In the High Court, Mr Justice Kitchin has made an important ruling concerning Computer Implemented Inventions. This result is sure to be welcome news for software developers wishing to file at UKIPO, who should find it easier to take action against infringement, and possibly to injunct UK-based makers of infringing software who are exporting their infringements.

Mr Justice Kitchin has decided that when a claim to programmed apparatus has been determined to be patentable, a claim to the computer program which gives rise to that programmed apparatus when in use should be considered patentable also.

The European Patent Office (EPO) famously decided that this should be the case in 1988 in a decision concerning an IBM application. Following this the UK Patent Office (now the UKIPO) decided that, since there was no UK contradictory case law, they would follow the EPO’s lead and also allow claims to computer programs on a medium, provided that when run on a computer there was a “further technical effect that would lead to the computer being considered to be patentable”.

More recently the Court of Appeal has decided on the test for whether a Computer Implemented Invention is deemed patentable in its Aerotel / Macrossan decision (reported earlier). In response to this the UKIPO not only changed its test for when a computer implemented invention was considered patentable, it also decided to change its policy and to prohibit computer program claims even when equivalent apparatus claims have been allowed.

In contrast Justice Kitchin, has decided that Aerotel / Macrossan should have made no difference to the UKIPO approach to computer program claims. Further, he considered that the pre-dating UK case law had indicated that the patentability of claims should be decided on based on substance and not form. In the cases where inventions had been deemed to be unpatentable it had made no difference whether the computer program or the programmed apparatus was claimed. By extrapolation, therefore, Mr Justice Kitchin decided that where the programmed apparatus was allowable, the computer program should be too. Additionally, despite criticism of other EPO decisions in Aerotel / Macrossan, he kept to the convention that the UK should stay in line with the EPO’s approach wherever possible, and since there had been no criticism of the EPO IBM decision in the UK courts, that it should be followed.

This result is sure to be welcome news for inventors of Computer Implemented Inventions. Claims to computer programs can allow for more infringers to be pursued for “direct” infringement rather than the more complex “contributory infringement”, and it may now be possible to injunct makers of infringing software in the UK who are exporting their infringements. Arguably, even more significant is simply having a positive decision in favour of patentees, following several years during which many have considered the UKIPO and the Courts to be becoming more negative towards the patentability of software.

This decision does not change the test for patentability. Whilst the five applications on which this decision was based, which related, respectively, to software with improved quality of printed images, skin imaging software, software for identifying target proteins, improvements to internet access and mobile telephones, and configuring micro-controllers to simplify chip design, might be able to pass the Macrossan / Aerotel test, for the time being we continue to advise obtaining a patent through the EPO (with its more consistent approach) rather than the UKIPO in most cases when an invention relies on a computer.

Interestingly, Mr Justice Kitchin ’s decision suggests that it may be allowable to have claims to a computer program per se (provided that in use it passes the Macrossan / Aerotel test) rather than having to be a so called “computer program product” or specify the medium on which the computer program is stored. Given the increase in popularity of distribution by internet, this may become a significant point of law and could lead to a few interesting decisions on when an infringing computer program can be said to be “in the UK”.

Russell Barton
January 2008
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