Landmark patent victory prompts policy re-think

In a test case before the High Court in London, a patent attorney has succeeded in overturning recent changes to the UK IPO policy on computer-implemented inventions

The court ruling paves the way for British companies to secure cheaper and quicker patent protection in the UK.

The appeal centred on a change of practice by the UK IPO (formerly the Patent Office) which severely restricted the ability of British companies to gain cost-effective patents for computer-implemented inventions.

In November 2006, the UK IPO began to refuse patents that included claims to computer programmes that implemented technical inventions, despite having previously regarded such claims as permissible.

In the absence of such claims, patent owners were forced to rely on allegations of indirect infringement to protect their computer-implemented inventions, complicating enforcement and affording no protection against the production or sale of programmes intended for use abroad.

The 2006 policy change also put the UK IPO in direct conflict with the European Patent Office, which continued to grant patents including claims to computer programmes provided the claimed programme, when executed, implemented a technical invention.

Before this judgment, many patent attorneys had been advising clients to submit their patent applications via the EPO in Munich, rather than apply to the UK-IPO and risk having their claims rejected.

Although the EPO route could ultimately confer the same level of UK protection as a granted UK patent, it was less appealing for many British companies owing to the typically longer process and higher costs.

Nicholas Fox of patent attorneys Beresford and Co organised the appeal against the new practice last year, following the IPO rejection of claims to computer programmes in patent applications made by four of his firm's clients.

The appellants, who were all small British technology companies, had developed sound, innovative products and the IPO interpretation of patent regulations relating to computer-implemented inventions was, Mr Fox argued, unnecessarily rigid and restrictive.

Mr Fox drafted the original patent applications and took the case all the way to the High Court, where he acted as advocate for the appellants and won the reversal of the IPO policy.

The appellants were Astron Clinica, who have developed a novel technique for analysing images of skin; Cyan Technology, developers of programmable microcontrollers; Surf Kitchen, whose technology enables mobile phones to access the Internet; and Software 2000, who develop printer driver software.

According to the Chartered Institute of Patent Attorneys (CIPA), the decision by Mr Justice Kitchin in the High Court on Friday 25 January 2008 is important for two reasons.

"Firstly, it starts to redress the divergent legal positions of the EPO and the UK IPO regarding this economically important technology," says CIPA spokesman Harry Hutchinson, who sits on the Institute Computer Technology Committee.

"Secondly, it makes patent protection affordable in a technology that demands a huge financial commitment over a number of man-years to bring a product to market.

This will favour smaller, UK-based technology companies".

The High Court ruling states that the UK IPO has been incorrectly applying the law in automatically rejecting claims for computer programmes.

Mr Justice Kitchin ruled that if companies can show that their programmes make a substantive technical contribution, they will be eligible for protection regardless of the fact that they are distributed on a computer disk.

The IPO has 28 days to lodge an appeal, should it decide to do so.

The issue of software patent protection has been surrounded with controversy for years.

There are still discrepancies between the European approach and the more generous approach to intellectual property protection taken in countries such as the USA and Japan.

This press release was issued by the CIPA: their website is www.cipa.org.uk.

Historical Background The vast majority (83 per cent) of patents in force in the UK today were submitted to and granted by the European Patent Office.

The direct UK route has, however, remained popular with British businesses owing to the typically lower costs and speedier prosecution to grant.

The UK IPO policy of rejecting all claims computer programmes for computer-implemented inventions has placed British companies filing patent applications directly before the UK IPO at a disadvantage, compared with foreign companies who typically prefer the EPO route.

A patent attorney (formerly known as a patent agent) has qualified by experience and examination for entry of his or her name on the Register of Patent Attorneys.

Patent attorneys are specially trained and experienced in the art of drafting patents and in knowledge of intellectual property law.

They are entitled to deal with related areas of law such as designs, copyright and trade marks as well as patents.

The majority of patent attorneys are also Chartered Patent Attorneys, European Patent Attorneys and Registered Trade Mark Agents.

The Chartered Institute of Patent Attorneys (CIPA) is the professional body representing patent attorneys in the UK.

CIPA was founded in 1882 and incorporated by Royal Charter in 1891.

The majority of patent applications in the UK and Europe are submitted by patent attorneys on behalf of their clients.

Entry on the Register of Patent Attorneys provides patent attorneys with the right to conduct litigation and to act as advocates in the Patents County Court as well as the right to appear as advocates on appeal from decisions of the UK IPO.

Fellows of CIPA can also acquire an additional qualification (a Litigator's Certificate) entitling them also to conduct litigation in the Chancery Division of the High Court (including the Patents Court) and to conduct appeals from the Patents County Court, the County Court and the Chancery Division of the High Court in respect of intellectual property litigation.

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