Astron Clinica: Computer Program Product Claims in UK Patents

Legal Background

Section 1(2) of the UK Patents Act 1977, made to correspond to Article 52(2) and (3) of the European Patent Convention (EPC),[1] excludes computer programs from being considered as being patentable inventions, but only to the extent that the patent relates to a computer program ‘as such’. This provision, and in particular how it defines the boundary of what is and is not patentable, has been the subject of much debate at least since the EPO decision of T 208/84 (Vicom) in 1986. In Vicom, the EPO Board of Appeal considered that a patent claim directed to a technical process carried out under the control of a computer program could not be regarded as relating to a computer program as such, and therefore an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection by the mere fact that, for its implementation, modern technical means in the form of a computer program product are used. The EPO, UK-IPO and the English courts have all followed this basic reasoning over the last 20 years, even though their approaches may have differed somewhat in arriving at an answer of whether a particular claimed invention is patentable.

Following Vicom, claims of the general form ‘a method of doing X’, where X would necessarily be at least enabled by a conventional computer, were not disallowed merely for this fact. Computer programs themselves, however, were still not considered to be suitable patentable subject matter, even if a patentable invention would inevitably be enabled by a suitably constructed program. This was the case until the EPO decision of T 1173/97, concerning an appeal by IBM regarding a new (to the EPO) type of claim directed specifically to a computer program in itself, in the form of a program on a carrier such as a disc. This type of claim (known in the USA as a Beauregard claim[2]) was proposed to be in the general form of ‘a computer program product comprising computer program code adapted, when loaded on a computer, to do X’, where X would be covered by a method claim (as above). The EPO, having considered the particular method to be allowable following the Vicom criteria (now reduced to the EPO shortcut of the possession of ‘technical character’), determined that a computer program product would not be excluded under Article 52(2) and (3) of the EPC if, when run on a computer, a further technical effect resulted which went beyond normal software and hardware interactions. Such claims then became standard practice in European patent applications where a claimed method would or could be performed on a computer.

Program claims first become allowable

As a result of T 1173/97[3] and for the sake of consistency with the EPO, the UK-IPO changed its practice, issuing a practice note[4] in 1999 in light of this decision. In this, the Office considered that the move to allow computer program claims was fully consistent with UK case law. Although the question of where the boundary lay regarding patentability of computer-implemented inventions had been previously considered in various Court of Appeal judgments[5] up until that time, none had considered the specific question of whether computer program claims could be allowed. The practice note further stated:

‘Consequently, the Patent Office’s practice will in future be to accept claims to computer programs, either themselves or on a carrier, provided that the computer program is such that when run on a computer it produces a technical effect which is more than would necessarily follow merely from the running of any program on a computer and which is such that claims to the computer when programmed would not be rejected under section 1(2)(c) under the existing practice’ (paragraph 4).

The practice of the UK-IPO then largely followed the EPO approach, while following Merrill Lynch, which itself approved Vicom. The EPO developed in parallel their own line of reasoning that allowed many types of computer-implemented inventions where a further technical effect could be shown, but which stopped short of allowing ‘pure’ software patents.

Aerotel/Macrossan: a new UK approach

In 2006, following a renewed interest in the allowability of computer-related and business-related patent applications,[6] the Court of Appeal heard the joined cases of Aerotel and Macrossan,[7] the first of which related to an infringement action on a patent granted in the field of telecommunications and the second to an application relating to a computerised business method that had been refused by the UK-IPO. In his leading judgment, Lord Justice Jacob approved a new test proposed by the UK-IPO for assessing for patentability under s 1(2). This consisted of four deceptively simple steps:

(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.

Jacob LJ further explained how the first two steps were to be carried out as follows:

‘No-one could quarrel with the first step – construction. You first have to decide what the monopoly is before going on the question of whether it is excluded. Any test must involve this first step.

The second step – identify the contribution – is said to be more problematical. How do you assess the contribution? Mr Birss [Colin Birss, representing the UK-IPO] submits the test is workable – it is an exercise in judgment probably involving the problem said to be solved, how the invention works, what its advantages are. What has the inventor really added to human knowledge perhaps best sums up the exercise. The formulation involves looking at substance not form – which is surely what the legislator intended’ (at [42]-[43]).

UK Patent Office changes practice

Although neither appeal in Aerotel/Macrossan related to the matter of whether computer program claims were to be allowed under UK law, the UK-IPO then immediately issued a practice note[8] announcing a change in the way such claims were to be assessed. The note stated:

‘In the past, the Office has allowed such claims on the basis that substance should prevail over form. Whilst the judgment maintains the emphasis on substance over form, it also characterises the first step as deciding what the monopoly is, and if the monopoly does not go beyond the program, the contribution is also unlikely to go beyond ‘a program for a computer’. Accordingly, whilst examiners will continue to assess each case on its merits, it seems likely that few claims to programs in themselves (or programs on a carrier) will pass the third test’ (para 14, emphasis added).

This in itself did not appear to change the way that such claims were to be assessed, but the UK-IPO then proceeded to reject such claims regardless of whether they referred to methods that were otherwise allowable, on the grounds that the scope of monopoly was of a computer program as such, and the contribution could not therefore extend beyond excluded subject matter.

Astron Clinica: testing the new approach

To test this practice, which clearly contradicted the established EPO approach, a number of applications refused by the UK-IPO for having such claims were appealed together by their common attorney. All these applications had claims directed to methods that had been judged by an examiner to be allowable, and the sole point of contention was whether each would be allowed to have claims directed to computer programs for carrying out the methods. The UK-IPO decided[9] that program claims were not allowable, in light of the requirement to consider the scope of the monopoly in the first Aerotel/Macrossan step. The decision was then appealed to the High Court.

On appeal, Mr Justice Kitchin ruled that the practice of flatly rejecting claims to computer programs was wrong. Kitchin J found that the issue of computer program claims did not actually arise in Aerotel/Macrossan, and the court was not even asked to consider the issue. Although the Court of Appeal had criticised many EPO decisions, it had not criticised the main decisions relating to the point in question, being T 1173/97 and T 935/97. For consistency with previous decisions, the new four-step test approach should have produced the same result as the ‘old’ approach, following Merrill Lynch. Kitchin J further recognised that it was highly undesirable to have provisions of the EPC construed differently at the EPO as compared with the courts in the different contracting states, and that decisions of the Boards of Appeal should be highly persuasive. Mention was also made of the contrasting approach taken in Germany, which Kitchin J considered was generally more in line with EPO practice. The judge then concluded:

‘In all these circumstances I have reached the conclusion that claims to computer programs are not necessarily excluded by Article 52. 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 are allowable, then, in principle, a claim to the program itself should also be allowable. I say ‘in principle’ because the claim 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’ (paragraph 51).

Kitchin J consequently found that the appeals should be allowed, and the applications were returned to the Office, presumably for being granted with their originally refused claims intact.

Conclusions

The UK-IPO have decided not to appeal the High Court judgment[10], and have now changed their practice to once again allow computer program claims that explicitly refer to allowable methods. Such claims will resume being granted by examiners at the UK-IPO, as they have been at the EPO for the past 10 years, but with the proviso that the UK test for patentability must be consistent with the Aerotel/Macrossan four-step test in preference to the ‘technical character’ test at the EPO. The larger question of how to reconcile these different ways of assessing for patentability is, however, far from being fully resolved.

David Pearce is a Chartered Patent Attorney (CPA), and an Associate at Potter Clarkson in Nottingham. He is also a regular contributor to the IPKAT weblog (www.ipkat.com).