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Thursday, 7 February 2008

UK-IPO u-turn on software patents

After the recent decision of Astron Clinica (IPKat posts here and here), and a decent two week period for reflection, the UK-IPO have now decided that they will not be appealing against the decision. Consequently, a new practice notice has just been issued by the UK-IPO (right: not a u-turn but a 'clarification'), which says the following:

1. The Office's Practice Notice dated 2 November 2006 detailed the way patent examiners should assess whether inventions are for patentable subject matter following the judgment of the Court of Appeal in the matters of Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan's Application [2007] RPC 7 ("Aerotel/Macrossan"). Among other things, paragraph 14 of that Notice recorded the Office’s view that Aerotel/Macrossan left open a question over permissible forms of claim: can claims to a computer program (or a program on a carrier) be allowable when other claims in a different form, claims covering the use of that particular program, would be allowed? For reasons the Notice explained, the Office concluded that claims to computer programs or to programs on a carrier were not allowable.

2. In his judgment in Astron Clinica and other’s Applications [2008] EWHC 85 (Pat) ("Astron Clinica"), Kitchin J has now clarified the law in this area. He has decided that where, as a result of applying the test formulated in Aerotel/Macrossan, claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable then, in principle, a claim to the program itself should also be allowable. However, Kitchin J made it clear that the claim to the computer program must be drawn to reflect the features of the invention which would ensure the patentability of the method which the program is intended to carry out when it is run. Where, but only where, these conditions are met, examiners will no longer object to claims to a computer program or a program on a carrier.

3. The Office will implement this change in approach immediately. Apart from this one change, the practice of the UK-IPO remains as set out in the Practice Notice of 2 November 2006.

This appears to settle for now the matter of computer program claims, which many will be relieved to see (although not, of course, those against software patents in general). The IPKat sees no reason why he should not have the following claim allowed by a UK-IPO examiner (where claim 1 is an allowable method claim):

"A computer program comprising computer program code adapted, when said program is loaded onto a computer, to make the computer execute the procedure of claim 1".

There is nothing wrong with this, according to Kitchin J in Astron Clinica and the new practice notice, so one of the IPKat's amenuenses will be putting exactly this form of claim to a UK examiner in the near future, in the expectation of it being allowed. After all, we should be looking at the invention as a matter of substance, not the form in which it is claimed. Can anyone see the reason why this claim would not be allowed at the EPO? The IPKat suspects he can, but would like others to first point out why he is wrong, yet again, on the subject.


Gobhicks said...

"A computer program comprising computer program code adapted, when said program is loaded onto a computer, to make the computer execute the procedure of claim 1".

If the EPO would allow a claim that recited the procedure of claim 1 in full, rather than by reference to claim 1, then as a matter of substance the subject matter of the respective claims would be identical. The only possible issue I can see would be Art. 84, and it seems to me that the formulation above is clearer and more concise than full recitation, since there can be no doubt that method implemented by the claimed program corresponds exactly to the method claim.

Or am I missing something?

Anonymous said...

It is missing reference numerals, or are there no drawings? ;-)

Anonymous said...

Well, it may well be that allowing a claim for a computer program with a scope wide enough to include the program in printed form - as for example in a text book - would mean stretching things a just little bit?

Anonymous said...

A similar approach of referring to claims of a different category to achieve a concise wording of the claim is allowed at the EPO.
This has been decided by EPO Board of Appeals decision T0410/96, where a system claim was phrased only by referring to the method claim. Keep in mind that the computer program is an accepted category at the EPO. Then the reasoning of T0410/96 provides the grounds for accepting the short form for computer programs as well.

Here is the example claim of that decision:

Claim 6: "Data processing system comprising means for carrying out the steps of the method according to anyone of the claims 1 to 5."

In its decision, the BoA also provides a reasoning why in this case the inclusion of method steps in a system claim is not unclear (this is not true in general).

For a full text of the decision see:

David said...

Perhaps I should offer a clue then: T 424/03, point 5.3 of the reasons.

Ross said...


Sort of what I thought before reading the clue (honest!), the claim fails the "form" test, because it is directed to a computer program as such.

I'm also not so sure about the conditional bit ("when said program is loaded onto a computer") ...

Am I right? (about the first point at least)

Gobhicks said...

OK, T424/03-5.3 effectively provides two separate factors that make the claim acceptable; in effect: 1 - the technical character of the computer readable medium is enough to esape the exclusion. 2 - the "contribution" provided by the actaual program has a technical character and qualifies as "inventive".

I see your point David, and to me the UK approach makes much more sense. Relying on the recitation of a "medium" to get over the exclusion hurdle reeks even more than the "any hardware" idea that it builds on. Why not just look at the SUBSTANCE and decide whether anything of novel and non-obvious technical value has been added to human knowledge?

What does "technical" mean again?

Anonymous said...

I don't agree with the Kat's view that a claim of the form 'A computer program...' would not be allowed by the EPO. (Kat wrote: 'Can anyone see the reason why this claim would not be allowed at the EPO?')

Claims of this form are allowable at the EPO, provided that the computer program provides the necessary 'further technical effect' (e.g. T1173/97). In other words, at the EPO it is indeed the substance of the claim, not the form, which is of over-riding importance.

Claims of this type are granted all the time. As an example, see T1351/04, particularly Reasons para 13.

Mainland europe cpa/epa

David said...

Thank you for putting me right. It seems that a claim in the form of "A computer program for instructing a computer to perform the method of claim 1" would therefore now be allowable before either the UK-IPO or EPO. I was perhaps taking T 1173/97 and T 424/03 too literally, and assuming that the Hitachi 'technical character' test had to be passed. Clearly that isn't the case for computer programs.

Gobhicks said...

That's why we love the IPKat - interesting and enlightening!

Now, having had a look at at T1351/04, can anyone square that EPO decision (with regard to the patentability of the basic subject matter, rather than the program claims) with, for example UK-IPO decision BL O/238/07? See in particular parts 7.2 and 7.3 of the T1351/04.

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