Gor Blimey! Software Patent Rejection Gets Pipped at the Post (UK-IPO)

Lest anyone think the USPTO is the only office having issues with patentable subject matter, the UK-IPO is now in full-fledged "struggle" mode trying to conform the Office's policy on software patents with that of the EPO.

The UK Patents Act is aligned with the European Patent Convention (EPC). Among other things, the Act states that patents are not available for computer programs as such. Accordingly, patent protection is typically denied for applications that are solely computer programs, such as an improved word processing program.

In the case of Symbian's Patent Application, the UK-IPO rejected an application directed to dynamic link library (DLL) access algorithms because it related to "nothing more than a computer program" (read the decision here).

Today, the UK-IPO issued a press release announcing that the High Court overturned the rejection. While the decision hasn't formally published, it's big news for software developers in the UK, who have wondered recently whether improvements in computer technology would ever be patentable in the UK if they didn't involve novel hardware elements.

The High Court has picked up on this as well. Recently, Justice Kitchin in Aerotel/Macrossan, stated the following to the UK-IPO:

The question I must now consider is whether the decision prohibits the patenting of all computer programs and, in particular, those which under the old approach would have been considered to make a conventional computer operate in a new way so as to deliver a relevant technical contribution . . . UK-IPO has apparently concluded that it does and so has reverted to its previous practice of rejecting all computer program claims . . . I do not detect anything in the reasoning of the Court of Appeal which suggests that all computer programs are necessarily excluded

It is presumed that similar reasoning exists in the soon-to-be-published Symbian decision. Additionally, and perhaps more importantly, it appears that UK-IPO's handling of software patents conflicts with EPO practice. From the UK-IPO press release:

[The opinion] observes that the UK-IPO's decision in this case illustrates the divide which exists between the UK-IPO and the European Patent Office (EPO) about how the patentability of inventions involving computer programs is assessed. This is because although the UK-IPO refused Symbian’s patent application, the EPO has granted Symbian a patent for its invention.

Not daunted on the reversal, the UK-IPO vows to fight on:

The UK-IPO believes that when deciding whether this computer implemented invention is patentable, Mr Justice Patten did not apply the so-called "Aerotel/Macrossan test", which was established by the Court of Appeal in an earlier case, in the way intended by the Court of Appeal. This in UK-IPO's view has created uncertainty about how the Aerotel/Macrossan test should be applied for inventions of this type.

The UK-IPO will therefore appeal this judgment with a view to seeking clarification from the Court of Appeal. Pending a decision by the Court of Appeal, the UK-IPO will be continuing to follow the practice, set out in its Practice Notices issued in November 2006 and February 2008, which are founded on the established Aerotel /Macrossan test. When applying this test, the UK-IPO will take account of the Symbian judgment in appropriate cases.

Read the press release here.

P.S., in case you're wondering about the "Aerotel/Macrossan test", it's basically a four-step process for determining patentable subject matter. The adjudicator must:

• Properly construe the claim;
• Identify the actual contribution;
• Ask whether the contribution falls solely within excluded subject matter; and
• Check whether the contribution is technical in nature.