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

[James Heald]

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:
>
> http://ipkitten.blogspot.com/2008/01/high-court-allows-computer-program.html
>
> 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.

Namely:

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.


So:
*  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.



> Cheers,
>
> Alex.
>
>
>
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