Software Patents Under United Kingdom Patent Law - Comparison of EPO With UK Practice

Comparison of EPO With UK Practice

Patents granted by the European Patent Office (EPO) may be brought into effect in the UK once certain formal requirements have been met. As soon as a European patent is granted (provided that no opposition is filed), then final authority to interpret Article 52(2) and (3) EPC rests with each national jurisdiction and any person may apply to the UKIPO or the UK courts to have a patent granted by the EPO revoked in the UK.

There is to date no supranational European system for patent litigation, so the courts of each EPC Contracting State retain the final say, and vary to some extent from one to another, as to just how far the exclusion should extend.

Compared to the EPO, the UKIPO have consistently taken a very different approach when deciding whether or not to grant patents involving software. This has sometimes drawn criticism from those advocating the need for harmony across Europe. (See article on the CII Directive).

The most important difference between the two Offices is that the EPO will in general accept that any patent application relating to a computer-implemented method is "an invention", whereas the UKPO will reject an application on the basis that it does not describe "an invention" if the only contribution provided by the inventor is a computer program. The EPO instead only consider technical features when assessing the presence or otherwise of an inventive step and will therefore normally reject the trivial computer-implementation of a non-technical method as lacking an inventive step. The UKPO, in contrast, consider any feature, technical or not, as being capable of contributing to an inventive step. (See Software patents under the European Patent Convention, which discusses the evolving position and practice of the EPO on this issue).

Thus, for example, a patent application describing a new computer chip used to implement a faster method for calculating square-roots was rejected as not being an invention in the UK (Gale's Application), but would probably be deemed an invention in principle by the EPO. The EPO would instead consider whether the new method of solving square roots provided a technical solution to a technical problem and would only grant the application if such a solution were inventive.

It was noted by the Court of Appeal in Aerotel and Macrossan that using the reasoning of most of the EPO case law (such as T 258/03 - Hitachi) would result in the same final conclusion as the "contribution" approach. However, the reasoning in a particular Microsoft case was held up as being flawed. The UKPO have also expressed the opinion that the end result would normally be the same. This is disputed by groups such as the Foundation for a Free Information Infrastructure who consider that the EPO is consistently granting patents that would be refused by the Courts in the UK and elsewhere in Europe.