Intellectual Property Office
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Change in UK-IPO Practice regarding patents for computer programs
The UK Intellectual Property Office (UK-IPO) has today issued a Practice Notice setting out a change in its approach to patents for computer programs in certain narrow circumstances.
In a judgment in November 2006 in the cases of Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan's Application [2007] RPC 7 ("Aerotel/Macrossan"), the Court of Appeal substantially reinterpreted the law on patentable subject matter in the field of computer implemented inventions. However, that judgment left open a question about the wording of patent claims: 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 explained at the time, the UK-IPO concluded that claims to computer programs or to programs on a carrier were not allowable. This change of practice was challenged jointly by a group of patent applicants. They argued that if their computer implemented methods and apparatus were patentable, they should also be able to protect the underlying computer programs themselves. This challenge led to a hearing before Mr Justice Kitchin in the High Court (Astron Clinica's Application and others Applications [2008] EWHC 85 (Pat)
In his judgment, Kitchin J has now clarified the law in this area, and decided that patents should, as a result of applying the test formulated in Aerotel/Macrossan, be allowed to protect a computer program if, but only if, the program implements a patentable invention. This ruling is a narrow one which places a greater emphasis on the substance of what has been invented than the words used in the claim. It does not have the effect of making computer programs generally patentable in the UK but it does allow innovators to enforce all aspects of their patentable inventions directly.
The UK-IPO has decided not to appeal this judgment and will be following it with immediate effect.
Editor's Notes
1. A full copy of the Practice Notice can be viewed at http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter.htm
2. A copy of the judgement in the cases Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan's Application [2007] RPC 7 ("Aerotel/Macrossan") can be viewed at http://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html
3. A copy of the judgement (Astron Clinica's Application and others Applications [2008] EWHC 85 (Pat) can be viewed at http://www.bailii.org/ew/cases/EWHC/Patents/2008/85.html.
4. What is patentable in the UK is determined by the Patents Act 1977 which is aligned with the European Patent Convention (EPC). Among other things, this states that patents are not available for computer programs as such.
5. The overall UK-IPO approach to computer programs (and other exclusions from patentability, such as business methods) can be found in the previous Practice Notice here http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter.htm]
6. Prior to the Aerotel/Macrossan judgment, the UK-IPO allowed claims of this form. This change therefore restores the UK-IPO's earlier practice.
