The patenting of software is a complex and controversial issue
which has been the subject of a number of court reversals and
refinements in recent years. UKIPO policy is currently at odds with
that at the European Patent Office (EPO), which the High Court
judge has said is "highly undesirable" and should be changed by
this new decision.
Mr Justice Kitchin delivered the ruling in an appeal hearing
covering six separate software patent applications. Each concerned
software which had been refused a patent by the UKIPO.
The software in question was in each case a part of a wider
system of computer program implemented inventions involving methods
or apparatus to achieve a result, and those systems were in every
other respect patentable, said a spokesman for the UKIPO. The
ruling is specific to those and does not mean that all software can
be patented. Applications for 'computer programs as such' will
continue to be rejected; the dispute is over the meaning of that
term.
UK patent law comes from the European Patent Convention (EPC),
but a crucial provision governing what can and cannot qualify for a
patent has been interpreted differently by the EPO and the UKIPO,
formerly the Patent Office.
Article 52 of the EPC lists subject matter that is not eligible
for a patent. Programs for computers are excluded; but Article 52
goes on to limit that exclusion to programs for computers 'as
such'.
The reference to 'as such' has been a source of confusion for
many years. The EPO and later the UK Patent Office decided to allow
patent claims to a computer program if, when running on a computer,
the program is capable of bringing about a technical effect which
goes beyond the normal physical effects which result from the
running of any program. The EPO gradually became more lenient in
its interpretation of 'technical effect' and thus granted more
software patents than the UK Patent Office.
It was against this background that the combined case of Aerotel
and Macrossan came before the Court of Appeal. In its aftermath the
UKIPO issued new
guidance on patentability.
"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]," says
UKIPO guidance on the issue.
The guidance makes reference to "few claims" surviving but
appears to stop short of banning software patents. However, Mr
Justice Kitchin was hearing an appeal against a UKIPO
Hearing Officer's decision (12-page / 66KB PDF) which stated
that since the publication of that guidance "it has been the usual
practice of examiners to disallow such claims."
Mr Justice Kitchin interpreted the UKIPO's guidance as excluding
all computer programs. That was an incorrect interpretation of the
Aerotel/Macrossan ruling, he reasoned.
"The question I must now consider is whether the decision
prohibits the patenting of all computer programs and, in
particular, those which under the old approach would have been
considered to make a conventional computer operate in a new way so
as to deliver a relevant technical contribution," he wrote. "UKIPO
has apparently concluded that it does and so has reverted to its
previous practice of rejecting all computer program claims…"
"I do not detect anything in the reasoning of the Court of
Appeal which suggests that all computer programs are necessarily
excluded," he wrote.
Mr Justice Kitchin said that in fact he thought that the
decision in that case was consistent with the EPO Board of Appeal's
ruling in two IBM patent cases, bringing UK rulings further into
line with those in Europe.
"It is highly undesirable that provisions of the EPC are
construed differently in the EPO from the way they are construed in
the national courts of a Contracting state," he said. "The new
approach can be interpreted to produce a result consistent with
that obtained by applying the reasoning of the Boards of Appeal
in IBM/Computer Program Product… and IBM/Computer Program
Product II… - decisions which, I would add, are still followed in
the EPO."
In order to be successful, a software patent claim must still
satisfy the tests laid out in Aerotel/Macrossan, which Mr Justice
Kitchin said were themselves laid out in an earlier case involving
Merrill Lynch.
That test sets out how an examiner is to judge an application.
It tells examiners to: "i) properly construe the claim; ii)
identify the actual contribution; iii) ask whether it falls solely
within the excluded subject matter; iv) check whether the
contribution is actually technical in nature."
Four of the six companies involved in the case had argued that
the UKIPO's practices were dangerously at odds with European
practice. The hearing officer in that case agreed but said that he
was bound to follow the precedent set in Aerotel/Macrossan.
"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 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."
"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.
The re-interpretation of the Aerotel/Macrossan case could have
ramifications for UKIPO policy, though a spokesman told OUT-LAW.COM
that the Office was still considering the ruling. He said that the
UKIPO might appeal the judgment if it considers that it was wrong
in law, but that no decision has been made.
Mr Justice Kitchin allowed the appeals and sent the cases back
to the UKIPO to be reconsidered in the light of his judgment.
