Software Patents Under United Kingdom Patent Law - UK Intellectual Property Office Practice

UK Intellectual Property Office Practice

On 2 November 2006, following the judgment in Aerotel v Telco and Macrossan's Application, the UKIPO issued a Practice Note announcing an immediate change in the way patent examiners will assess whether inventions relate to patentable subject matter. This practice is considered to be a restrictive interpretation of the judgment by patent attorneys.

One aspect of the practice change was a reversal in the UKIPO practice concerning computer program claims. For several years previously, the UKIPO had allowed claims directed to a computer program if the method performed by the computer program was itself patentable. In light of the first step of the Aerotel/Macrossan four step test, to construe the claim, the UKIPO decided that claims to a computer program were not a permissible form of claim even if the underlying method was found to be patentable.

This practice remained in place until 7 February 2008 when, following the judgment in Astron Clinica and other’s Applications, the UKIPO issued a new Practice Note stating that they would return to their previous practice of permitting claims to computer programs if claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method were themselves allowable. This change affirmed the established practice of considering the substance of the invention over the particular way it was claimed but it was not thought that it would cause a material change in the subject matter which would be deemed patentable by the UKIPO.