UK: Software Patents: The More Things Change ...

Last Updated: 23 May 2008
Article by Ralph Cox

As noted in our Winter 2007 Update, the Court of Appeal reviewed the law in the UK on the patentability of computer programs in the Aerotel case1 and laid down a 4 step test for use in deciding whether a given software invention is patentable or not. The UK IPO changed its practice to follow that judgment but 4 recent decisions of the High Court show that it has been over-zealous in rejecting software patents. In response, the IPO has announced a partial change in practice to allow claims to programs stored on suitable media.

Article 52 of the European Patent Convention excludes computer programs per se from being patentable. Prior to Aerotel a number of different tests or approaches to determining the application and scope of this exclusion had developed in UK case law, with several more being used by the EPO. The Aerotel decision therefore brought the UK case law back into line with earlier Court of Appeal authority which required a program to provide a technical contribution to the known art in order to be patentable. Somewhat ironically given subsequent developments, Aerotel also approved a 4-step test proposed by the UK IPO for determining whether a technical contribution was present. The test is to:-

  1. properly construe the claim;

  2. identify the actual contribution;

  3. ask whether it falls solely within the excluded subject matter; and

  4. check whether the actual or alleged contribution is actually technical in nature.

Programs on media

The issue left open by Aerotel is whether patent claims to computer programs (or, more precisely, claims to programs on suitable storage media or carriers) are allowable. The EPO considers they are allowable if the program has the potential, when run on a computer, to bring about a technical effect beyond the normal physical interactions between the program and the computer. The UK IPO had taken the opposite view. The issue came to be decided by the UK's High Court in the case of Astron Clinica2 which concerned 6 patent applications only partially allowed by the UK IPO. The method and apparatus claims in these applications - effectively claims to methods performed by running a suitably programmed computer and claims to a computer programmed to carry out the method respectively - had been allowed as the programs did provide a technical contribution. Given that, it is difficult to see the logic behind the UK IPO then rejecting claims to the programs themselves but it did so relying on Article 52 interpreted in light of Aerotel. The applicants appealed the decision.

There was a practical reason behind the appeal: the inventions would be exploited by selling the programs on a carrier such as CD-ROM or by download over the Internet rather than being preloaded on PCs. Competitors would do the same. Therefore without claims covering programs the protection afforded against infringements in the UK would be limited to contributory infringement (which, unlike direct infringement, is not strict liability) and there would be no protection against the production and sale of programs intended for use abroad.

Reviewing the Aerotel decision, the High Court could not detect any reasoning suggesting that all computer programs were necessarily excluded by Article 52. The substance rather than the form of the matter should be looked at and so it should make no difference in applying Aerotel's 4 step test whether the invention is claimed in the form of a programmed computer, a method involving that computer's use or the program itself. Further, it was highly undesirable for Article 52 to be construed differently by the UK IPO and the EPO.

The applications were therefore remitted to the UK IPO for further consideration. The UK IPO also issued a new Practice Notice3 implementing the change of approach to allow claims to programs on carriers but stating that in other respects its Practice Notice issued after Aerotel remains in effect4.

Application of the 4-step test

As indicated above, Astron-Medica is not the only recent decision that has over-turned the UK IPO's decisions on software patents. A second decision is that in Symbian5. Symbian's invention related to a method of accessing data in a computing device so as to avoid malfunctions in the dynamic link library (the collection of programs or files called up as required by an executable program running on a computer at any given time). Applying the 4 step test, the UK IPO decided that the claims were to a computer program as such, provided no technical contribution and so were excluded from patentability under Article 52. In a parallel application before it, the EPO decided that the claims were allowable. Symbian appealed the UK IPO's decision to the High Court.

The main issue was whether, in applying the 4 step test, the UK IPO could ignore the check under limb 4 if the answer to the question in 3 was "yes", i.e. the alleged contribution of the invention was entirely within excluded subject matter. The High Court decided it was wrong to do so. The two limbs were inseparable parts of the same question. On the facts it also considered the UK IPO was wrong to regard an improved interface with the DLL provided by the program as not having a relevant technical effect. The invention addressed a technical shortcoming and was not limited to the processing of data only. Symbian's appeal was therefore allowed. This time the UK IPO has not accepted it was wrong but indicated it would appeal to the Court of Appeal.

