UKIPO Allows Claims to Computer Programs

Following the decision in Astron Clinica v. Comptroller General, the UKIPO has issued a practice note making it clear that claims to a computer program itself or a program on a carrier will no longer be objected to by examiners where certain conditions are met:

i) where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable; and

ii) where the claim to the computer program reflects 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.

In another recent decision, Symbian v. Comptroller General, Symbian Ltd., the UK-based developer of an open operating system for smartphones (owned by Sony Ericsson, Nokia, Panasonic, Samsung and Siemens) successfully appealed a decision of the UKIPO concerning patentability of an improved operating system. In particular, the application describes how a computer system can index a library of functions (DLLs) to ensure that the computer will continue to operate reliably after changes are made to the library. The judge, Mr Justice Patten, held that the Hearing Office took too narrow a view of the technical effect of the invention and pointed to improved reliability of a machine as an indication of technical contribution.

In this case, the Hearing Officer had followed the four steps set out by the Aerotel/Macrossan test (as discussed in the Spring 2007 edition of this newsletter) and found that the third step of the test was not met, because the alleged contribution of an interface which enables an executable program to link to updated functions in a DLL, fell solely within excluded subject matter. Having found that the contribution failed the third step, the fourth step of checking that the contribution is actually technical was not considered. Patten J., however, said the steps of the test should not be considered as self-contained steps. The question of whether the invention makes a relevant technical contribution has to be asked at some point, whether this question is as part of step 2, 3 or 4 of the test.

The UKIPO intends to appeal this judgment with a view to seeking clarification from the Court of Appeal as to precisely how the Aerotel/Macrossan test should be applied to inventions of this type. In the meantime, the office will continue to follow the recent practice founded on the established Aerotel/Macrossan test, taking account of the Symbian judgment in appropriate cases to consider the question of whether an invention makes any relevant technical contribution.