The UK's application of European patent law has been thrown into uncertainty after a High Court judge disagreed with the principle that computer programs are not patentable.
In an appeal case that was heard in November last year, The Honourable Mr Justice Kitchin heard appeals from five companies who had been told by the UK Intellectual Property Office (UKIPO, formerly the Patent Office) that their "inventions" were not patentable.
The companies involved are: Software 2000 (with a method of generating bit masks for use with laser printers); Astron Clinica (the primary appellant, with an imaging system for predicting the results of surgery); Inrotis (with two applications regarding methods of identifying groups of target proteins for drug therapy); SurfKitchen (with an improved method of getting mobile phones to access the internet); and Cyan Technology (with a method of generating data for configuring microcontrollers).
Crucially, all the applicants "exploit their inventions by selling computer programs stored on a computer-readable medium or by internet download", reads the judgment. Justice Kitchin continued: "Competitors can, of course, do the same. This presents the applicants with the problem that, without computer-program claims, they can only protect their inventions by invoking the contributory infringement provisions of section 60(2) of the Patents Act 1977".
However, the European Patent Convention (EPC), a revised version of which took effect at the end of last year, does not allow computer-program claims because they are not physical inventions. At the heart of this attitude is Article 52 of the convention, which specifically excludes "programs for computers" from patentability.
In his judgment, published on Friday, Justice Kitchin said that, based on his interpretation of the EPC, "claims to computer programs are not necessarily excluded by Article 52". In doing so, he then remitted the cases back to UKIPO for "further consideration".
"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 are allowable, then, in principle, a claim to the program itself should also be allowable," said Justice Kitchin. "I say 'in principle' because the claim must be drawn to reflect 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."
"It follows that these appeals must be allowed," Justice Kitchin continued. "Each concerns a computer-related invention where the examiner has allowed claims to, in effect, a method performed by running a suitably programmed computer and to a computer programmed to carry out the method. The hearing officer has rejected corresponding program claims on the basis that they are necessarily prohibited by Article 52. For the reason I have elaborated, he erred in law in so doing."
A spokesperson for the UKIPO was not available for comment at the time of writing.