Business methods

As well as excluding computer programs per se, Article 52 excludes business methods. Often the 2 exclusions fall to be considered together. Such a case was IGT/Acres Gaming6. IGT sought patent protection for its idea of using conventional cards (e.g. credit cards, driving licences) in casinos to access a player's account, rather than going to the trouble of running a loyalty card system. The novel aspect of the invention was said to be doing this without needing to decrypt the information on the conventional card. The UK IPO applied Aerotel's 4 step test and held that the invention was excluded from patent protection as it was no more than a method of doing business.

The High Court disagreed. If the concept of using cards in this way without decryption was new and not obvious, it would be so irrespective of the business in which it was used. The concept could be stated without any reference to any business method as such. It could not therefore be said to be within the exclusion. The application's claims directed to computer programs were not within the software exclusion either (following Astron Clinica). However, the High Court considered that the claims were not sufficiently clear as to what was meant by "encrypted" information and "without decrypting" it. The High Court therefore gave IGT the choice of applying to amend or appealing its decision to the Court of Appeal.

Mental acts

The fourth case, Kapur7, concerned 5 patent applications relating in one way or another to document management systems which were rejected by the UK IPO as being to computer programs as such or, if not, to methods of performing mental acts - a further exclusion from patentability under Article 52. Mr Kapur appealed to the High Court. For efficiency, the High Court considered one application only which related to a method of storing data from deleted files, which would otherwise be lost, in a separate file store so that it could be made available again if the computer user wanted.

On the computer program exclusion, the High Court noted that the mere fact that the invention as claimed could be implemented manually as well as on a computer did not prevent it from being to a computer program as such. Here, even though the invention improved the way in which data is handled there was no technical effect beyond a program running on a computer. The invention was therefore excluded from patentability.

Regarding the mental act exclusion, the High Court reviewed the authorities, including Aerotel, and concluded that a narrow interpretation should be followed such that "provided the claim cannot be infringed by mental acts as such, its subject matter is not caught by the exclusion". Non-mental elements in a claim would therefore take the invention outside it. The judge admitted to "a feeling of some unreality" with this aspect of the case as it was far from clear that Mr Kapur had really intended to cover non-computer implementations. Nonetheless, the UK IPO had incorrectly ignored the non-mental elements in its analysis and therefore the case was remitted for further consideration.

Comment

The Astron Clinica decision is a welcome one for software designers as it has brought the UK IPO's approach on claims for programs on carriers into line with the more flexible approach in the EPO. The decisions as a whole also show that the courts are prepared to take a more holistic approach than the UK IPO to inventions in the software field and how they relate to the various exclusions from patentability under Article 52. Pending any further appeal in the Symbian case, the UK IPO should follow suit. However, as illustrated by Kapur, the EPO will generally remain the better forum for obtaining software patents while the "technical contribution" requirement remains good law in the UK. In contrast, current EPO jurisprudence8 allows any claim which involves the use of or is to a piece of hardware however mundane to bypass the Article 52 exclusion and move on to an assessment of inventive step.

Footnotes

1 Aerotel Ltd v Telco Holdings Ltd & others and Macrossan's Patent Application [2007] RPC 7

2 Astron Clinica Ltd & Ors' Applications [2008] EWHC 85 (Pat)

3 7 February 2008: http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter-20080207.htm

4 2 November 2006: http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter.htm

5 Symbian Ltd v Comptroller-General of Patents [2008] EWHC 518 (Pat)

6 IGT/Acres Gaming v Comptroller-General of Patents [2008] EWHC 568 (Pat)

7 Kapur v Comptroller-General of Patents [2008] EWHC 649 (Pat)

8 Hitachi/Auction Method (2004) T258/03 and Microsoft/Data Transfer (2006) T424/03

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