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1 January, 2008

A recent judgment of the UK Patents Court (Citation No. [2008] EWHC 85 (Pat)) has reaffirmed the practice of granting patents to a computer program for performing a method provided that the method itself is patentable. The UK Intellectual Property Office had stopped granting such claims in November 2006 on the grounds that they would be excluded from patentability as a matter of form. This judgment reverses that change of practice and reasserts the longstanding principle that patentable subject matter should be considered as a matter of substance, by assessing the contribution provided, and not merely as a matter of form.

The judgment related to patent applications filed by Astron Clinica and others, all of which had been found to relate to patentable inventions by the UKIPO. Although the UKIPO was therefore willing to permit method claims describing a process to be performed by a computer or computer program, they had rejected claims which directly recited the computer program for performing the method. Mr Justice Kitchin, on reviewing the case law of the UK Courts and the European Patent Office Boards of Appeal relating to computer programs, found that such an approach was logically flawed; if a method is patentable notwithstanding the exclusions in UK law to computer programs as such, then a claim to the program must likewise be patentable in principle.

The Astron Clinica judgment concerns the first step in the four-step test proposed in the Court of Appeal judgment from 2006 in Aerotel v Telco and Macrossan’s application. More information about the Aerotel/Macrossan judgment and the four-step test is provided in our November 2006 Bulletin, “UK Patent Office Change Practice when Examining Business Method and Computer Program Patent Applications”. Although it was then thought that the four-step test would not result in any significant difference between the  type of subject matter which would be found patentable by the UKIPO compared to the European Patent Office, the UKIPO has in fact been applying the test restrictively and is refusing many applications which might well have been granted by the EPO.

The UKIPO had interpreted the first step of the test to “construe the claim” to mean that the form of the claim was important. While the new judgment
disagrees with this interpretation, it has not commented on the UKIPO’s interpretations of the other three steps of the test. Consequently, the Astron Clinica judgment will probably not have any impact on the substance of the claims that the UKIPO will allow, only the form. It may be some time before further clear judgments are given concerning the other steps of the Aerotel/Macrossan test.

Boult Wade Tennant’s current advice to applicants seeking to patent computer implemented inventions is to consider carefully whether the UKIPO is the most suitable forum for filing their applications or if the European Patent Office, which does not have such a restrictive practice, might be the better option.

Boult Wade Tennant is experienced in assessing the likelihood of patents for computer implemented inventions being granted at both the UKIPO and the EPO and is able to advise you on suitable courses of action on a case by case basis.