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The High Court Allows Computer Program Patent Claims

The High Court Allows Computer Program Patent Claims

07/02/08

In a recent High Court judgement, the Honourable Mr Justice Kitchin has ruled that the current UK Intellectual Patent Office (UKIPO) practice of flatly rejecting patent claims to computer program products is wrong.

In 2006 the Court of Appeal heard the joint cases of Aerotel and Macrossan, the first of which related to an infringement action on a granted telecommunications patent, and the second to an application relating to a computerised business method that had been refused by the UKIPO. In the judgement, Lord Justice Jacob approved a new four step test proposed by the UK Patent Office for assessing whether an invention was patentable according to section 1(2) of the Patents Act which sets down a non-exhaustive list of the type inventions excluded from patentability. The test is as follows:

1) properly construe the claim;

2) identify the actual contribution;

3) ask whether it falls solely within the excluded subject matter;

4) check whether the actual or alleged contribution is actually technical in nature.

Although neither appeal related to the matter of whether computer program claims were to be allowed under UK law, the UK Patent Office issued a practice note which stated:

"…it seems likely that few claims to programs in themselves (or programs on a carrier) will pass the third test"

The UKIPO then proceeded to reject all such claims, even when they referred to methods that were otherwise allowable, on the grounds that the scope of the monopoly was for a computer program as such (expressly excluded from patentability under section 1(2)), and the contribution could not therefore extend beyond excluded subject matter.

Such an approach also diverged from that of the European Patent Office, which continued to accept such claims.

However, at the end of 2007, the High Court heard the appeal of Astra Clinica Ltd and others against several decisions by the UKIPO, each of which involved the refusal of claims to computer programs that were distributed on computer discs or made available by download over the web.

The court found that the issue of computer program claims did not actually arise in Aerotel/Macrossan, and that the court was not even asked to consider the issue. Kitchen J recognised that it was highly undesirable to have provisions of the EPC construed differently at the EPO as compared with the national courts of the contracting states, and that decisions of the EPO Boards of Appeal should be highly persuasive. He concluded:

"In all these circumstances I have reached the conclusion that claims to computer programs are not necessarily excluded by Article 52. In a case where 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. I say ‘in principle’ because the claim must be drawn to reflect the features of the invention which would ensure the patentability of the method which the program is intended to carry out when it is run" (paragraph 51).

Kitchen J consequently found that the appeals should be allowed, and the applications were returned to the UKIPO for reconsideration of the claims directed to the computer programs.