UK court confirms software status quo and asks questions of EPO 28 Oct 06
The Court of Appeal in London has handed down its decision in the Macrossan v Comptroller General of Patents Designs and Trade Marks case, which related to the extent to which computer software is patentable in the United Kingdom. The appellant (Neal Macrossan) was unsuccessful in his attempt to overturn the High Court's decision upholding the original UK Patent Office decision to reject his patent application covering a computer-based system for incorporating companies. The current strict UK rules with regard to the patentability of software and computer implemented inventions therefore remain intact. However, in an unusual move the Court asked the EPO's Enlarged Board of Appeal to clarify what is and is not patentable under section 52(2) of the European Patent Convention because decisions from the EPO's Boards of Appeal have been "mutually contradictory ". Until this happens - if it ever does - patent examiners in the UK now have a four point test to help them in deciding whether an invention involving computer software can be patented: the claim must be properly construed; the actual contribution it makes should be analysed; it should be decided whether or not the claim falls within the excluded subject matter; and it should be determined whether the contribution is technical in nature. All of which is great for applicants and examiners in the UK, but does nothing about providing clarity in the rest of Europe. Until we do get further clarification, the extent to which computer software and computer implemented inventions are protectable across Europe will remain unclear, and businesses - large and small - will have to live with the resulting uncertainty and the costs this may cause.
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