Since a Court of Appeal judgment in October 2006 the UK Intellectual Property Office (UKIPO) has been refusing computer program patent claims, despite allowing corresponding method and apparatus claims on the basis that they are computer programs "as such", and so excluded matter under Art 52(2) EPC.
Two decisions of the High Court have indicated that the UKIPO have misinterpreted the Court of Appeal judgment and that this practice is incorrect.
Astron Clinica & Ors  EWHC 85 (Pat) – 25.01.08
Autonomy Corporation Ltd  EWHC 146 (Pat) – 06.02.08
Since the Court of Appeal judgment in Aerotel/Macrossan, UK Intellectual Property Office (UKIPO) has been refusing computer program patent claims, despite allowing corresponding method and apparatus claims on the basis that they are computer programs "as such", and so excluded matter under Art 52(2) EPC.
Astron Clinica is a joint appeal from a series of UKIPO decisions rejecting various computer program patent claims. Mr Justice Kitchin held that the UKIPO's practice is wrong. Aerotel/Macrossan never provided that computer program claims were incapable of being patented because the point was never considered by the Court of Appeal. If such claims provide a substantive technical contribution then they fall outside the exclusions from patentability enshrined in Art 52 EPC and its UK equivalent, s.1(2) Patents Act 197.
Autonomy concerns another appeal from a UKIPO decision in this area. Mr Justice Lewison considers the case-law, provides a summary of the same and approves Astron Clinica.
Reading the writing on the wall, UKIPO has issued a new Practice Note, dated 7 February. It announced an immediate change in approach, which will result in claims to a computer program being allowed where the corresponding method or apparatus claims would have been allowed.
This is provided that the computer program claim is drafted "to reflect the features of the invention which would ensure the patentability of the method which the program is intended to carry out when it is run." The note cautions that "Where, but only where these conditions are met, examiners will no longer object to claims to a computer program or a program on a carrier."
The Court of Appeal decision in Aerotel/Macrossan established the now notorious four-step test for determining excluded matter and also included a direct attack on the consistency of the European Patent Office's (EPO) decision-making in this area. Since that decision, UKIPO had been rejecting any and all patent claims directed to a computer program as being excluded subject matter under Art 52 EPC.
UKIPO's practice was in stark contrast with the EPO's approach to the same legislation. This legislation permits computer program patent claims, provided that the program has the potential to bring about, when running on a computer, a further technical effect which goes beyond the normal physical interactions between the program and the computer.
Not surprisingly there has been a great deal of debate regarding whether the UKIPO or EPO approach is correct. In particular, debate has raged as to whether the Aerotel/Macrossan decision justifies UKIPO's wholesale rejection of computer program claims in any event.
Mr Justice Kitchin and Mr Justice Lewison have now decided that such an approach is wrong. In reaching their respective decisions, both judges have thoughtfully articulated their view of the law in a comprehensive fashion. This article is not the place to provide the full list and so we limit ourselves to Mr Justice Kitchin's rationale of why UKIPO's approach was misguided, followed by a selection of Mr Justice Lewison's findings.
Mr Justice Kitchin's reasoning as to why UKIPO's approach was wrong:
- whether computer program claims which make a contribution extending beyond excluded subject matter are patentable was not considered by the court in Aerotel/Macrossan;
- there is nothing in Aerotel/Macrossan which suggests that all computer program claims are excluded. The court's criticism of the EPO case-law is directed at the "any hardware will do" approach. It finds that if a claim includes any hardware at all then it escapes the exclusions. The court advocates a return to a consideration of substance over form and does not appear to doubt the earlier EPO decisions in the IBM cases (T1173/97 & T0935/97);
- the application of the new four-step approach should produce the same result as did the old approach. Aerotel/Macrossan said that all it is doing is reformulating the approach taken in Merrill Lynch and acknowledges that it is bound by that case, Fujitsu and Gale. Accordingly, nothing should have changed in the way UKIPO approached computer program claims. If the claim provides a "substantive technical contribution" then it should pass the four-step test.
- Mr Justice Kitchin notes that "it is highly undesirable that provisions of the EPC are construed differently in the EPO from the way they are construed in the national courts of a contracting state. Moreover, decisions of the Board of Appeal are "of great persuasive authority." Mr Justice Kitchin acknowledged that the Aerotel/Macrossan judgment meant that it is not open to the High Court to follow the decisions of the Board in Pensions Benefit, Hitachi and Microsoft/Data transfer. It held that it can result in an approach to the law which is consistent with the Board's decisions in the earlier IBM cases which cases are still followed by the Board today.
- Mr Justice Kitchin also considered the recent High Court decision, Oneida Indian Nation's Application  EWHC Civ 0954 (Pat). Prior to the current case, it was the first and only consideration of Aerotel/Macrossan by the High Court. Mr Justice Kitchin held that such case did not decide that program claims on a carrier were not allowable in principle. He concluded that even if he were wrong in his view then, for the reasons given, he would have to respectfully disagree with the Deputy Judge (Mr Christopher Floyd QC, as he then was). It was a decision rejecting UKIPO's submission.
- Mr Justice Lewison approved Astron Clinica and, on reviewing the relevant case law, made 13 deductions which include:
"ii) … what is excluded from patentability is not a computer program but a computer program "as such". Accordingly, the mere fact that a claim relates to a computer program does not necessarily disqualify it from patentability (Astron Clinica);
iii) In order to decide whether a computer program is excluded from patentability because it is a computer program "as such" one must consider the substance of the claimed invention (Capellini); …
viii) The mere fact that a computer program reduces the load on the processor or makes economical use of the computer's memory or makes more efficient use of the computer's resources does not amount to making a better computer, and thus does not take it outside the category of computer program as such (Aerotel commenting on Gale; Raytheon); …"
What happened next?
Mr Justice Kitchin has referred his case back to UKIPO for further consideration. In Mr Justice Lewison's case, the appeal was dismissed. The interesting development is the Practice Note issued by UKIPO responsive to Astron Clinica and dated 7 February (referred to above). UKIPO will now, in theory, accept computer program claims although the PN makes it clear that such acceptance is bound by conditions.
The UKIPO is to be congratulated on having the grace to change its approach. However, we cannot help but find its note as continuing to represent a stricter test than that applied by the EPO when applying the same law.
There may be some light on the horizon in that Alison Brimelow, the current President of the EPO, has given an interview to Science/Business.net (reported on their website dated 6 February 2008). She hints that questions concerning the EPO's approach to this area may be referred to an Enlarged Board of Appeal for review. You may recall that the EPO's former president, Alain Pompidou, flatly refused to entertain the notion of a referral when requested to do so by Lord Justice Jacob in the context of the Aerotel/Macrossan case.
If and when such referral might take place is not known. However, the interview reports that while there is nothing listed at present, Ms Brimelow said that she would not rule one out in the future. Rainer Osterwalder (the EPO's director of communications) is reported as saying that there could be a referral in the coming weeks or months but declined to give any more detail.
Our view is that finally someone (Kitchin J and Lewison J) has seen sense and removed the confusion surrounding the interpretation of Aerotel/Macrossan. To hold that computer program claims, regardless of their technical contribution, were incapable of being patented was, in our view, a refusal to acknowledge how commerce is now conducted. The machines of a bygone era which were rewarded with patent protection are now computer programs but are no less inventive. Nor do they contribute any less to the advancement of a technical society. So, why should they not receive the protection their historical forbears did?