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Software patents - a new dawn ?
10 March 2008
The recent Astron Clinica High Court decision changes the way
that the Patent Office will look at patent claims in respect of
computer programmes. The Patent Office’s own practice note confirms
the fact that there has been a change – but how far does this take
us in terms of being able to patent software programmes?
This article looks at the impact of the Astron Clinica decision,
how we got into the position we find ourselves in and what software
developers can do in the midst of much confusion when it comes to
seeking patent protection for their software.
Ambiguity
There are some expressions that should simply never be included
in legislation. “As such” must surely be one of those
expressions.
The fact that a developer of a computer programme cannot, in the
UK, obtain patent protection for a programme “as such” is
irritating and begs the question “what else does this software need
to do to be patentable” and, indeed, “what does “as such” mean”?
This has been the position since the European Patent Convention
came into effect and much of the case law that has followed has
been seeking to give meaning to the comment “as such”.
The law
Courts have disputed this question since the passing of Article
52 of the European Patent Convention in 1973, as amended in 2000.
The relevant sections are s52(1) – 52(3) which state that:
52 (1)
“European patents shall be granted for any inventions which
are susceptible of industrial application, which are new and which
involve an inventive step”
52 (2)
“The following in particular shall not be regarded as
inventions within the meaning of paragraph 1:
(c) ….programmes for computers”
52 (3)
"The provisions of paragraph 2 shall exclude patentability
of subject matter or activities referred to in that provision only
to the extent to which a European Patent Application or European
Patent relates to such subject matter or activities as
such."
The ambiguity comes with section 53 - allowing patents to be
granted in respect of something other than computer programmes “as
such”.
Sadly “as such” was not defined in the convention, not by the UK
Patents Act 1977, which followed similar wording (Section 1(2) of
the Patents Act 1977), leaving courts and Patent Offices left to
fill the gaps themselves.
Different approaches in Europe and the UK
Unfortunately, since patent applications may come before either
the European or UK Patent offices, and each are independent of the
other – where there is ambiguity in the law there is also scope for
disagreement between Europe and the UK. Not surprisingly there has
been a fair bit of disagreement over the last few months, with each
system criticising the decisions made by the other.
In Europe, as in the UK, the question as to whether an article
constituted software “as such” was dealt with by a supplemental
question that is not anticipated in the European Patent Convention
itself – which is whether or not the software produces a new
“technical effect” . In other words, as far as the UK was concerned
at least, does the software (as Nichols LJ said in the Gale Case)
either “embody some technical process which exists outside the
computer” or “solve a technical problem within the computer” – so
that the “matter” consists in part of either hardware or something
other than software. The mere fact of software interacting with a
computer to solve a problem would not be a “technical effect”.
By comparison – as Mr Justice Kitchen considered in the Astron
Clinica case, where patent applications have been considered before
the European Patent Office (EPO), the EPO’s Board of Appeal have
taken a narrower interpretation of the “as such” exception (and a
wider interpretation of “technical effect”), so that a claim may be
said to have “technical character” by the mere fact of it relating
“to a computer readable medium” (i.e. a CD Rom or other storage
device).
The position prior to the Astron Clinica
case
The Macrossan decision created what seemed to be the clearest
precedent we have had for a while as to whether or not software
could be patented, and set out a four stage test that was adopted
by the Patent Office – namely:
- Properly construe the claim
- Identify the actual contribution (to human knowledge)
- Ask whether [the contribution] falls solely within the excluded
matter (i.e. the section 52 (2) exclusion above);
- Check whether the actual or alleged contribution is actually
technical in nature.
So in Macrossan the invention was considered not patentable
since its contribution (obtaining information from a client and
prepare legal documents) consisted of nothing more than a computer
program (excluded matter) as such.
By comparison Aerotel were able to obtain patent protection on
the basis that part of their claim involved the combination of the
software with a particular telephone exchange. The contribution to
human knowledge therefore consisted of more than just software.
So – simple enough you might think when it comes to drafting
patent claims. A patent for software combined with some other thing
– such as the hardware that runs a telephone exchange - might be
patentable, as might software that creates some technical effect in
the computer itself (making it run faster or better), or a
technical effect outside the computer. However a claim for just the
software itself (or software on a disk) wouldn’t be permitted?
The Patent Office certainly thought so and stated in their
practice note that followed the Macrossan case, referring to the
four step approach:
“whilst examiners will continue to assess each case on its
merits, it seems likely that few claims to programs in themselves
(or programs on a carrier) will pass the third test”
This approach was followed in Cappellini & Bloomberg v the
Comptroller-General of Patents [2007] where the claims were held to
fall within the excluded subject matter.
The Astron Clinica Decision
The Astron Clinica decision was an appeal on behalf of five
software companies, all of whom exploited inventions by selling
computer programs, stored either on disk or by download and was an
appeal against the very practice of rejecting claims to the
computer program itself.
Mr Justice Kitchen in this case went through the previous case
law, including the Macrossan judgement and previous EPO decisions
and sought to reconcile the EPO and UK decisions. In doing so he
did not consider himself to be contradicting either, but rather
dealing with a question not dealt with previously – i.e. can a
claim in a patent to software (which is not combined with anything
else) be accepted.
His decision was that it could be accepted – provided the
software passed the four limbs set out in the Macrossan judgement.
It effectively makes no difference if the question is asked about
the programmed computer, the method for use of that programmed
computer or indeed the programme itself. In the position (as here)
where methods performed by running a suitably programmed computer
and a computer programmed by the method were capable of patent
protection, there were no grounds for rejecting the claim in
respect of the software itself.
What next?
As a result of this judgement the UK Intellectual Property
Office has changed its practice note, and it is clear that patent
claims, even for software “as such” may be allowed – but only where
the four hurdles from the Macrossan decision are met by the overall
invention.
The decision is a High Court decision so may yet be overturned
by the Court of Appeal, but is perhaps a useful reference point for
anyone currently seeking patent protection in the UK for software
in its own right as to the extent to which the court will permit a
claim for that software.
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