UK High Court Allows Patent Claims to Computer Programs

In a recent UK decision of the Patents Court, Astron Clinica Ltd v The ComptrollerGeneral of Patents, Designs and Trade Marks, Justice Kitchin ruled that the UK Intellectual Property Office (UKIPO) cannot automatically reject claims to computer programs. The case involved six patent applications spanning a diverse range of technologies claiming computer programs, including a method of generating bit masks for use with laser printers which results in higher quality images, and methods of identifying groups of target proteins for drug therapy. In each case, the invention is exploited through the sale of a computer disc-based program. Patent examiners allowed method and device claims, but rejected claims for the programs on suitable storage media. An appeal to the Director of the UKIPO was rejected. The European Patent Convention (EPC) prohibits the patenting of computer programs "as such." The UK Court of Appeal has rejected the argument that simply placing a program on a storage medium or running it in a computer has any bearing on the question whether a program "as such" is claimed, so that the computer program exception is not limited to abstract programs, but can include programs on a storage medium. The UKIPO interpreted this finding to mean that all computer programs are unpatentable and revised its guidelines accordingly in 2006. Justice Kitchin reviewed the related cases in great detail and found that the UKIPO's interpretation was incorrect. UK courts have adopted the EU approach that focuses on whether there is a technical advance on the prior art in the form of a new technical result, or a "technical contribution." The case law establishes that a computer-based invention that makes a technical contribution may be patentable, and is not a computer program "as such." Justice Kitchin reasoned that if it is the program that creates the technical contribution when run on a computer, it is wholly artificial to say that the effect is delivered by the computer but not the program, and so the program cannot be excluded as being a computer program "as such." He also noted that the UKIPO approach is at odds with the European Patent Office (EPO) approach, a situation he termed "highly undesirable." All six appeals were allowed, and the cases were remitted to UKIPO for further consideration in light of this finding. Some observers were surprised by the result, and the UKIPO is considering whether to appeal. This result is important to smaller UK companies who now may be able to achieve the same level of UK protection from the UKIPO as was already generally available through the EPO. The EPO route is typically longer and more expensive. The UK Patents Act 1977 provides some protection to programs, even if not claimed as programs, under the contributory infringement provisions related to the means for putting an invention into effect. However, this does not prevent copying in the UK for the purpose of use abroad as would a claim for the program itself. For the Astron Clinica decision ([2008] EWHC 85 (Pat)], see: http://www.bailii.org/ew/cases/EWHC/Patents/2008/85.html For the hearing officer's decision being appealed, see: http://tinyurl.com/2tfqf4 For related commentary, visit: http://tinyurl.com/yvhyje; and http://tinyurl.com/2jcp2v Summary by: Tom Feather