Computer program patents in the UK – they can't just say "no"

The United Kingdom is an important market for many of our software developers. We are often asked to protect our client’s inventions there. There are two options available.

The first option most followed is to file a European patent application at the European Patent Office in Munich. The application is examined for, among others, novelty, inventive step and subject matter. If it passes these tests the patent application is granted. The patentee then extends (validates) the patent in member states for example United Kingdom, France and Germany.

Many of us are fond of croissants. Some of us are fond of lederhosen. However, this differs from a commercial interest in the French or German markets. A second option for those with commercial interest only in the United Kingdom and not in the continental countries is to proceed directly with the UKIPO. The application is examined for novelty, inventive step and subject matter.

Over the last few years there have been differences between the receptiveness of the EPO and the UKIPO to computer software patents. Up until last month the differences were about as great as they could be. The EPO continues to consider computer program claims allowable if the program has the potential to bring about, when running on a computer, a further technical effect which goes beyond the normal physical interactions between the program and the computer. Up until last month the UKIPO just said no.

Last month in Astron Clinica the High Court of the United Kingdom held that the UKIPO couldn’t just say no. Mr Justice Kitchin ruled that the practice of flatly rejecting claims to computer program products was wrong.

The UKIPO is now urged to treat computer program claims in much the same way as the EPO. The UKIPO will continue to apply a four step test approved by Lord Justice Jacob in Aerotel/Macrossan. However, the UKIPO should no longer presume that computer program claims will not pass the test.

It remains to be seen how the UKIPO will interpret Aston Clinica. Many applicants will continue to file EP patent applications rather than UK patents if the EPO continues to treat such applications more favourably.

Classified patents

Patents are a well known and well used source of information. But what if the information in a patent specficiation would compromise New Zealand’s security, defence or international relations?

New Zealand, Australia and member countries of the North Atlantic Treaty Organization (NATO) such as the USA and the United Kingdom have the legal machinery to make sure that classified information never sees the light of day. The country places a secrecy order on the patent application until the information is deemed safe to release.

Many inventions are clear candidates for secrecy orders. Examples include camouflage and radar reflectors, bioweapons and nuclear technologies. Other technologies, particularly in the ICT sector, are not so clear cut. Some software technologies have the potential for terrorism. The best known example is the first general-purpose electronic computer. ENIAC was designed and built in the 1940’s to calculate artillery firing tables for the US Army’s Ballistic Research Laboratory.

Modern day examples include technologies for spreading viruses, and technologies for transmitting to and acquiring data from remote devices over wireless networks. Perhaps ironically, technologies for protecting devices from virus attacks or wireless information theft are also potentially subject to secrecy orders. Publication of such information would assist terrorists in devising more effective viruses or information theft practices.

Any person resident in New Zealand must have a patent application vetted by the Intellectual Property Office of New Zealand (IPONZ) before filing the patent application offshore. This is done by filing a patent application first in New Zealand so IPONZ can have a look at it. IPONZ will impose a secrecy order on the application if it is considered a security risk. Another option is to obtain clearance from IPONZ to file outside New Zealand without first filing in New Zealand. IPONZ reviews the subject matter of the clearance request. Clearance is granted if IPONZ does not anticipate a security risk.

It is risky to file a patent application outside New Zealand without either filing an application in New Zealand or obtaining clearance. New Zealand residents who do so face a jail term of 2 years. This penalty is in addition to those already applicable under the Crimes Act 1961. These are espionage (14 years jail), corrupt use of official information (7 years jail), wrongful communication, retention or copying of official information (3 years jail), and unauthorised disclosure of certain information (3 months jail).

Those readers who involve us in the early stages of invention protection have nothing to worry about.

Patenting your invention in eight easy steps – step 5

We've covered 4 steps so far. You have kept your invention secret (step 1). Your invention is new (step 2). You own the invention (step 3). It is the sort of thing that patents are granted for (step 4). And now it’s time for step 5: is your invention worth patenting?

Is it really worth patenting? What if the technology is going to be obsolete in 5 years? Do you really need to protect the concept for twenty?

Until recently consumers had a choice of high-definition DVD formats. The Sony Blu-ray or the Toshiba HD DVD. Toshiba have now announced that it will end production of HD DVD devices. If your invention covers only an HD DVD format or drive there is probably little point in proceeding with patent protection. HD DVD drives are likely to be obsolete.

What if the new features you have invented are too narrow? Say your invention requires data to be in the Blu-ray format. Even if the Blu-ray format is still around, what if another new format works just as well? Would a patent be too easy to get around by substituting a new format for the Blu-ray format?

In some cases, it may not be a good idea to proceed with patent protection. Particularly if the technology will shortly be obsolete or easily substituted by something else. However there is one thing we need to be aware of even if we decide not to proceed with patent protection for a new concept. Other parties may already have patented the concept. Searching is needed to avoid nasty surprises.

Watch out for the next issue of CHIP CHAT for step 6 – preparing the patent specification.

Recent developments in filing European patent applications

Two recent changes in European patent practice will affect anyone who has a current European patent application, or is planning to file a patent application in Europe soon.

First, the London Agreement, which takes effect in May 2008, will reduce the high costs of translating granted European patents.

European patents are granted in one of three languages: English, German or French. For your patents, this normally means English. When a European patent is granted, the owner must then extend (validate) the grant in their chosen European countries to obtain protection. Registration fees must be paid, and if English is not a national language of the country, then a translation of the patent must be filed. These costs may add an additional NZ$5,000-10,000 in each country, often at the end of an already expensive European examination process.

The London Agreement will improve the process for patent owners. Under the London Agreement, there will be no need to file translations of the patent in some countries such as Germany and France.

Any European patent having a grant date after 1 May 2008 will be able to benefit from the reduced fees. If your European application may be granted before 1 May 2008, we can use several strategies to delay grant until after this date. For more information, please speak to us.

Second, the European Patent Office (EPO) has increased its fees, especially for applications with lots of pages and/or lots of claims.

The new fees take effect on 1 April 2008 and 1 April 2009. These new fees may discourage the filing of large specifications with many claims. Presumably, the aim is to reduce the workload on examiners, and to encourage applicants to file divisional applications early.

Please call us if you would like more details about these developments.

Bio of the month: Mark Hargreaves

Mark joined A J Park as a senior associate in 2007. He is a commercial lawyer specialising in intellectual property, information technology and telecommunications.

Mark advises on technology commercialisation and the supply and acquisition of information technology systems, software and services.
Mark’s expertise includes negotiating, drafting and advising on:

• agreements to license and commercialise intellectual property
• research, collaboration and joint venture agreements
• franchise and distribution agreements
• telecommunications and information technology outsourcing
• systems supply and integration agreements
• software development, support and licensing agreements.

Before joining A J Park, Mark was a senior associate for large commercial law firms in New Zealand and Australia and in-house counsel for Citigroup in London.