Software Patents in the UK – Back on Track?

(IPRinfo 1/2008)

Rosa Maria Ballardini
Researcher, INNOCENT Graduate School
IPR University Center / HANKEN-Swedish School of Economics and Business Administration

To the surprise of many following the ”software patents eternal debate”, the British practice has made a U-turn again. In January 2008, the UK was brought back to the same track as the EPO when the High Court decided that four applications concerning computer implemented inventions should have been accepted by the patent registration authorities.

The European Patent Convention (EPC) Article 52(2) & (3) explicitly excludes computer programs ”as such” from patent law. At the European Patent Office (EPO) the patentability of software (1) has been moulded around the concept of ”technical contribution or effect” an invention brings to the known arts.

The EPC was ratified by each contracting member state, but in its interpretation the case law and guidelines of the EPO Boards of Appeal remain merely guidance that national jurisdictions are recommended, but not forced, to conform with. Consequently, different doctrines have been applied to the computer programs ”as such” exclusion across Europe.

In 2006, this fragmented situation was particularly highlighted in the UK after the Appeal Court decision passed down in the Aerotel/Macrossan case. Since then, the practice adopted by the UK Patent Office (nowadays UK Intellectual Property Office, UK-IPO) has been to categorically exclude computer program claims from the patentability field, contrary to the rest of Europe.

Absolutist attitude towards software patents
Traditionally, the UK’s practice of patenting computer implemented inventions leaves much to be desired. British courts have always been reluctant towards software patentability, with most applications brought under Article 1(2) Patent Act (i.e. the British correspondent of Article 52(2) & (3) EPC) having been rejected. This trend was undeniably confirmed by the Aerotel/Macrossan decision in October 2006.

Aerotel/Macrossan concerned two separate appeals from High Court decisions. The appeal by Aerotel Ltd relating to a patent application on a computerized telephony system, was granted. On the contrary, the patent application filed by the Australian entrepreneur Neal Macrossan on a computer-based system for producing and acquiring the documents necessary to register a company was rejected, as caught by the ”as such” exclusion.

In this ruling the Court of Appeal formulated a new four-step test to be followed when judging over the patentability of computer programs and business methods inventions. It was necessary to:
– Properly construe the claim;
– Identify the actual contribution in the light of the prior art;
– Ask whether it falls solely within the excluded subject matter;
– Check whether the actual or alleged contribution is actually technical in nature (this can be superfluous).

One of the central points of the test lies in the interpretation given by the UK-IPO of flatly ruling out claims on computer programs from the patentability field. It is not hard to imagine that the majority of applications brought during the Aerotel/Macrossan doctrine phase have been rejected by the UK-IPO on the grounds of being either computer programs or business methods ”as such”.

A new approach every decade
The Aerotel/Macrossan decision and the seemingly absolutist computer program claims exclusion deriving from it have attracted criticism particularly amongst those who favour the patentability of software. The main argument of controversy lies on the undeniable restrictiveness of the new British practice towards computer programs patentability not being in line with the approach of the EPO.

This opinion was also shared by four high-tech companies (Astron Clinica, Software 2000, Surf Kitchen and Cyan Holdings), which in July 2007 filed an appeal against the rejection of their applications by the UK-IPO. All these applications had certain features in common: claims for methods, devices and software.

Although their claims for methods and devices were deemed to be allowable, they were refused on the grounds of having computer program claims. The claims on software were all similar as well, each incorporating a clearly executable element to the invention and relating to some form of software running on a device (i.e. printer, computer or mobile phone) improving its actual functionality in one way or the other.

One could easily say that this kind of devices would not have been caught by Article 52 under the doctrine followed at the EPO, which notably accepts computer program claims dependent on allowable method claims. Such claims started to be allowed at the EPO after the two landmark decisions end-1990’s, both involving IBM.

IBM cases turned EPO towards ”Technical effect approach”
Since 1986, under the Vicom ”technical contribution” approach applied in the EPO, the Boards of Appeal had never expressed themselves on the issue. The examiners had thus followed a practice of categorically rejecting computer programs claims.
After the IBM cases, a different line of interpretation called ”technical effect approach” was adopted at the EPO. It meant that computer program products producing (when running in a computer) a ”further technical effect that goes beyond the simple interaction between software and hardware” were not excluded by Article 52 EPC.

Until the Astron judgment, one could have also confidently said that such claims would have been rejected under the British four-step test. In fact, although computer program product claims had been accepted for many years at the UK-IPO, immediately after the Aerotel/Macrossan decision, the Office issued a note announcing a change of practice.

Accordingly, the UK-IPO then started to interpret Step 1 of the four-step test in relation to ”what the monopoly is about”. Specifically, ”if the monopoly does not go beyond the program the contribution is also unlikely to go beyond ´a program for a computer´”. This led the UK Office to reject computer program claims regardless of whether they referred to methods that would have been otherwise allowable, on the grounds that the scope of the monopoly was on a computer program ”as such” and, thus, that the contribution resided merely on excluded subject matter.

However, contrary to these expectations, in the Astron Clinica case, the Honourable Justice Kitchin found no elements of the Aerotel/Macrossan decision to support the exclusion of all computer related claims from patent law. Kitchin emphasized that the judge in Aerotel/Macrossan had not questioned on the admissibility of such claims, and thus the four-step test actually had the potential of reaching the same outcome as EPO in cases like the earlier IBM cases. As a result of this reasoning, the four appeals were admitted and the cases remitted to the UK-IPO for further consideration in light of the judgment.

UK-IPO issued again a note on new practices
Following the decision in Astron Clinica, the UK-IPO issued a new practice note that amends, once again, the way computer program claims are treated by the Office. Furthermore, the UK-IPO openly renounced to appeal the Astron Clinica decision by affirming 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”.

The recent High Court judgment in Astron Clinica put the UK back on the same track as the EPO – at least for a while. The new practice note recently issued by the Office, in fact, confirms that computer program claims are back on the agenda under the British patent law. However, whether this turn of events has shed any light over the confusing software patents practice across Europe, whether it conforms the British doctrine with the EPO’s way of thinking or, finally, whether the EPO practice is the correct example to follow, remain highly questionable issues. This discussion, though, is an entirely different subject.

(1)In this article the same meaning is given both to computer program and software.

References
EPO decisions
T 0208/84 1986-07-15, Computer Related Invention/Vicom [1987] OJEPO 14
T1173/97, 1998-07-01, Computer Programs Product/IBM [1999] OJEPO 609
T 0935/97, 1999-02-04, Computer Program Product/IBM [1999] OJEPO 609

United Kingdom decisions and law
UK Court of Appeal, 2006-10-27
Case No: A3/2006/1007 and A3/2006/1067
Aerotel Ltd v. Telco [2006] EWCA Civ 1371.
UK High Court of Justice, Chancery Division, Patents Court, 2008-01-25

Case No: CH/2007/APP/0466
Astron Clinica Ltd & Other v The Comptroller General of Patents, Designs and Trade Marks
[2008] EWHC 85 (Pat).

Notice by UK-IPO on 8 December 2008
The notice provides further guidance on how patent examiners will assess the patentability of inventions with particular emphasis on the exclusion of computer programs as such. It follows the judgment of the Court of Appeal [2008] EWCA Civ 1066 (”Symbian”). It should be read with the Practice Notices dated 2 November 2006 and 7 February 2008 on patentable subject matter.