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Monday, 26 November 2007

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.

2 comments:

Anonymous said...

To assist the IPKat on the EPC 2000 point, section 3(1) of the Patents Act 2004 amends section 63 of the Patents Act 1977 by introducing the following section into the law in respect to of partially valid patents:

(4) The court or the comptroller may also grant relief under this section in the case of a European patent (UK) on condition that the claims of the patent are limited to its or his satisfaction by the European Patent Office at the request of the proprietor.

Although the section 4 only refers to limitation of a European Patent (UK), Article 105b paragraph 3 provides that any decision to limit a European patent at the EPO “shall apply to the European patent in all the Contracting States in respect of which it has been granted.”

Thus if the Court rules that claims to computer readable media are not permitted in the UK and a European Patent (UK) with such claims were to be enforced in the UK courts relief for infringement could be made conditional on filing for central limitation at the EPO with the effect that the proprietor lost those claims throughout Europe.

Filing separate claims at the EPO just for the UK under rule 138 EPC would not appear to be an option since the implementing regulations only permit different claims in different states where the EPO is informed of national prior rights and not on the basis of differences between national interpretations of the EPC.

Of course none of these problems arise if the UK courts follow the lead of the Bundesgerichtshof in Suche fehlerhafter Zeichenketten GRUR Int. 2002, 323 (also available in English in IIC 2002,753) and conclude that a proper interpretation of the term "computer program as such" permits claims to computer programs where the programs when executed solve a technical problem.

David said...

Many thanks to the anonymous commenter above (NF, perhaps?). I understand the argument that a court might order limitation of an EP patent under the new EPC2000 provisions, but I don't think the argument in relation to claims currently only invalid in the UK is a very strong one. I don't see any sensible UK judge ordering computer program product claims to be cancelled for all territories when they are only invalid under a UK interpretation of the law. Until we get a decision from the Enlarged Board one way or the other, I don't really see any way forward. Of course, I may be proved wrong once this case reaches its natural conclusion.

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