The English High Court has now handed down a decision which moves the UK position on software claims back into line with that of the European Patent Office (EPO) and other mainland European Agencies. This decision makes clear that claims to computer programs are allowable in the UK, provided they meet the general requirements for patentability. Further, such claims are irrespective of whether or not the code is defined as being recorded on a carrier. Astron Clinica Limited and others v. The Comptroller General,2008 EWHC 85 (Pat), (Jan. 25, 2008).

The decision deals with a number of consolidated appeals from the United Kingdom Intellectual Property Office (UKIPO). The cases in question relate to software for various applications, ranging from controlling laser printers to drug discovery. However, all cases had in common the fact that claims directed to computer programs on a suitable carrier had been rejected by the patent office for falling into an excluded category of subject matter (equivalent to a non-statutory subject matter rejection under 35 U.S.C. § 101 in the United States). These rejections had occurred despite the fact that the corresponding method and apparatus claims were allowed. The essential question was therefore whether claims directed to computer programs could be granted in the UK.

Significantly, the judge noted that software products tended to be distributed via internet download or via a compact disk bearing the code. Without the ability to protect this type of product using computer program claims, infringements could only be pursued via contributory infringement (secondary infringement). Worse still, the Court reasoned that there would be little or no protection against production and sale of an infringing product intended for use overseas. This was unacceptable in his view.

The Court acknowledged the importance of avoiding different interpretations of the provisions of the European Patent Convention between the EPO and National Courts and the highly persuasive authority of the EPO Boards of Appeal. In this case, the judge felt obliged to follow the widely reported four-step test articulated in the Aerotel decision, although this did allow him to arrive at a situation broadly in line with EPO case law on claim format. (See Aerotel v. Telco, Macrossan’s Application [2006] EWCA Civ 1371.)

Practice Note: Specifications destined for filing in Europe, and particularly the United Kingdom, may now include claims directed to a computer program, i.e., to the software itself as well as to the software recorded on the carrier, as well as, of course, conventional method and apparatus claims