UK-IPO u-turn on software patents
After the recent decision of Astron Clinica (IPKat posts here and here), and a decent two week period for reflection, the UK-IPO have now decided that they will not be appealing against the decision. Consequently, a new practice notice has just been issued by the UK-IPO (right: not a u-turn but a 'clarification'), which says the following:
1. The Office's Practice Notice dated 2 November 2006 detailed the way patent examiners should assess whether inventions are for patentable subject matter following the judgment of the Court of Appeal in the matters of Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan's Application [2007] RPC 7 ("Aerotel/Macrossan"). Among other things, paragraph 14 of that Notice recorded the Office’s view that Aerotel/Macrossan left open a question over permissible forms of claim: 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 the Notice explained, the Office concluded that claims to computer programs or to programs on a carrier were not allowable.
2. In his judgment in Astron Clinica and other’s Applications [2008] EWHC 85 (Pat) ("Astron Clinica"), Kitchin J has now clarified the law in this area. He has decided that where, as a result of applying the test formulated in Aerotel/Macrossan, 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. However, Kitchin J made it clear that the claim to the computer program 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. Where, but only where, these conditions are met, examiners will no longer object to claims to a computer program or a program on a carrier.
3. The Office will implement this change in approach immediately. Apart from this one change, the practice of the UK-IPO remains as set out in the Practice Notice of 2 November 2006.
This appears to settle for now the matter of computer program claims, which many will be relieved to see (although not, of course, those against software patents in general). The IPKat sees no reason why he should not have the following claim allowed by a UK-IPO examiner (where claim 1 is an allowable method claim):
"A computer program comprising computer program code adapted, when said program is loaded onto a computer, to make the computer execute the procedure of claim 1".
There is nothing wrong with this, according to Kitchin J in Astron Clinica and the new practice notice, so one of the IPKat's amenuenses will be putting exactly this form of claim to a UK examiner in the near future, in the expectation of it being allowed. After all, we should be looking at the invention as a matter of substance, not the form in which it is claimed. Can anyone see the reason why this claim would not be allowed at the EPO? The IPKat suspects he can, but would like others to first point out why he is wrong, yet again, on the subject.
