Computer Software Patentable After All?

January 28, 2008

The judgment has caused great excitement in IP circles. It now appears that if companies can show that their programs made a substantive inventive contribution they may be eligible for protection regardless of the fact that such programs were distributed on a computer disc.

Last year, Astron Clinica Limited (producing skin-imaging technology that enables images of up to 2mm beneath the surface of the skin); Software 2000 Limited (a print software company); Surf Kitchen Inc (a business focused on delivering a superior mobile end-user experience) and Cyan Holdings Plc (a company specialising in semi-conductor chip design) appealed to the High Court against the Patent Office’s refusal of their patent applications.

The UK-IPO’s stance has, up until now, disproportionately affected British industry as English companies that would normally choose to file British patents first – because of the lower costs and typically quicker grant periods – were being advised to file European applications instead. However, the higher costs and less robust grant process of the European application has been a major hurdle for British companies wishing to protect, license and market patented products and processes from an early stage.


There is a full analysis of the judgment on the IPKAT blog and the judgment itself is available on BAILII here. The IPKAT reports as follows:

After comprehensively summarising the last couple of decades of legal developments, covering the usual suspects (Gale, the oft-misspelled Merrill Lynch, Fujitsu and various EPO decisions), Kitchin J arrived at the main question in this appeal, which was whether the UK-IPO was correct in construing that the Court of Appeal judgment in Aerotel/Macrossan inevitably prohibited the patenting of all computer programs, or whether the old approach of considering the ‘potential’ technical effect of a computer program (following the EPO approach) could be taken into account, in a similar way to considering the effect of a method claim that would inevitably be carried out by running a program (which all of the applications under appeal contained). The UK-IPO had concluded that Aerotel/Macrossan ruled out computer program product patent claims, and consequently reverted to its old practice of rejecting such claims.

Kitchin J, however, considered that the point did not actually arise in Aerotel/Macrossan, because the court was not even asked to consider the question of computer program products claims. Although the Court of Appeal had criticised many EPO decisions, it had not criticised the main decisions relating to this point, being T 1173/97 and T 935/97. Also, the new four step test approach should produce the same result as the ‘old’ approach, and the Court of Appeal had said as much by saying that Merrill Lynch must be followed.

Probably more importantly, Kitchin J recognised that it was highly undesirable to have provisions of the EPC construed differently at the EPO as compared with the courts in the different contracting states, and that decisions of the Boards of Appeal should be highly persuasive. Mention was also made of the contrasting approach taken in Germany, where the EPO line tends to be followed closely.

The apparent approval of the UK-IPO’s rejection of computer program product claims in Oneida Indian Nation’s Application [see IPKat commentary here] was either rejected by Kitchin J as not actually meaning that, or was in the alternative respectfully disagreed with (as the High Court is allowed to do, in contrast with the Court of Appeal), depending on the different possible interpretations of Christopher Floyd’s judgment.

In conclusion then, Kitchin J found that the appeals should be allowed. Each application concerned a computer related invention where the examiner had allowed claims to, in effect, a method performed by running a suitably programmed computer and to a computer programmed to carry out the method. The Hearing Officer had rejected corresponding program claims on the basis that they were necessarily prohibited by Article 52, and in Kitchin J’s judgment he had erred in doing so. The cases were remitted to the UK-IPO for further consideration in light of the judgment.

Jimmy Desai at Blake Lapthorn Tarlo Lyons said ‘Many companies may have, up until now, been reluctant to file patent applications to protect their software but this High Court decision could lead to a stream of software related patents’.


For David Pearce’s article Astron Clinica: Computer Program Product Claims in UK Patents, click here.