The decision is contained in a practice note issued by the
Patent Office less than two weeks after the court made its
decision. The cases, considered together, involved applications by
Aerotel and by Neal Macrossan.
"This notice announces an immediate change in the way patent
examiners will assess whether inventions are for patentable subject
matter," it said. "The Office takes the view that Aerotel/Macrossan
must be treated as a definitive statement of how the law on
patentable subject matter is now to be applied in the UK. It should
therefore rarely be necessary to refer back to previous
UK or European Patent Office (EPO) case
law."
The Macrossan case was closely watched by patent experts because
it dealt with the controversial area of software patents. The court
ruled that Macrossan's invention – an online system which helped
with form filling – could not be patented because it was "a
computer program as such".
David Woods, a lawyer with Pinsent Masons, the law firm behind
OUT-LAW, said that the Patent Office's notice will clarify a
controversial area for those seeking patents. "The Patent Office's
position is clear," he said. "They are not going to look at a body
of jurisprudence, they are going to look at one case. And they are
not going to be hugely influenced by Europe because they have put a
marker down that says that they appreciate that Europe has taken a
different approach and they will follow the UK case."
Software is patentable in the US and in some cases in Europe.
The law in the UK says that inventions which are business methods
and computer programs and nothing more cannot be patented. There is
a strong lobbying effort in Europe calling for software patents
across Europe, but many smaller developers are opposing the
potential move.
In allowing it to proceed to the Appeals Court, one judge ruled
that Macrossan had "a real prospect of success", but Macrossan lost
his appeal.
