UK IP Office issues statement on software patents

(via Arne Kolb) After the landmark ruling in Astron Clinica Ltd & Other, the UK IP Office has issued an amended notice with regards to patentable subject matter. The practice after Aerotel/Macrossan at the UKIPO was that “claims to computer programs or to programs on a carrier were not allowable.” In other words, if you created some code and this was considered an invention, then you could not claim patent protection if the invention was implemented in software. You could claim protection for an invention, but not for the software as such. But now after the ruling, the practice has changed. The UKIPO says:

“In his judgment in Astron Clinica […], Kitchin J has now clarified the law in this area. He has decided that where, as a result of applying the test formulated in Aerotel/Macrossan, claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable then, in principle, a claim to the program itself should also be allowable. However, Kitchin J made it clear that the claim to the computer program must be drawn to reflect the features of the invention which would ensure the patentability of the method which the program is intended to carry out when it is run. Where, but only where, these conditions are met, examiners will no longer object to claims to a computer program or a program on a carrier.

This seems to me to be a grudging acceptance of the ruling. If the invention is implemented via software, then it can be subject to patent protection, but only if it meets with the requirements set out in Aerotel. These requirement is that weird concept of “technical contribution”, which is generally considered to say that the software should make a considerable advance in the state of the art.

I have never had a problem with such an interpretation. If something is novel and inventive, then the medium of delivery is irrelevant to the patentability of said device. However, I still have a problem with the law. Apologies for repeating this rant again, but why not change the European Patent Convention and get this silliness over and done with?

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