Legal Updates

Intellectual Property Law – Exclusion of Computer Programs from Patentability – Software Patents - Computer Programs – Article 52 Convention on the Grant of European Patents 1973 - whether patent claims could ever be granted for computer programs?

The case of Astron Clinica Ltd and others v Comptroller General of Patents, Designs and Trade Marks [2008] concerned the test to be applied in assessing whether computer programs should be excluded from patentability under Article 52 of the Convention on the Grant of European Patents 1973 (“EPC”). Article 52 of the Convention on the Grant of European Patents 1973 provides as follows:

“(1) European patents shall be granted for any inventions which are susceptible of industrial application, which are new and which involve an inventive step...

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1...

(a) Discoveries, scientific theories and mathematical methods...

(b) Aesthetic creations...

(c) Schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers...

(d) Presentations of information...

(3) The provisions of paragraph 2 shall exclude patentability of the subject-matter or activities referred to in that provision only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such”.

The appeal in this case concerned six patent applications by five different applicants. The inventions outlined in the applications covered a wide range of technologies. However, they all had a common feature. They were claims to, respectively, 'a method of doing X' and a 'device for doing X'.

The methods claimed were effectively methods performed by running suitably programmed computers. The apparatus claimed were effectively computers programmed to carry out the methods.

In each application it was the computer program which conferred the technical advance. For each of the six applications, the examiner at the United Kingdom Intellectual Property Office (“UKIPO”) found the methods and apparatus claims to be allowable.

However, the corresponding claims to computer programs on suitable storage media were not allowed.

Subsequent to the applicants' requests for a hearing, the hearing officer found that the program claims were not allowable. Furthermore, the patent applications could not be accepted and were to be refused.

The applicants appealed against the hearing officer’s decision. The question to be determined on appeal was whether patent claims could ever be granted for computer programs. It is interesting to note that this was an issue upon which the UKIPO and the European Patent Office (“EPO”) disagreed.

The EPO was of the opinion that such claims were allowable if the program had the potential to bring about, when running on a computer, a further technical effect which went beyond the normal physical interactions between the program and the computer.

Following the decision of the Court of Appeal in Aerotel Ltd v Telco Holdings Ltd; Re Macrossan's Application, the UKIPO was of the opinion that such claims were prohibited by Article 52 of the EPC.

The appeal was allowed.

It was held that :-

  • Claims for computer programs were not necessarily excluded from patentability by Article 52 of the  EPC. In a case where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method were allowable, then, in principle at least, a claim to the program itself should also be allowable. It should only be allowable however if the claim was made in such a way so as to reflect the features of the invention which would ensure the patentability of the method which the program was intended to carry out when it was run.
  • There was nothing in the reasoning of Aerotel which suggested that computer programs were   necessarily excluded from patentability. While the Court of Appeal had questioned a line of authority emanating from the EPO Board of Appeal, it had not doubted earlier lines of authority which were still followed by the EPO.
  • It was deemed highly undesirable that provisions of the EPC were construed differently in the EPO from how they were construed in national courts. The decision in Aerotel was capable of being interpreted so as to produce a result consistent with that obtained when applying the reasoning of the Boards of Appeal of the EPO in the earlier cases.
  • Furthermore, the Court of Appeal itself was of the opinion that it had only applied a re-ordering of the previous approach as adopted by the English courts.
  • In this case, each application concerned a computer related invention where the examiner had allowed claims for a method performed by running a suitably programmed computer and to a computer programmed to carry out the method.

The hearing officer had rejected corresponding claims on the basis that they were necessarily prohibited by Article 52 of the EPC, and by doing so, he had erred in law. As a result, the applications should be reconsidered by the UKIPO bearing in mind those findings.

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© RT COOPERS, 2008. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.


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