Intellectual Property

Patents Act 1977: Patentable subject matter

1. The Office's Practice Notice dated 2 November 2006 detailed the way patent examiners should assess whether inventions are for patentable subject matter following the judgment of the Court of Appeal in the matters of Aerotel Ltd v Telco Holdings Ltd (and others) and Macrossan's Application [2007] RPC 7 ("Aerotel/Macrossan External Link"). Among other things, paragraph 14 of that Notice recorded the Office’s view that Aerotel/Macrossan left open a question over permissible forms of claim: can claims to a computer program (or a program on a carrier) be allowable when other claims in a different form, claims covering the use of that particular program, would be allowed? For reasons the Notice explained, the Office concluded that claims to computer programs or to programs on a carrier were not allowable.

2. In his judgment in Astron Clinica and other’s Applications [2008] EWHC 85 (Pat) ("Astron Clinica External Link"), Kitchin J has now clarified the law in this area. He has decided that where, as a result of applying the test formulated in Aerotel/Macrossan, claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable then, in principle, a claim to the program itself should also be allowable. However, Kitchin J made it clear that the claim to the computer program must be drawn to reflect the features of the invention which would ensure the patentability of the method which the program is intended to carry out when it is run. Where, but only where, these conditions are met, examiners will no longer object to claims to a computer program or a program on a carrier.

3. The Office will implement this change in approach immediately. Apart from this one change, the practice of the UK-IPO remains as set out in the Practice Notice of 2 November 2006.

4. Any enquiries about this notice should be sent to:

Sarah Barker
UK Intellectual Property Office

Concept House
Cardiff Road
South Wales
NP10 8QQ
United Kingdom

Tel: +44 (0) 1633 814807

Sean Dennehey
Director of Patents
UK Intellectual Property Office
7 February 2008