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United Kingdom Intellectual Property Office

The patent office of the UK is part of the UK Intellectual Property Office (UKIPO).

Case law

A patent being refused because it's software

In August 2006, the UKIPO rejected an application by Sun Microsystems for a software patent.

4. [...] for assessing whether an invention relates to unpatentable subject matter. It reflects the approach adopted by Peter Prescott QC, sitting as a Deputy Judge, in his judgment in CFPH, and is explained in the Practice Notice issued on 29 July 2005.[1] The examiner applied the relevant test and considered that the advance was a computer program operating on a computer program to produce a computer program, that is, a computer program as such.

32. I have found that the invention relates to a program for a computer as such. It is therefore not new and non-obvious (and susceptible of industrial application) under the description of "an invention" in the sense of Article 52 and is not patentable.

Patent office work manuals

The UK Intellectual Property Office has a series of Work Manuals which provide commentary on each section of the UK Patents Act and on the expected actions of Patent Office staff in relation to each section of the UK Patents Act. In particular, patents for computer programs, schemes, rules or methods for performing mental acts, playing games or conducting business are excluded from being inventions within the terms of the UK Patents Act 1977 (as amended) in Section (1)(2)(c), which has commentaries in the Work Manuals at the first chapter: Patentable Subject Matter.

Practice notes

The UK Intellectual Property Office publish guides to changes in their practice. These usually summarise what a Patent Office Examiner will do when an application contains excluded matter, for example: claims to 'a computer program on storage media'. In recent years, there have been a few practice notes issued on the topic of computer-related inventions.

The Aerotel-Macrossan decision prompted a practice note detailing the four-step process to decide if a claim is to excluded subject matter.

Before the Astron Clinica decision (see UK Case Law), patent attorneys were granted patents which claimed: (i) a method which included programming a general-purpose computer to do an act; and (ii) a system incorporating a general-purpose computer which is arranged to do a claimed act. The UKIPO would exclude claims to a computer program to do the act, or a computer program on storage to do that act. Following this decision, a new practice note was issued.

Finally, the most-recent practice note was issued after the 2008 Symbian case and appeal. It stated that the IPO would be sympathetic to a 'technical contribution' made by material which would otherwise be excluded from patentability, and that the UK Justices would read the four-step Aerotel-Macrossan test as being another way of making the same decision. Additionally, the UKIPO examiners will treat the computer implementation of what would otherwise be a mental act as excluded from patentability.

Related pages on ESP Wiki

External links

UKIPO pages on patent policy

Other UKIPO pages

Press articles