| PATENT — Invention — Exclusion from patentability — Computer programs — Whether claims to computer programs excluded from patentability — Convention on the Grant of European Patents (1973) (Cmnd 7090), art 52(2)
In re Astron Clinica Ltd and others [2008] EWHC 85 (Pat); [2008] WLR (D) 12
Ch D: Kitchin J: 25 January 2008
Claims to computer programs were not necessarily excluded from patentability by art 52 of the Convention on the Grant of European Patents 1973. Where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method were allowable, then, in principle, a claim to the program itself should be allowable.
Kitchin J so held when allowing appeals by Astron Clinica Ltd, Software 2000 Ltd, Inrotis Technologies Ltd, Surfkitchen Inc and Cyan Holdings plc, from a decision of Hearing Officer Peter Marchant who on 4 July 2007 had held that their applications for patents with claims to computer programs for carrying out patentable methods were not allowable and should not be accepted in their current form.
KITCHIN J said that claims to computer programs were not necessarily excluded by art 52 of the Convention; where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method were allowable, then, provided the claim was drawn to reflect the features of the invention that would ensure patentability of the method that the program was intended to carry out when it was run, a claim to the program itself should also be allowable. There was nothing in Aerotel Ltd v Telco Holdings Ltd [2007] Bus LR 634 that suggested that all computer programs were necessarily excluded from patentability. The applications concerned computer related inventions and an examiner had 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 had erred in rejecting the corresponding program claims on the basis that they were necessarily prohibited by art 52. Accordingly, the appeals would be allowed and the cases remitted to the United Kingdom Intellectual Patent Office for further consideration. It was highly undesirable that provisions of the Convention be construed differently in the European Patent Office (where patent claims to computer programs were allowable if the program had the potential to bring about, when running on a computer, a further technical effect that went beyond the normal physical interactions between the program and the computer) from the way they were construed in the national courts of a contracting state. Since the decision in Aerotel Ltd v Telco Holdings Ltd [2007] Bus LR 634 the apparent practice of the United Kingdom Intellectual Patent Office had been to reject all computer program claims.
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