Some software can be patented in the UK and the UK Intellectual Property Office (UKIPO) is wrongly rejecting applications, according to a new ruling in the High Court. The UKIPO is considering appealing against the verdict.
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.