English High Court Confirms Computer Program Claims Are Legitimate

English High Court decision on computer program claims moves the United Kingdom into line with European Patent Offices.

On 25 January 2008, the English High Court handed down the decision in Astron Clinica Limited and others v The Comptroller General [2008] EWHC 85 (Pat), which moves the United Kingdom's position on software claims back into line with the European Patent Office (EPO) and other mainland European Offices. This decision clarifies that claims to computer programs are allowable in the United Kingdom provided they meet the general requirements for patentability. Claims are also allowable irrespective of whether or not the code is defined as being recorded on a carrier.

Case Consolidation

The decision dealt with a number of consolidated appeals from the United Kingdom Intellectual Property Office (UKIPO). The cases in question all had in common the fact that claims directed to computer programs on a suitable carrier had been rejected for falling into an excluded category of subject matter, despite the fact that the corresponding method and apparatus claims had been allowed. The essential question was therefore whether patent claims can ever be granted for computer programs. This was a claim format issue, rather than a substantive patentability issue.

UKIPO v EPO

Carving its own course, the UKIPO has been taking an increasingly tough line on subject matter relating to computer programs, with examiners and hearing officers rejecting many computer program claims relating to diverse areas of technology.

Reading somewhat between the lines of the recent Court of Appeal decision in Aerotel v Telco, Macrossan's Application [2006] EWCA Civ 1371, the UKIPO released a practice note indicating examiners should reject claims to computer programs.

On the other hand the EPO regards such claims as allowable provided it can be established that the program brings about the necessary technical contribution to the art.

The various computer programs considered in these consolidated appeals included the following:

A program for generating bit masks for use with laser printers

A program for generating images representing the results of planned cosmetic or surgical interventions which change the distribution of chromophores in skin

A program for configuring a computer to process data on target proteins for drug therapies

A program which improves the ability of cellular phones to access internet services

A program for generating data for configuring...