Original URL: http://www.theregister.co.uk/2006/10/27/software_patents/

Appeal court ruling sets marker on UK software patents

Kicked into touch

By Lucy Sherriff

Posted in Software, 27th October 2006 15:44 GMT

The three judges of the UK Court of Appeal have ruled decisively that patents on pure computer programs may not be granted in the UK. The ruling came in the case of Macrossan vs the UK Patent Office (UKPO).

Mr Macrossan, an Australian, was appealing against the UKPO's rejection of his patent application. He wanted patent protection for "a method for producing documents for use in the formation of a corporate entity using a data processing system".

The UKPO had rejected his claim and today the UK Court of Appeals upheld that decision, saying: "We are firmly of the opinion that the patent is both for a method of doing business as such and for a computer program as such."

The Foundation for a Free Information Infrastructure (FFII) welcomed the ruling. A spokesman told us: "We were worried about how there had been a trend in recent EPO jurisprudence towards saying everything that runs on a computer is "technical", and so any identifiable improvement may be patentable. The judge seems to agree."

Justices Chadwick, Jacob, and Neuberger also ruled that a patent held by Aerotel was valid because it created a new network infrastructure. This, the judges ruled, should be considered a hardware change, meaning that the patent was valid.

In the judgement they wrote: "It seems to us clear that there is here more than just a method of doing business as such...the system is clearly technical in nature. We see no Art.52(2) objection to the claim."

Article 52, clause 2, outlines items that do not qualify for patent protection, under European and UK law, and includes "schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers".

The claim came before the court because of a claim of infringement by Aerotel against Telco, and a subsequent counterclaim challenging the validity of the patent.

The FFII said because Aerotel and Telco had actually settled out of court before the hearing, there was no one from Telco to argue its case.

"If it had been looked at more closely, we think Aerotel would have had a harder time persuading the court that a differently programmed computer on a network changes the network, and so makes it patentable," the spokesman told us.

A spokeswoman for the UK Patent office told The Register: "We're still assessing whether or not it changes anything, but as the ruling is based on guidance from the [Patent] Office, our provisional view is that there will be no substantial changes [to the way we award patents]."

You can read the judgment in full here. ®