IPO sticks to four-step software patent test

Out-Law News | 18 Dec 2008 | 9:36 am | 2 min. read

The UK's Intellectual Property Office (IPO) will still use a previously formulated test on software patents despite a court ruling which many took to be critical of its approach.

The Chartered Institute of Patent Attorneys (CIPA) has said that the IPO's guidance could cause uncertainty and increase the cost of doing business in the software industry.

The IPO lost a case at the Court of Appeal earlier this year in which its judgment that software from Symbian should not be awarded a patent was overturned.

The judge in the case, Lord Neuberger, did not follow the process set out by the IPO, which was derived from cases involving Aerotel and Neal Macrossan, but the process set out in an earlier judgment, in a case involving Vicom.

Many observers saw the ruling as a rejection of the IPO's previous methods of judging software patent claims. The IPO has said, though, that it will continue to apply the Aerotel/Macrossan test to decide whether an invention qualifies for a patent.

"Since both tests are legitimate for determining excluded matter, examiners will apply the structured approach of Aerotel/Macrossan to address the fundamental question whether a claim falls solely within the excluded matter," said the IPO's new guidance. "The Office considers that as a matter of practice this will achieve outcomes consistent with the Court of Appeal judgment in Symbian more reliably."

CIPA said, though, that the IPO's approach was not helpful in clarifying the situation for inventors.

"The IPO’s latest practice note means that innovators in the computing technology field continue to face a difficult time at home protecting inventions for which the European Patent Office will grant patents, and which the UK Court of Appeal considers should be patentable," said a CIPA statement.

"It states, perhaps surprisingly in view of Lord Neuberger’s remarks, that examiners will continue in practice to apply the very test that was criticised by Lord Neuberger as, in the IPO’s view, it is intended to achieve the same outcome as the test applied in Symbian," said CIPA. "There is what can best be described as a grudging concession that computer-implemented innovations are technical and can be patentable without an external effect."

The Symbian software was allowed a patent by the Court of Appeal because it improved the operation of the software in a mobile phone, which the court said meant that it had a technical effect.

The new IPO guidance outlines the change in the IPO's approach in the aftermath of the Symbian decision.

"The Intellectual Property Office has previously recognised that an invention which either solves a technical problem external to the computer or solves "a technical problem within the computer" is not excluded," it said. "What Symbian has now shown is that improving the operation of a computer by solving a problem arising from the way the computer was programmed – for example, a tendency to crash due to conflicting library program calls – can also be regarded as solving "a technical problem within the computer" if it leads to a more reliable computer."

"Thus, a program that results in a computer running faster or more reliably may be considered to provide a technical contribution even if the invention solely addresses a problem in the programming," it said.