[GSDI Legal Econ] UK Software patent ruling

[Roger Longhorn]

*Chartered Institute of Patent Attorneys - Press release - 31 January 2008*

*Patent Attorney’s landmark victory prompts UK IPO policy re-think on 
computer-implemented inventions*

In a test case before the High Court in London, a patent attorney has 
succeeded in overturning recent changes to the UK IPO’s policy on 
computer-implemented inventions.

The court’s ruling paves the way for British companies to secure cheaper 
and quicker patent protection in the UK.

The appeal centred on a change of practice by the UK IPO (formerly the 
Patent Office) which severely restricted the ability of British 
companies to gain cost-effective patents for computer-implemented 
inventions. In November 2006, the UK IPO began to refuse patents that 
included claims to computer programs that implemented technical 
inventions, despite having previously regarded such claims as 
permissible. In the absence of such claims, patent owners were forced to 
rely on allegations of indirect infringement to protect their 
computer-implemented inventions, complicating enforcement and affording 
no protection against the production or sale of programs intended for 
use abroad.

The 2006 policy change also put the UK IPO in direct conflict with the 
European Patent Office, which continued to grant patents including 
claims to computer programs provided the claimed program, when executed, 
implemented a technical invention.

Before last week’s judgment, many patent attorneys had been advising 
clients to submit their patent applications via the EPO in Munich, 
rather than apply to the UK-IPO and risk having their claims rejected. 
Although the EPO route could ultimately confer the same level of UK 
protection as a granted UK patent, it was less appealing for many 
British companies owing to the typically longer process and higher costs.

Nicholas Fox of patent attorneys Beresford & Co organised the appeal 
against the new practice last year, following the IPO’s rejection of 
claims to computer programs in patent applications made by four of his 
firm’s clients. The appellants, who were all small British technology 
companies, had developed sound, innovative products and the IPO’s 
interpretation of patent regulations relating to computer-implemented 
inventions was, Mr Fox argued, unnecessarily rigid and restrictive.

Mr Fox drafted the original patent applications and took the case all 
the way to the High Court, where he acted as advocate for the appellants 
and won the reversal of the IPO’s policy.

The appellants were Astron Clinica, who have developed a novel technique 
for analysing images of skin; Cyan Technology, developers of 
programmable microcontrollers; Surf Kitchen, whose technology enables 
mobile phones to access the Internet; and Software 2000, who develop 
printer driver software.

According to the Chartered Institute of Patent Attorneys (CIPA), the 
decision by Mr Justice Kitchin in the High Court on Friday 25 January 
2008 is important for two reasons. “Firstly, it starts to redress the 
divergent legal positions of the EPO and the UK IPO regarding this 
economically important technology,” says CIPA spokesman Harry 
Hutchinson, who sits on the Institute’s Computer Technology Committee. 
“Secondly, it makes patent protection affordable in a technology that 
demands a huge financial commitment over a number of man-years to bring 
a product to market. This will favour smaller, UK-based technology 
companies.”

The High Court ruling states that the UK IPO has been incorrectly 
applying the law in automatically rejecting claims for computer 
programs. Mr Justice Kitchin ruled that if companies can show that their 
programs make a substantive technical contribution, they will be 
eligible for protection regardless of the fact that they are distributed 
on a computer disk.

The IPO has 28 days to lodge an appeal, should it decide to do so.

The issue of software patent protection has been surrounded with 
controversy for years. There are still discrepancies between the 
European approach and the more generous approach to intellectual 
property protection taken in countries such as the U.S. and Japan.

*CIPA’s website: __www.cipa.org.uk_ <http://www.cipa.org.uk/>_
*