UK INTELLECTUAL
PROPERTY OFFICE News Release issued by The Government News Network
on 7 February 2008
The UK
Intellectual Property Office (UK-IPO) has today issued a Practice
Notice setting out a change in its approach to patents for
computer programs in certain narrow circumstances.
In a judgment in November 2006 in the cases of Aerotel Ltd v
Telco Holdings Ltd (and others) and Macrossan's Application
[2007] RPC 7 ("Aerotel/Macrossan"), the Court of Appeal
substantially reinterpreted the law on patentable subject matter
in the field of computer implemented inventions. However, that
judgment left open a question about the wording of patent claims:
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?
For reasons explained at the time, the UK-IPO concluded that
claims to computer programs or to programs on a carrier were not
allowable. This change of practice was challenged jointly by a
group of patent applicants. They argued that if their computer
implemented methods and apparatus were patentable, they should
also be able to protect the underlying computer programs
themselves. This challenge led to a hearing before Mr Justice
Kitchin in the High Court (Astron Clinica's Application and
others Applications [2008] EWHC 85 (Pat)
In his judgment, Kitchin J has now clarified the law in this
area, and decided that patents should, as a result of applying the
test formulated in Aerotel/Macrossan, be allowed to protect a
computer program if, but only if, the program implements a
patentable invention. This ruling is a narrow one which places a
greater emphasis on the substance of what has been invented than
the words used in the claim. It does not have the effect of making
computer programs generally patentable in the UK but it does allow
innovators to enforce all aspects of their patentable inventions directly.
The UK-IPO has decided not to appeal this judgment and will be
following it with immediate effect.
Editor's Notes
1. A full copy of the Practice Notice can be viewed at http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter.htm
2. A copy of the judgement in the cases Aerotel Ltd v Telco
Holdings Ltd (and others) and Macrossan's Application [2007]
RPC 7 ("Aerotel/Macrossan") can be viewed at http://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html
3. A copy of the judgement (Astron Clinica's Application and
others Applications [2008] EWHC 85 (Pat) can be viewed at http://www.bailii.org/ew/cases/EWHC/Patents/2008/85.html.
4. What is patentable in the UK is determined by the Patents Act
1977 which is aligned with the European Patent Convention (EPC).
Among other things, this states that patents are not available for
computer programs as such.
5. The overall UK-IPO approach to computer programs (and other
exclusions from patentability, such as business methods) can be
found in the previous Practice Notice here http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice-subjectmatter.htm]
6. Prior to the Aerotel/Macrossan judgment, the UK-IPO allowed
claims of this form. This change therefore restores the
UK-IPO's earlier practice.