Patents on Computer-Implemented Inventions: UK Courts Inching Towards EPO Positions?
Last year I had reportedDecision T 0154/04 of the Technical Board of Appeal 3.5.01 of the European Patent Office, the text bluntly criticising UK Lord Justice Jacob in view of his arguing in the Aerotel/Macrossan judgement. The EPO Board of Appeal had blamed Lord Justice Jacob for using two very different concepts of invention in one breath, this arguing of the UK Judge - in their opinion - resulting in a legal fallacy.
As a consequence of this particular piece of UK case law, the UK Patent Office UK-IPO had established a practice of flatly rejecting patent claims to computer program products contrary to the practice of the EPO. Last year, five companies, namely Astron Clinica Limited, Cyan Holdings Plc, Inrotis Technologies Limited, Software 2000 Limited and Surf Kitchen, Inc., had appealed against this restrictive practice.
Now, and this seems to be quite surprising, the table appears to be turned again: On the well-known IPKat Blog, Mr David Pearce reports that the Honourable Mr Justice Kitchin has ruled yesterday that the current UK Patent Office practice of flatly rejecting patent claims to computer program products is wrong. Mr Pearce writes:
"[...] After comprehensively summarising the last couple of decades of legal developments, covering the usual suspects (Gale, the oft-misspelled Merrill Lynch, Fujitsu and various EPO decisions), Kitchin J arrived at the main question in this appeal, which was whether the UK-IPO was correct in construing that the Court of Appeal judgment in Aerotel/Macrossan inevitably prohibited the patenting of all computer programs, or whether the old approach of considering the 'potential' technical effect of a computer program (following the EPO approach) could be taken into account, in a similar way to considering the effect of a method claim that would inevitably be carried out by running a program (which all of the applications under appeal contained). The UK-IPO had concluded that Aerotel/Macrossan ruled out computer program product patent claims, and consequently reverted to its old practice of rejecting such claims.
Kitchin J, however, considered that the point did not actually arise in Aerotel/Macrossan, because the court was not even asked to consider the question of computer program products claims. Although the Court of Appeal had criticised many EPO decisions, it had not criticised the main decisions relating to this point, being T 1173/97 and T 935/97. Also, the new four step test approach should produce the same result as the 'old' approach, and the Court of Appeal had said as much by saying that Merrill Lynch must be followed.
Probably more importantly, Kitchin J recognised that it was highly undesirable to have provisions of the EPC construed differently at the EPO as compared with the courts in the different contracting states, and that decisions of the Boards of Appeal should be highly persuasive. Mention was also made of the contrasting approach taken in Germany, where the EPO line tends to be followed closely.[...]"
Mr Pearce characterises himself as being quite amazed by the judgment because before the recent judgement he had been convinced that, under the system of UK case law, there was no room for manoeuver after Aerotel/Macrossan, and he asks the important question as to whether the UK-IPO can simply all go back to falling into line with the EPO, or if they will judge that this one is worth going further on.
Readers it's a good idea to follow the comments, on the IPKat blog. There you will see 1) UK-IPO is unlikely to appeal, but it doesn't matter anyway, because 2) this decision doesn't change the rationale of Aerotel/Macrossan.
I think Mr Pearce may have been largely alone in the UK profession to be surprised by this judgment.
Whatever criticism might be levelled at the Aerotel/Macrossan judgment, it didn't say computer program claims weren't patentable. Rather, the UKIPO decided they shouldn't be (not quite sure why) and used A/M as a poor excuse.
The courts have now restored the status quo using clear guidance from four judgments of the UK Courts of Appeal and two of the EPO Boards of Appeal to support their decision and slap the UKIPO into submission.