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Re: [Fsfe-uk] Software patentable in the UK again

From: James Heald
Subject: Re: [Fsfe-uk] Software patentable in the UK again
Date: Thu, 31 Jan 2008 19:41:27 +0000
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Alex Hudson wrote:

On, off, on, off - now it's on again ;)

Part of the UK Intellectual Property Office's practice post-Macrossan
was disallowing any patent which covered a computer program.

Not quite - what you couldn't claim was /just/ a computer program.

That has
been appealed and seemingly over-turned:


I'm honestly not sure why this is a surprise to IP Kat, but I haven't
read the decision.

So, we're back to "technical effect" again, in a way.

Yes and no.  But it's not good news; and it would be good to try to respond.

The Macrossan decision said you had to look to see what the contribution made by the patent disclosure actually was -- was there just a computer program being revealed, or was there a contribution which went beyond excluded subject matter?

Unfortunately, the decision was perhaps not as forthcoming as it might have been, in mapping out how that distinction can be made.

The present decision is about five devices, with conventional hardware, where the novelty is in the data processing element -- eg Astron Clinica processing infra red photographs of skin in particular diagnostic ways.

The Patent Office was already prepared to grant patents for the devices as a whole -- eg it viewed the contribution to skin diagnosis revealed by the patent application as representing a contribution to more than just "the subject matter or activities [of making programs for computers] as such".

The question is whether the same could be said for the bare program on a disk.

Following Macrossan, the Patent Office started saying "no". The program doing something was what went beyond a "computer program as such" and could be protected; but the program itself on its own could not. This was a reversal of the UKPO's previous position.

The judge here is saying however that this is not something that explicit in Macrossan, and the default should be to follow the EPO unless UK courts have specifically indicated otherwise.

Basically, the EPO argument is that the program on the disk itself is a novel thing, which represents a novel contribution to skin diagnosis (not just to computer programming), because it would have that effect when run on conventional hardware with input from conventional peripherals.

Of course, the EPO's man Steinbrener has a politcal hatred of the Art 52 computer program exclusion, and wants to emasculate it as far as possible.

On the other hand, in the UK recently there has been a tendency to at least try to exclude /something/ by Art. 52 -- eg a case just before Macrossan by the late Judge Pumphrey, who decided that a drill design program could be patentable only as part of an overall process that was actually creating drill bits, but not as part of a process that was creating designs for drill bits, nor for simulating how designs would fare.

If Kitchin's decision is allowed to stand, this line in the sand may become rather less tenable, and the tests the UKPO applies against software patents - which following Macrossan have tended to require quite a close interaction with specific hardware - may become a lot lot weaker.

Unfortunately, the Macrossan decision is vague enough that, although the recent UKPO approach arguably seems to be in line with its mood, following this judgement patent lawyers could argue that it is not explicitly mandated. So this decision could, as Alex suggests, throw into the air again just how abstract a swpat can be, and still get through the UKPO.

That is one reason that one might hope the UKPO might seek clarification from the Court of Appeal.

Another thing that sticks in the throat is that Judge Kitchin seems to have swallowed hook line and sinker two quite contentious assertions used by Beresfords to shape his thinking that in broad terms this was the "right result" that he should try to navigate the fine details to aim for overall.


1. That the monopoly on the program (though easier to enforce) is essentially the same as the monopoly on the device -- and that to distinguish the two would merely be legal over-fussiness, elevating form over substance.

2. That "indirect infringement" proceedings can't be used in cross-border cases, so inventors deserve something which can.

Both of these seem to have weighed quite heavily with Judge Kitchin, to the extent of shaping what he thought was the "just" outcome for the case (?)

But IMO they are both false.

The monopoly granted by program claims /is/ different, because it forecloses different things. Even though all of the patents in this case were for concrete devices, the UKPO is also granting patents for some even more evidently 'soft' things - eg for particular compiler techniques, or for particular code running in particular places on a network.

There are legitimate uses for such code which do not involve breaking a patent on running it: for example, provision of such code to second parties for research/simulation purposes; doing contracting work maintaining systems which contain such code for end-users in overseas territories where the patent does not apply; and perhaps most fundamentally, writing pseudocode to express such methods for discussion; or as branches of source code which are not to be compiled in particular territories. All of these are covered by "program claims", despite not being covered by "device claims".

What about the problem with "indirect infringement"? Well, a suit could be filed in any EPO country where the patent was in force against a distributor there, if the distribution was self-evidently for the purpose of infringing the device patent. It's true you'd have to go to each country separately, but then that's what you'd have to do generally in Europe under "direct infringement" if the supplier was from outside the EU. (Hence the clamour for EPLA). The difference is that you can at one go stop a UK supplier exporting the code as a finished product from the UK. Not such a big difference after all.

* The emotional arguments Beresfords played on, that may have persuaded the judge, are questionable. * Program claims are /not/ just the same monopoly as device claims. They have nasty effects in their own right. * If the UKPO is forced to allow Program Claims, it may revise its understanding of Macrossan, and allow even "softer" device claims.

I think it is serious, and bad news.

What can we do?

The UKPO says it is considering whether to appeal. I think we need to urge that it does appeal, that there are serious policy issues at stake here, and that if those are in question then it is something that really *should* be checked with the Court of Appeal.

I feel personally a bit guilty not to have done more sooner - I'm actually in the middle of moving flat at the moment, and have been rather more focussed on other issues for some time now. I feel this should have had an instant response; and it's going to be important. But it got fumbled.

Somehow, though, the UKPO needs to get the message that this is not a small technicality, still less a welcome relaxation; but rather this is for many a threatening and concerning development, which it would not be appropriate to leave at the High Court level.

   -- James.



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