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.

From Vicom to Astron Clinica

For those who have not yet had enough of the recent kerfuffle over computer program patent claims in the UK, IPKat co-blogmeister David has written a short article on the subject. This was written at the request of Laurence Eastham, editor of the publication Computers & Law, and it will apparently be making an appearance in the next issue (not the latest issue: right). The article is already available online here, but unfortunately to subscribers only. The author is therefore making it available to all interested readers here. All constructive comments are welcome.

High Court allows computer program patent claims

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.