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Inconsistency in the air over UK software patent examinations

The hallowed halls of the European Patent Office (EPO) have been reverberating with disquiet this month and it’s all as a result of the software industry in the form of the long-running Symbian case.At the end of last week, the EPO announced that its president, Ms Alison Brimelow, has referred a number of questions regarding the patentability of programs for computers to the EPO’s Enlarged Board of Appeal (EboA).

The hallowed halls of the European Patent Office (EPO) have been reverberating with disquiet this month and it’s all as a result of the software industry in the form of the long-running Symbian case.

At the end of last week, the EPO announced that its president, Ms Alison Brimelow, has referred a number of questions regarding the patentability of programs for computers to the EPO’s Enlarged Board of Appeal (EboA).

As you may know, the English Court of Appeal’s decision on the scope of what type of software-related inventions were patentable in the UK upheld an earlier High Court decision overturning the UK Intellectual Property Office's (IPO's) refusal to grant Symbian a patent for its 'novel and inventive computer operating system'.

Although this case has been around for some time now, the reason that it’s still making headlines is due to the inconsistencies in way patent applications are being examined across Europe (especially in the UK) and the uncertainty that arises as a result of this.

In an increasingly competitive programming landscape with so many reusable components and tools, software engineers are faced with a tougher challenge than ever when trying to create and code for "the next big thing", while at the same time avoiding their very own high court litigation suit.

Although all software code is automatically protected by copyright, in the same way as news articles or books - a truly new piece of software needs to not only provide a new user proposition, but also meet the requirements needed to pass as new or 'unique enough' to warrant patentability.

What we’re saying here is that you have to apply to get a patent over and above your copyright, as they are not the same thing. The issue at hand is that software on its own is not normally granted a patent (at least not in Europe, but it often is in the USA).

Legal cases in the past have hinged around software applications whose code may be new and original, but which in practice exhibit the form and function of another application so closely that a patent already in existence is deemed to have been infringed.

Even when programmers argue that they have provided a new route and means to achieving what may be a similar end result and user experience to that produced elsewhere, they have still lost their cases. Although they may argue that a chef who publishes a recipe for an omelette does not then own the patent for omelettes – so that therefore there is more than one way to produce the same end product – they very often fail to convince the courts.

The best advice in this situation, especially if you have the next super killer app up your sleeve, is to get yourself as well informed as possible.

According to the Chartered Institute of Patent Attorneys (CIPA), the situation now is that applications to patent software will be examined by the UK-IPO and the courts in the UK on the same basis as they are at the European Patent Office (EPO).

"The clear and authoritative guidance from the Court of Appeal will end a difficult period of uncertainty and confusion for UK inventors," said Dr John Collins, at the time of the Court of Appeal's announcement, adding, "The decision is particularly beneficial for SMEs, who can now pursue computer-related inventions at the UK-IPO rather than at the more expensive EPO."

The Court of Appeal refused permission to take the case to the House of Lords.

Last Friday's EPO announcement on this subject has reintroduced uncertainty for applications to patent software-related inventions and is likely to add to the delays applicants experience after they have submitted patent applications to the EPO.