UKIPO sticks to 4-step software patent test
18th December 2008
Despite a recent court ruling which was seen to be critical of its approach, the UK Intellectual Property Office (UKIPO) will still use a previously formulated test on software patents. However, according to The Chartered Institute of Patent Attorneys (CIPA) this could cause uncertainty and increase the cost of doing business in the software industry.
Earlier this year, the UKIPO lost a case against software firm Sybmian when the Court of Appeal overturned the UKIPO’s judgement that a patend could not be granted for the software. Lord Neuberger, the judge in the case, did not follow the process set out by the UKIPO, which was derived from cases involving Aerotel and Neal Macrossan, but the process set out in an earlier judgment, in a case involving Vicom.
Many saw the ruling as a rejection of the UKIPO's previous methods of judging software patent claims howeber the UKIPO has said that it will still continue to apply the Aerotel/Macrossan test to decide whether an invention qualifies for a patent stating "Since both tests are legitimate for determining excluded matter, examiners will apply the structured approach of Aerotel/Macrossan to address the fundamental question whether a claim falls solely within the excluded matter” The Symbian software was allowed a patent by the Court of Appeal because it improved the operation of the software in a mobile phone, which the court said meant that it had a technical effect.
The UKIPO went on to state "The Intellectual Property Office has previously recognised that an invention which either solves a technical problem external to the computer or solves "a technical problem within the computer" is not excluded," it said. "What Symbian has now shown is that improving the operation of a computer by solving a problem arising from the way the computer was programmed – for example, a tendency to crash due to conflicting library program calls – can also be regarded as solving "a technical problem within the computer" if it leads to a more reliable computer."
However, the Chartered Institute of Patent Attorneys has stated that the UKIPO's approach was not helpful in clarifying the situation for inventors.
For more details of this story, visit OUTLAW news