Legal Eye: High Court's patent sense

Where does ruling leave UK on software patents?

Should software be patentable? A key court ruling has cranked up the debate. But what does the decision really mean to those involved in developing and deploying software, asks lawyer Richard Taylor.

Anyone with an interest in software development will probably have been puzzled by last month's High Court ruling. The court decided the UK Intellectual Property Office (UK IPO) was wrong to refuse patent claims for computer programs.

But initial coverage may have overstated the importance of the ruling, because the European Patent Office (EPO) has long been granting software patents that are enforceable in the UK. All the same, the High Court's decision does represent an important watershed.

High Court patent ruling: Key issues
1. The difference between software and hardware patentability.
2. Inconsistency between UK and European treatment of computer-related inventions.
3. Increased market innovation and competition vs protection of intellectual property.

Since November 2006 the UK IPO has relied on a pair of landmark cases - Macrossan and Aerotel - for its approach to software patentability.

In the Macrossan case, the Court of Appeal refused a patent for a program that simply allowed users to produce documents via an interactive site. But Aerotel was granted a patent for its new combination of apparatus for making pre-paid telephone calls.

The UK IPO interpreted the Macrossan and Aerotel judgments as meaning it could not grant patents to computer programs at all. Justice Kitchin's ruling went against this interpretation.

In each of the five inventions considered - Software 2000 and laser printing, Astron Clinica and cosmetic surgery imagery, Inrotis and identifying proteins in drug therapy, SurfKitchen and mobile internet services, and Cyan Technology and chip programming - the UK IPO had allowed patent claims to the method that the companies had invented. But it rejected the patent to the program itself.

The ruling stated the UK IPO was wrong to blanket-ban computer programs and said if the method was patentable, then the program itself should be patentable too.

What the ruling means

The good news is that the ruling brings the UK more in line with the EPO, which excludes patents for computer programs unless they make a contribution that is technical in nature - for example, a program that improves the ability of mobile phones to access the internet.

As a patent lawyer, I welcome this ruling. Software patents are a controversial field - as anyone who witnessed the ferocious opposition to the European Software Directive a couple of years ago will testify.

Not since the Macrossan and Aerotel cases has the UK IPO's policy approach been under such scrutiny and we should take up this opportunity for constructive change.

There will be some in the computing community who will always remain implacably opposed to all software patents, and will see the ruling as a move towards wider patent monopolies that stifle application development.

Others will see it as giving software developers due reward for their innovations. Whichever side of the line you fall, having inconsistent approaches across Europe helps no one, and so Justice Kitchin's ruling should be seen as a positive and helpful step.

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But the ruling does not open the door to a more liberal US-style approach to software patents. The underlying bedrock of European law on software patents is unchanged.

Software remains unpatentable in Europe, unless the invention brings more to the party than the software alone.

Hot on its heels comes a second judgment, in which Autonomy Corporation appealed against the UK IPO's refusal to grant a patent to a program that analysed a file in an open window, searched the user's computer for files with similar or relevant content, and created a link to those files.

The appeal failed, as the court agreed with the UK IPO that a program of this sort was excluded from patentability. This shows that Justice Kitchen's judgement is not a charter for patentees.

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