[2008]
EWHC 85 (Pat)
Ch D (Patents Ct) (Kitchin J) 25/1/2008
INTELLECTUAL
PROPERTY
EXCLUDED
SUBJECT MATTER : PATENT CLAIMS : PATENTABILITY : SOFTWARE : PATENTABILITY OF
COMPUTER PROGRAMS : COMPUTER PROGRAMS : Art.52 EUROPEAN PATENT CONVENTION
Claims to computer programs were not
necessarily excluded by the European Patent Convention 1973 Art.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 were allowable, then, in
principle, a claim to the program itself should also be allowable.
The
appellants (C) appealed against a decision of the hearing officer upholding the
refusal to grant their patent applications relating to computer programs.
C
had made a number of patent applications.
In
each case the examiner found method and apparatus claims allowable but reported
that corresponding claims to computer programs were not allowable on the basis
that they were prohibited by the European Patent Convention 1973 Art.52.
C
appealed and the hearing officer found that the program claims were not
allowable and that the patent applications could not be accepted in their
current form.
It
fell to be determined whether patent claims could ever be granted for computer
programs.
HELD: The
approach to be adopted by the patent office and the court was to (a) properly
construe the claim; (b) identify the actual contribution; (c) ask whether it
fell solely within the excluded subject matter; (d) check whether the
contribution was actually technical in nature, Aerotel Ltd v Telco Holdings Ltd (2006) EWCA Civ
1371, (2007) Bus LR 634 applied.
Claims
to computer programs were not necessarily excluded by Art.52 of the Convention.
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 a claim to the program itself should also be allowable.
The
claim would have to be drawn to reflect the features of the invention, which
would ensure the patentability of the method that the program was intended to
carry out when it was run, Oneida Indian Nation's Application No0308259, Re (2007)
EWHC 954 (Pat) considered.
The
hearing officer was wrong in his approach and the cases were remitted for
further consideration.
Appeal
allowed
Counsel:
For the appellants: Nicholas Fox
For
the respondent: Colin Birss
Solicitors:
For
the appellants: Beresford & Co
For the
respondent: Treasury Solicitor
LTL 4/2/2008 (Unreported elsewhere)
Judgment:
Approved - 17 pages
Document No. AC0116162
Source: Lawtel http://www.lawtel.co.uk , copyright
acknowledged.