No computer program claims at the UK-IPO?

The IPKat is puzzled by a recent decision at the UK-IPO. In WesternGeco Limited's Application (BL O/135/07), the applicant appealed against an examiner's decision to refuse an application (GB0329367.7) to patent a method of processing seismic data. The method involved various complicated multi-dimensional mathematical analysis, and the claimed invention attempted to cover this method as applied to geophysical data.

The hearing officer found that the claimed invention was excluded under section 1(2) for being a mathematical method as such, following the four-step test of Aerotel/Macrossan.

Various dependent claims, which further detailed the mathematical method, were also found to be excluded for the same reasons. Two dependent claims, however, were found to be not excluded because they limited the method to seismic surveying, including a step of "determining one or more parameters relating to the physical properties of the earth's interior". The hearing officer found these claims to be acceptable, because they did not fall solely within the meaning of a mathematical method.

The hearing officer considered that a further claim to a computer program, dependent in part on the allowable claims, was not allowable. A practice notice from November 2006, issued shortly after the Aerotel/Macrossan judgment, was cited as the reason for not allowing this form of claim. The relevant part of the practice notice, which refers to questions that were left open by the judgment, reads (at paragraph 14):

"Also left open is 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? In the past, the Office has allowed such claims on the basis that substance should prevail over form. Whilst the judgment maintains the emphasis on substance over form, it also characterises the first step as deciding what the monopoly is, and if the monopoly does not go beyond the program, the contribution is also unlikely to go beyond "a program for a computer". Accordingly, whilst examiners will continue to assess each case on its merits, it seems likely that few claims to programs in themselves (or programs on a carrier) will pass the third test".

To this Kat's mind, this does not call for all claims to a computer program to be rejected but merely expresses a view that such claims are unlikely to be allowed. In this case, two of the method claims were viewed as being allowable, but a computer program claim dependent on either of these claims was not, even though the computer program would need to perform all the steps of the allowable claims.

This decision appears to be directly in contradiction to EPO practice, which (after T 1173/97) effectively allows computer program claims dependent on allowable method claims.

Another appeal against this sort of reasoning is being considered at the UK-IPO (see here for more details), the result of which is expected in the next couple of months. If the result is to be consistent with this decision, it appears that we will have an established practice at the UK-IPO that directly contradicts (rather than merely altering the grey areas of) the practice of the EPO. The IPKat suspects the story will not end there.