High Court holds that computer program claims are patentable

The High Court recently ruled that the UK Intellectual Property Office’s (‘IPO’) practice of indiscriminately rejecting patent claims for computer programs is wrong. As a result the IPO, deciding not to appeal the decision, have amended their practice note which offers guidance on the issue.

Background

Article 52(1) of the European Patent Convention (“EPC”) prescribes that “European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step”. However, Article 52(2)(c) specifies that “schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers” are not to be regarded as “inventions” within the meaning of Article 52(1).

Article 52(3) of the EPC provides that the provisions of Article 52(2) “shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such”. The English law equivalent of Article 52 is found at Section 1(2) of the Patents Act 1977.

In late 2006, the UK Court of Appeal backed a decision by the IPO (then known as the ‘UK Patent Office’) not to allow a patent for a computer-based system designed to help with the completion of the forms required for a company registration. The Court laid down a four-step test to be used by examiners when assessing, in the context of Article 52 exceptions, the patentability of inventions relating to business methods and software. Patent examiners should:

• properly construe the claim;
• identify the actual contribution;
• ask whether it falls solely within the excluded subject matter; and
• check whether the actual or alleged contribution is actually technical in nature.

It was widely considered that the test and decision in this case (Aerotel/Macrossan reported by Law-Now in November 2006) ruled out any chance of computer program products qualifying for patent protection. This was certainly the view of the Patent Office whose Director, when speaking publicly about the issue, stated ‘It is likely [the Patent Office] will refuse something that looks like just software’. In fact, in the week following the Court of Appeal’s decision in Aerotel/Macrossan, the Patent Office issued a practice note on how software and business method applications would be considered confirming this position.

The High Court’s Ruling

In his judgment, Mr Justice Kitchen reached the main question of the appeal, specifically whether the IPO was correct in concluding that Aerotel/Macrossan ruled out computer program patent claims altogether. The alternative being of course that it did not, and that instead the approach favoured by the European Patent Office (‘EPO’) of considering the ‘potential’ technical effect of a computer program could be taken into account.

Interestingly Kitchin J considered that in Aerotel/Macrossan the point had not even arisen, as the court was not asked to specifically consider ‘what claims were permissible in the case of a computer related invention which made a contribution extending beyond excluded subject matter’. Furthermore, Kitchin J could find nothing in the Court of Appeal’s reasoning to suggest that all computer programs are necessarily excluded. In fact he explained that, following the four-step test, in the case of a computer related invention which produces a substantive technical contribution, step two will identify the contribution and step three will lead to the answer that it does not fall wholly within excluded matter. It is important to note that if the technical contribution is not a substantive one, then the fourth part of the test will fail. Kitchin J further stated that the answer to the test’s questions will be the same ‘irrespective of whether the invention is claimed in the form of a programmed computer, a method involving the use of that programmed computer or the program itself’.

Click here to see the full High Court judgment.

Comment

This decision makes it clear that as long as an invention makes a substantive technical contribution, it will be patentable despite being implemented by a computer program. Kitchin J recognised in his judgment that it is highly undesirable to have provisions of the EPC construed differently in national courts and IP Offices as compared with the EPO. In this respect the decision serves to bring the UK approach into line with that of the EPO, giving would be patent owners more certainty when making their applications in the various jurisdictions party to the EPC.

The IPO has decided it will not be appealing the decision, instead issuing a new practice note confirming Kitchin J’s interpretation of the law.

Click here to see the IPO’s practice note.