Software patents at the High Court

The IPKat was very pleased to be contacted by a little bird who was present on the first day of the High Court hearing of the appeal by Astron Clinica & others against the Comptroller General of Patents. The little bird shall, on their request, remain anonymous, but let’s arbitrarily call him Greenfinch (this has nothing to do with his/her real name). The IPKat has previously commented on the background to the appeal here and here.

The case relates to the UK-IPO's practice, following their interpretation of the Court of Appeal judgment in Aerotel/Macrossan, of refusing patent claims directed to computer program products even when such claims refer to claimed methods that are otherwise seen to be allowable. The patent applications in question had method claims that were all deemed to be allowable, but were refused solely on the grounds of having computer program product claims. The decision at the UK-IPO was not the first to refuse such claims under the new practice (the first was Western Geco), but it is the first to be appealed from the UK-IPO to the High Court.

The appellants allege that the UK-IPO’s practice undermines the ability of British industry to protect inventions reliant upon the development of new software. Each applicant has developed novel software, the control and distribution of which they say is critical to the success of their business. Nicholas Fox of Beresford & Co. said in the lead-up to the appeal,

“Copyright protection only protects code against copying. In contrast, patent protection enables a company to monopolise an invention even if competitors independently come up with the same idea. In order to protect their commercial interests companies need patent claims directed towards the products and processes that are sold in the market place. In the case of computer based inventions this means that claims to disks and downloads embodying an invention are required.”

In Court, the appellants argued that software on a disk represented a "dormant technical effect in waiting", analogous to a medical pill that just sat there doing nothing until the patient took it. Using the same principle, the software would produce a technical effect when run on the computer. [IPKat comment: this seems a new argument, and an interesting approach, but arguing by analogy is rarely helpful; after all, medicines themselves are not excluded under section 1(2)]

They argued that, following the landmark IBM decision T 1173/97 at the EPO, a computer program product is not excluded from patentability under Article 52(2) and (3) EPC if, when it is run on a computer, it produces a "further technical effect" which goes beyond the normal physical interactions between program and computer, i.e. between software and hardware. The EPO approach has been broadly consistent in its decisions since then.

Another point was that, from 13 December 2007, EPC 2000 will come into force. This would bring in an ability [under new Articles 105a-c] for central limitation or revocation of a European patent. The appellants argued this meant that if an EP(UK) patent was infringed and the claims revoked by a British Court, this would effectively mean revoking the claims in other EU states where the patent was perfectly valid. [IPKat comment: this seems entirely wrong, as there is to his knowledge no provision in EPC2000 to cause this to happen. Can any other readers enlighten him on what the argument was?]. At this point, Mr Justice Kitchin commented in a rhetorical question ‘So that would leave us effectively an island again ?’

The appellants also argued that this point had not been addressed in Aerotel/Macrossan, nor in the previous Court of Appeal decisions of Gale or Fujistu, and that a completely new point was being discussed.

Colin Birss, acting on behalf of the UK-IPO, then addressed the court. He agreed that the point of law had not been argued before. He argued, however, that Gale had addressed the point as such, in that if the invention was just software on a floppy disk then it was not patentable. He said,

“M’Lord I have to ask what is the contribution. Patents are given for something new. In one line M’lord that’s it.”

In Greenfinch’s humble opinion, this case is sure to be an epic, with five companies being represented under this banner [IPKat comment: I think there are only four now, one having pulled out after having their European application granted]. Greenfinch has it on apparently good authority that the case is sure to go all the way to House of Lords. He further wonders wonders whether the UK will be happy with being an island.

Unfortunately, that is where our little bird had to leave it. The hearing went on for a further two days, so if any other IPKat readers could let him know what went on he would be most grateful.