UK Patent Office Clarifies Patentability Of Computer Programs And Business Methods

by Robin Pilgrim, LawAndTax-News.com, London

07 November 2006

Following the recent Court of Appeal judgment in the case of Aerotel v Telco, the UK Patent Office on Friday issued a Practice Notice on how it will in future decide if an invention is not patentable because it is a computer program or business method.

The Notice noted that the judgment considered all the previous caselaw from the UK courts and the European Patent Office, and provided a clear approach as to how computer program and business method questions should be tackled. The judgment is binding on the High Court and the Patent Office, and from now on the Patent Office will follow rules as set out in the Practice Notice.

The test approved by the Court comprised the following steps for ascertaining the patentability of computer programs and business methods:

1. Properly construe the claim
2. Identify the actual contribution
3. Ask whether it falls solely within the excluded subject matter
4. Check whether the actual or alleged contribution is actually technical in nature.

The Court decided that the new approach provided a structured and more helpful way of applying the statutory test for assessing patentability which was consistent with previous decisions of the Court. This test will be applied by examiners with immediate effect.

In a statement, the Patent Office announced that:

"It is the Office’s view that the change in approach does not fundamentally change the boundary between what is and is not patentable in the UK although we recognise that there will inevitably be the odd case right on the boundary that may be decided differently under different tests. To illustrate this, the Office is issuing separately an assessment of how a sample of applications that were refused by hearing officers earlier this year would have fared under the Aerotel/Macrossan approach."

"Furthermore, whilst that approach is different from the one currently adopted in the EPO (as exemplified by the Board of Appeal decision in Hitachi T 0258/03 we consider that the end result will be the same in nearly every case irrespective of whether the approach followed is the Court of Appeal’s or that of the EPO. The Court suggested that the issue was one which might benefit from a reference to the Enlarged Board of Appeal."

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