On 27 October 2006 the English Court of Appeal gave judgment in two cases heard together, reviewing the law on the patentability of computer software and the patentability of business methods. To read the judgment in Aerotel -v- Telco and in Macrossan's Application in full, go to: http://www.bailii.org/cgi-bin/markup.cgi?doc=/ew/cases/EWCA/Civ/2006/1371.html&query=macrossan&method=all
The Patent Office has issued a new practice direction setting out how it will apply the new judgment to patent applications pending before it (www.patent.gov.uk/press/press-release/press-release-2006/press-release-20061103.htm).
In order to obtain a patent, the invention must be new (ie. it had not been made available to the public before the application date), inventive (ie. more than mere routine development over what was known), have industrial applicability and must not fall within the list of excluded subject matter (including discoveries per se, methods of playing games, computer programs and methods of doing business).
This is an area of some controversy. Both software and business methods have become patentable in the US, but can only be patented in Europe where there is "technical" content.
In early 2006, the European Commission gave up its attempt to harmonise the approach of the European Member States to the patentability of computer software. So we are left with varying practices across Europe, with the European Patent Office granting patents which may not necessarily be enforceable in all States.
The UK Patent Office will now apply the following four stage process to the consideration of business method and computer program patents:
1. Properly construe the claim (which means understand what the invention is)
2. Identify the actual [or alleged] contribution (...that the invention makes to human knowledge)
3. Ask whether the contribution falls solely within excluded subject matter
4. Check whether the actual or alleged contribution is actually technical in nature.
For now, this decision will be applied to decide whether inventions of computer programs or business methods can be registered as patents, but Macrossan is seeking leave to appeal to the House of Lords. It has not significantly changed the law in the UK, but if a computer program or business method falls right on the boundary between those which are or are not patentable, this four stage process may have an impact. In addition, the Patent Office will now have more confidence in rejecting patent applications for unpatentable subject matter without performing any novelty searches. Applicants will not be given the benefit of the doubt where there is uncertainty.
Although it is doubtful that Macrossan's invention could ever have been presented in a way that would have led to the grant of a UK patent, it is important that patent applications in these fields are drafted by those who know how to present the invention in a way which will meet the requirements of the UK (or European) Patent Offices.
This is provided for information purposes only and should not be regarded as a substitute for taking legal advice.
Thank you Jon for contributing to the discussions of patents. Your comment about "drafted by those who know how to present the invention in a way which will meet the requirements of the UK (or European) Patent Office" is consistent with a comment by Eben Moglen at the Sakai Conference saying there are patents for software in Europe, but not labeled so.
Although Moglen is confident that software will eventually not be patentable, few remember the words “in a generation or so.” Which suggests a policy of accommodation to the legal environment that does and will continue to exist in some form and the tradition of openness in higher education that all of us value highly.
I am learning the British courts and bar are much more civil than those in the U.S. This is the first time I have read an opinion when a judge thanks a defendant for the research he had contributed. And is comparable to the way Members of the Parliament speak about higher education in their hearings. Refreshing.