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The Patent Office was wrong in automatically rejecting a patent
claim for computer programs, the High Court ruled last Friday in a
decision which could strengthen the protection offered to software
on its own (Astron Clinica and Ors).
Until last week’s ruling the position of the English courts and
the UK Intellectual Property Office (IPO) was at odds with that of
the European Patent Office (EPO).
The EPO’s view is that protection is available if the program
has the potential of bringing about a technical effect going beyond
the normal physical interactions between the program and the
computer.
The practice in English law however has been such that computer
programs "as such" are regarded as not patentable.
Computer software, which is created by lines of code, is
protected by copyright or under the law of confidential
information.
The general view is that computer programs are protected if they
have a “technical effect”, so that if a program is part of the
robot or equipment which benefits from patent protection, then that
program is protected by association.
The question raised – not for the first time – in Astron Clinica
was whether stand-alone programs could benefit and Mr Justice
Kitchin said they could and held that computer programs which make
a substantive inventive contributions may be eligible for patent
protection, even though they are distributed on disc or
downloadable from the internet as was the case in the appeals.
The judge also held that he was minded to reach this conclusion
in order to bring an end to the 'highly undesirable' situation
where provisions of the European Patent Convention are construed
differently in Britain and by the EPO.
"In recent cases, the IPO has looked carefully and also rejected
products that looked like software alone”, Jimmy Desai, a partner
at Blake Lapthorn Tarlo Lyons, told Solicitors
Journal.
“One way around this situation is to formulate patents so that
they are not just software alone”, said Desai. “Now the High Court
has made clear that applications in respect of software should not
be rejected as a matter of course; it’s quite a move forward”,
Desai said.
The main advantage in securing patent protection is that the
owner acquires a 25-year monopoly over the patented process or
product.
In comparison, copyright only allows the copyright-holder to
stop others copying the work.
In addition, Desai says that the patent owner can prevent others
from marketing a product or process performing the same function,
even where the mechanism used is different or if the third party
has no knowledge of the patented process.
Solicitors Journal (5 February
08)
Jimmy Desai is a partner in Blake
Lapthorn.
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