Eileen McDermott, New York
The UKIPO’s long-awaited practice notice explaining how patent examiners will assess software inventions following the Court of Appeal decision in the Symbian case has been described as “fudged” by a UK patent practitioner.
The notice comes two months after software licensing company Symbian scored a victory when the Court agreed with Mr Justice Patten’s March ruling upholding its claim that the UKIPO was wrong to reject its application for a patent for a software-related invention.The company’s application claimed a method of accessing data in a computer device and, in particular, a method of accessing data held in a dynamic link library in the computing device – in effect enabling computers to run faster and more efficiently.
John Collins, a partner of Marks & Clerk, noted that the UKIPO published a practice notice following the favourable Aerotel/ Macrossan decision just one day after the judgment. “Now, following a decision they don’t like, it took two months,” said Collins. “It’s not good practice – why the delay?”Collins described the notice as a “fudged smoothing over of the cracks”, since it does not expressly allude to any major change in practice. The UKIPO initially rejected Symbian’s application on the grounds that it related to nothing more than a computer program. Patten said that he believed the UKIPO had taken “too narrow a view” of the technical effect of the invention.
Last week’s practice notice said that, pursuant to Symbian, “examiners will apply the structured approach of Aerotel/ Macrossan to address the fundamental question whether a claim falls solely within the excluded matter”. The Aerotel/ Macrossan case was decided in October 2006 and set out a four-step test that examiners should use when making a decision on computer software inventions: 1) properly construe the claim; 2) identify the actual contribution; 3) ask whether it falls solely within the excluded subject matter; and 4) check whether the actual or alleged contribution is actually technical in nature.
In Symbian the Court applied the Aerotel/ Macrossan test and ruled that the invention did not fall within the excluded subject matter since “it has the knock-on effect of the computer working better as a matter of practical reality”, which resulted in it having a technical effect.Although the judgment conceded that the concept of a technical contribution was “imprecise” and “could easily mean different things to different people”, it added that this did not mean that the technical contribution test was “unhelpful or inappropriate”.
The practice notice also said that the case has clarified that software addressing problems solely within the programming of a computer may be considered patentable if they result in a tangible improvement in the overall operation of the computer. Collins further described the tone of the notice as “disingenuous”. “There is a significant change, but the practice notice doesn’t make that clear,” he said. “It’s completely the wrong approach for a public interest body.”
From:www.managingip.com
