Joff Wild

The UK Patent Office has responded to the Court of Appeals’ decision in the combined Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan’s Application [2006] EWCA Civ 1371 case (see below, "UK court confirms software status quo and asks questions of EPO", 28th October) by issuing new guidelines for examiners on how to assess patent applications relating to software and computer implemented inventions. These basically put flesh on the four point test established by the Court:

(1) properly construe the claim

(2) identify the actual contribution

(3) ask whether it falls solely within the excluded subject matter

(4) check whether the actual or alleged contribution is actually technical in nature

So now it is pretty clear exactly how such applications are to be dealt with in the UK. The problem is, of course, that if you decide to seek such patent protection in more than one European country, you are still going to be unclear as to where you stand. Unless the European Commission decides to deal with this through another directive, which is unlikely given the furore caused by the proposed CII legislation last time round, or the EPO accepts the Court of Appeals’ invitation to provide greater clarity; or until a software decision is dealt with at some time in the undetermined future by a court constituted under the European Patent Litigation Agreement or the Community patent, lack of certainty is going to be the name of the game. And that is a poor state of affairs for what is supposed to be a single market in which there are no barriers to the free movement of goods.