English High Court decision on computer program claims moves the United Kingdom into line with European Patent Offices.

On 25 January 2008, the English High Court handed down the decision in Astron Clinica Limited and others v The Comptroller General [2008] EWHC 85 (Pat), which moves the United Kingdom’s position on software claims back into line with the European Patent Office (EPO) and other mainland European Offices. This decision clarifies that claims to computer programs are allowable in the United Kingdom provided they meet the general requirements for patentability. Claims are also allowable irrespective of whether or not the code is defined as being recorded on a carrier.

Case Consolidation

The decision dealt with a number of consolidated appeals from the United Kingdom Intellectual Property Office (UKIPO). The cases in question all had in common the fact that claims directed to computer programs on a suitable carrier had been rejected for falling into an excluded category of subject matter, despite the fact that the corresponding method and apparatus claims had been allowed. The essential question was therefore whether patent claims can ever be granted for computer programs. This was a claim format issue, rather than a substantive patentability issue.

UKIPO v EPO

Carving its own course, the UKIPO has been taking an increasingly tough line on subject matter relating to computer programs, with examiners and hearing officers rejecting many computer program claims relating to diverse areas of technology.

Reading somewhat between the lines of the recent Court of Appeal decision in Aerotel v Telco, Macrossan’s Application [2006] EWCA Civ 1371, the UKIPO released a practice note indicating examiners should reject claims to computer programs.

On the other hand the EPO regards such claims as allowable provided it can be established that the program brings about the necessary technical contribution to the art.

The various computer programs considered in these consolidated appeals included the following:

  • A program for generating bit masks for use with laser printers
  • A program for generating images representing the results of planned cosmetic or surgical interventions which change the distribution of chromophores in skin
  • A program for configuring a computer to process data on target proteins for drug therapies
  • A program which improves the ability of cellular phones to access internet services
  • A program for generating data for configuring microcontrollers

Software Protection

Significantly, the judge, Justice Kitchen, noted that such software products tended to be distributed via internet download or via a compact disk bearing the code. Without the ability to protect such products using computer program claims, infringements could only be pursued via contributory infringement (secondary infringement). Further, there would be no protection against production and sale of an infringing product intended for use overseas. These disadvantages and jurisdictional issues were noted in McDermott’s spring 2005 issue of IP Review.

The judge also observed that since the IBM Computer Program Product cases were heard in 1998 (IBM/Computer Program Product T1173/97 [1999] OJ EPO 609) and 1999 (IBM/Computer Program Product II [1999] T0935/97), the EPO has consistently allowed claims to computer programs where a “further technical effect” is apparent. According to the EPO, a computer program can be said to have a “further technical effect” if, when run on a computer, it provides a further technical effect which goes beyond the normal physical interactions between program code and the computer executing it.

Notably, the potential to cause a further technical effect when run on a computer is enough for the software to become allowable in principle, and it does not matter whether or not the program claim is to software recorded on a carrier or to the software itself.

Differing Interpretations

In a brief survey of the decisions of the English Courts in Genetech’s Patent [1989] RPC 147, Merrill Lynch’s Application [1989] RPC 561, Gale’s Application [1991] RPC 305, Fujitsu’s Application [1997] RPC 608 and Aerotel/Macrossan, the judge concluded he could find nothing ruling out claims to a computer program in the event the program did turn out to provide a relevant technical contribution.

The importance of avoiding different interpretations of the provisions of the European Patent Convention between the EPO and National Courts was acknowledged, as was the considerable persuasive authority of the EPO Boards of Appeal. In this case, the judge was obliged to follow the widely reported four-step test in Aerotel/Macrossan, and this led to a situation broadly in line with previous United Kingdom case law and also in line with EPO case law up to and including the IBM decisions.

Thus it was necessary to

  • Properly construe the claim
  • Identify the actual contribution
  • Ask whether it falls solely within the excluded subject matter
  • Check whether the contribution is actually technical in nature

Such an approach was also indicated to be in line with the decision of the German Supreme Court in Suche fehlerhafter Zeichenketten Case No. XZB 16/00 [2002] IIC 753.

Conclusion

Based on this reasoning, the judge concluded unequivocally that claim formats to computer programs are not excluded by default. Moreover, where claims to (i) a method performed by running a suitably programmed computer or to (ii) a computer programmed with code for carrying out such a method are allowable, then the equivalent claim drawn to the program itself should also be allowable, and this applies whether or not the programme is recorded on a carrier.

The cases in question will now be remitted to the UKIPO unless the Comptroller of the UKIPO appeals within 28 days of the decision.