In a surprising (to this Kat at least) turn of events, the Honourable Mr Justice Kitchin has ruled today that the current UK Patent Office practice of flatly rejecting patent claims to computer program products is wrong. The judgment, in the matter of several GB patent applications in the name of Astron Clinica and others, is now available from BAILII here. Many thanks go to John Gray of Murgitroyd & Co. for originally passing the news on.
After comprehensively summarising the last couple of decades of legal developments, covering the usual suspects (Gale, the oft-misspelled Merrill Lynch, Fujitsu and various EPO decisions), Kitchin J arrived at the main question in this appeal, which was whether the UK-IPO was correct in construing that the Court of Appeal judgment in Aerotel/Macrossan inevitably prohibited the patenting of all computer programs, or whether the old approach of considering the 'potential' technical effect of a computer program (following the EPO approach) could be taken into account, in a similar way to considering the effect of a method claim that would inevitably be carried out by running a program (which all of the applications under appeal contained). The UK-IPO had concluded that Aerotel/Macrossan ruled out computer program product patent claims, and consequently reverted to its old practice of rejecting such claims.
Kitchin J, however, considered that the point did not actually arise in Aerotel/Macrossan, because the court was not even asked to consider the question of computer program products claims. Although the Court of Appeal had criticised many EPO decisions, it had not criticised the main decisions relating to this point, being T 1173/97 and T 935/97. Also, the new four step test approach should produce the same result as the 'old' approach, and the Court of Appeal had said as much by saying that Merrill Lynch must be followed.
Probably more importantly, Kitchin J recognised that it was highly undesirable to have provisions of the EPC construed differently at the EPO as compared with the courts in the different contracting states, and that decisions of the Boards of Appeal should be highly persuasive. Mention was also made of the contrasting approach taken in Germany, where the EPO line tends to be followed closely.
The apparent approval of the UK-IPO's rejection of computer program product claims in Oneida Indian Nation's Application [see IPKat commentary here] was either rejected by Kitchin J as not actually meaning that, or was in the alternative respectfully disagreed with (as the High Court is allowed to do, in contrast with the Court of Appeal), depending on the different possible interpretations of Christopher Floyd's judgment.
In conclusion then, Kitchin J found that the appeals should be allowed. Each application concerned a computer related invention where the examiner had allowed claims to, in effect, a method performed by running a suitably programmed computer and to a computer programmed to carry out the method. The Hearing Officer had rejected corresponding program claims on the basis that they were necessarily prohibited by Article 52, and in Kitchin J's judgment he had erred in doing so. The cases were remitted to the UK-IPO for further consideration in light of the judgment.
The IPKat is, frankly, quite amazed by the judgment, because he was (apparently quite wrongly) convinced that there was no room for manoeuver after Aerotel/Macrossan, in particular in light of one of the central points of A/M being that the scope of the monopoly must be considered when construing the claim, which appears to have formed the basis of the UK-IPO's change of practice. He wonders whether the story has run its course for now, and if we can simply all go back to falling into line with the EPO, or if the UK-IPO will judge that this one is worth going further on. Will they? Can they? Should they? What would/does the embattled Lord Justice Jacob think? The IPKat would very much like to know, and he suspects his readers may be just about to tell him...
Catch up with the issues from the IPKat's previous posts here, here, here, here, here, here, here, here, here and here (to cite just a few).
28 Jan Update: This post has now been linked to, and commented on, in (at the latest count) Slashdot, I/P Updates, Patently-O, the IAM blog, and IP:Jur, as well as in Greg Aharonian's latest Patnews email. Many thanks to all. Expect something to appear shortly on Out-Law and the Register.