19 March 2008

New chapter in UK saga of patenting computer programs

There has been another development in the continuing saga of the UK's interpretation of what is and is not patentable subject matter in relation to computer programs.

In Symbian's Patent Application (Patents Court, 18 March 2008), Patten J overturned a decision of the UK-IPO to refuse a patent application because it related to nothing more than a computer program. In his judgment Patten J observed that the UK-IPO's decision illustrates the divide which exists between the UK-IPO and the EPO about how the patentability of inventions involving computer programs is assessed. The equivalent patent has been granted by the EPO. The UK-IPO announced that it will appeal the decision.
The UK-IPO's interpretation of what was patentable was relaxed slightly following Kitchin J's judgment in Astron Clinica. A new Practice Note was published on 7 February 2008 to supplement the Practice Note of 2 November 2006 (which had been published subsequent to the Court of Appeal's decision in Aerotel/Macrossan).
The Symbian decision
The UK-IPO considers that Patten J did not apply the Aerotel/Macrossan test in the way intended by the Court of Appeal and that this has created uncertainty about how the Aerotel/Macrossan test should be applied when deciding whether a computer implemented invention is patentable.

Pending the result of its appeal, the UK-IPO will be continuing to follow the the Aerotel vs. Macrossan test set out in its Practice Notices of November 2006 and February 2008. However, it will take account of the Symbian judgment "in appropriate cases".

Hopefully the appeal will provide the opportunity for an authoritative Court of Appeal decision one way or another. The present uncertainty and the difference in approach betwwen the EPO and the UK-IPO is clearly unsatisfactory. However, while apparently contradictory decisions of the EPO Boards of Appeal exist, confusion is bound to remain.

There have been some reports that Alison Brimelow, the (relatively) new President of the EPO has indicated that the EPO might refer the issue of Article 52(2) exclusions to the Enlarged Board of Appeal. Jacob LJ floated this as a desirable development in his Aerotel/Macrossan judgment but Alain Pompidou, the previous president, rejected it "at this stage". Nothing may come of this (and Ms Brimelow may even have been misquoted) but an authoritative Enlarged Board of Appeal decision would be welcome too.

Peter Hill, Simmons & Simmons (London)

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