The challenge is to decisions based on policy formed
after the long-running cases of Aerotel and Macrossan which changed
the way the UK-IPO and courts were told to implement patent
law.
The four companies have invented technology that is partly
software-related. They say that an ability to control the
distribution of that software is critical to their success as
companies. They claim that copyright protection for the software
code itself is not enough.
Before November 2006 patent applications relating to computer
programs for carrying out patentable methods, sometimes called
"program on a carrier" claims, were allowed. But after the landmark
Aerotel and Macrossan cases, the UK-IPO changed its policy.
"[The UK-IPO] indicated that they appear to be excluded from
patentability as a consequence of the test set out in Aerotel,"
said a July judgment from the UK-IPO. "As a result, since 2
November 2006 it has been the usual practice of examiners to
disallow such claims."
The
guidance from the UK-IPO states:
"…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 [Aerotel] 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 [i.e. whether the claim falls solely within the excluded
subject matter."
In the UK-IPO hearing, the companies argued that the new policy
means that they cannot use patent law to stop someone from
producing and selling programs in the UK for use abroad, because
that would not qualify under the 'contributory infringement'
provision of the Patents Act.
The UK-IPO's hearing officer acknowledged that software, stored
on discs or delivered as downloads, was the companies' primary
commercial product and it was therefore of great importance to them
to have claims to the software per se.
"I appreciate the point that is being made here," he wrote, "but
it is the case, as I have said, that I am unable to take it into
account in this decision."
The four firms say that decision exposes them to risk.
"The UK-IPO’s decision to exclude protection for disks and
downloads means that British industry can no longer rely on British
patents to give them the protection they need to successfully
market and compete in the field of computer-implemented
inventions," said a statement on behalf of the four firms. "The
UK-IPO’s surprise new practice, announced in November 2006, is at
odds with settled patent law and practice throughout Europe."
The four companies are skin imaging company Astron Clinica;
semiconductor designer Cyan Holdings; print software company
Software Imaging; and mobile browser designer SurfKitchen.
In their original UK-IPO case hearing, the companies argued that
it was deemed essential by the courts that UK patent law not
deviate from the practice of the European Patent Office. The
hearing officer accepted that, but said that a higher court had
already departed from that practice, and the UK-IPO must
follow.
"I observe that in the area of inventions excluded from
patentability, the question of EPO practice was exhaustively
considered by the Court of Appeal in Aerotel," said the UK-IPO
ruling. "They found recent developments in Board of Appeal
decisions inconsistent with one another, and as a result felt it
necessary to take an independent view pending any clarification of
the matter by the Enlarged Board of Appeal. I am consequently
obliged to follow the reasoning and guidance in the Aerotel
judgment."
The companies argue that the difference between UK practice and
that in Europe is putting them and all UK businesses at a damaging
disadvantage.
"That is probably fair," said Kim Walker, head of intellectual
property at Pinsent Masons, the law firm behind OUT-LAW.COM. "The
solution would really be for somebody like the European Commission
to say that protection for software which is constantly evolving
and developing and is only really valuable for a couple of years,
doesn't need 20 years of protection."
"It would be good if someone had the guts to develop a new form
of protection for software which would give short, sharp and narrow
protection," he said. "I don't know if it would be feasible, the
international complications would be enormous, but if you are going
to protect software otherwise than through copyright, it ought to
be something with a lighter touch."
The UK-IPO ruled against the companies, saying that it must
follow the lead of the UK courts. "Although there is no direct
guidance in Aerotel as to how program claims should be treated, the
requirement to consider the scope of the monopoly in step one of
the test, coupled with the direct comparison between the
contribution and the excluded fields, suggests that such claims
should be excluded," it said.
