Software Patenting in the UK Moves Closer to the Liberalised EU Approach

Article 52(2) of the European Patent Convention (reflected in section 1(2) of the UK Patents Act of 1977, as amended) includes in a list of unpatentable inventions "programs for computers … as such". The European Patent Office (EPO) has construed this exclusion to allow software to be patented if the operation of the program produces a further technical effect going beyond mere physical interactions between software and the computer.

In 2006, the UK Court of Appeal issued a pair of decisions, Aerotel Ltd. v. Telco Holdings and Re Macrossan's Application, that the UK Intellectual Property Office (UK-IPO) had construed as a blanket prohibition on any software-related patent claims. Before this time, the EPO and UK-IPO had taken similar positions on the issue of the patentability of software inventions; namely that software was patentable if the invention was capable of generating a technical effect beyond the normal physical effects which result from the running of the program. As a result of these decisions the UK-IPO refused to grant patents on any claims involving software, diverging markedly from the more liberalized approach taken by the EPO.

In February of 2008, a series of patent applications came up for appeal to the UK High Court in the decision of Astron Clinica and others v. Comptroller General of Patents and Trademarks. (Among the applications under consideration included one filed by SurfKitchen for mobile Internet services.) The court stated that the UK-IPO's blanket ban on software patents was incorrect, ruling that if the method or apparatus performed by running a computer program was patentable, then a claim to the program itself should be patentable as well. The court stated that the intention of the Aerotel/Macrossan rulings was not to announce an outright ban on software patents. In so ruling, the court paved the way for patenting of, for example, a method, implemented by a particular software algorithm, of generating bit masks for use with laser printers that results in higher quality images. The UK-IPO declined to appeal this ruling, and the UK-IPO changed its practices and released a practice note confirming adherence to the analytical framework stated in Aerotel/Macrossan as further clarified in Astron Clinica.

The Astron Clinica ruling thus brought the UK's software patent regime closer to that of the EU, although some commentators opined that even after this ruling, it nevertheless remains easier to obtain patent protection for software-implemented inventions in the UK if the applicant first obtains patent protection via the EPO. The EPO is willing to find the requisite "technical effect" in patent applications that purport to improve the functioning of a computer system, such as software that reduces the load on a processor or otherwise makes more efficient use of computing resources.

For example, Research in Motion (manufacturer of the Blackberry device) was successful, in February of this year, in convincing the UK High Court to invalidate a patent owned by Visto Corporation for a system and method for synchronizing email across a network. Invalidation was based in part on the determination of the High Court that the system described in the patent was for nothing more than a computer program "as such". The High Court had additionally found that the Visto patents lacked the requisite "inventive step", and so perhaps this deficiency also served to buttress the conclusion that the "technical effect", needed to save an invention from otherwise falling into the computer program exclusion, was missing.

The plot thickened considerably in March of this year with the decision of the UK High Court of Re Patent Application in the name of Symbian Limited. Symbian sought a patent on claims for a method of accessing data held in a dynamic link library (DLL) in a computing device, as well as to the device itself controlled by the method. In short, Symbian's invention changed the way a computer's operating system invokes DLLs in order to eliminate the possibility of errors resulting from changes in that DLL. The UK-IPO rejected the application, on the basis that the invention was comprised of nothing more than the operation of a computer program as such. However, the EPO had granted the patent to Symbian for the exact same invention. On appeal, the High Court overruled the UK-IPO, stating that it had too narrowly considered the invention's technical effect. The court questioned "why a program which has some novel technical effect on an important component in the computer's operating system should not qualify as doing more than merely operating as a computer program, notwithstanding its effect is to solve … a software problem affecting the functionality and reliability of the computer." The court additionally bemoaned the inconsistency between the UK-IPO's approach and that of the EPO. It appeared that the court wanted to bring the UK's approach to software patentability even closer to that of the EU.

After the Symbian ruling, the UK-IPO issued a press release announcing its intention to appeal the ruling, stating that the High Court did not apply the Aerotel/Macrossan test in the way intended by the Court of Appeal. This, in UK-IPO's view, has created uncertainty about how the Aerotel/Macrossan test should be applied for inventions of this type. The UK-IPO explained, "whilst it is possible to get patents in the UK for some inventions involving computer programs, it is not possible to get patents for innovations which are solely computer programs, such as an improved word processing program."

Software patents are more readily granted in the US, Japan and Australia.

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