appeal against this Judgment, if only for the sake of certainty as to how it should approach such an important field. Expect more on this to come.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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