UK-IPO Change of Practice on Computer Programs

February 11, 2008

UK-IPO issued a new Practice Note on 7 February, taking account of the judgment in Astron Clinica & Ors v The Comptroller General of Patents, Designs and Trade Marks [2008] EWHC 85 (Pat). The UK-IPO press release states:

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.

For the Practice Note in full, click here . For the Astron Clinica judgment, click here.  For David Pearce’s article about the Astron Clinica case and its background, click here (SCL members only).