Original URL: http://www.theregister.co.uk/2007/11/16/patent_wrangling/

UK patent rules put firms at disadvantage

High Court will hear all about it, next week

By Lucy Sherriff

Posted in Law, 16th November 2007 15:40 GMT

Until recently InRotis, a small company spun out of Newcastle University, was part of a High Court action aimed at forcing the UK Intellectual Property Office to ensure the patent protection offered to UK patent holders matches that available in Europe.

However, the firm was granted a European patent for its work, and as a result has dropped out of the action. Lawyers acting for the remaining four firms involved in the case say InRotis' departure proves the very point their clients are trying to make.

Professor Malcolm Young, founder of InRotis, told us: "Our position is that we have a European Patent Office application that is being granted now over the same processes that the UK IPO application covers. So we don't need the UK patent, with or without the disk claims, since we're covered anyway.

"It's obviously a bit unsatisfactory for UK companies, if they habitually submit to the UK Office, to risk getting less comprehensive protection than companies elsewhere, which submit to the EPO. So, we still wish the action well."

At issue are the claims in a patent: that is the scope of the monopoly you are given when a patent is granted. The IPO says patent protection does not confer monopoly rights on distribution of code associated with an invention. Lawyers acting for the high tech four say this is inconsistent with the European position, and with the position the UK has taken, historically.

Nicholas Fox, a patent lawyer at Beresford & Co said the loss of one of the original members of the group taking the action proves the point: that there is a difference between the protection offered in Europe and the protection offered in the UK. If the protection was the same, he argues, why would a firm feel the need to apply for a European patent as well as a UK patent?

"The UK IPO's position is that only when the patented item and its software are combined, when you are dealing with the whole package, are they offered protection," he told us.

This means material that would be considered to infringe an identical patent in Europe could be manufactured in and exported from the UK as long as it was never destined for use in Blighty. Protection consistent with that available in the EU would mean that merely manufacturing the offending material would be considered to breach the patent holder's rights.

He told us there were many examples of patents already granted in the UK which did match the European level of protection, but declined to elaborate until the appeal has been heard.

The UK IPO (Intellectual Property Office) says it will wait for the high court to make its decision before it comments.

"The rulings we are following - we believe what we are doing is right. Until the ruling of the High Court comes out, our position will be the same," an IPO spokesman told us.

The case is due to be heard next week. A firm court date is not yet settled, being dependent on other cases, but it could reach a judge as early as Monday. ®