Patentability of computer-related inventions

The debate over patentability of computer software in Europe continues. On 8 October 2008 the Court of Appeal handed down its judgment in an appeal relating to patentability of a computer software invention of Symbian Ltd. The judgment confirmed that the concept of "technical effect", as regularly applied by the European Patent Office when considering patentability of computer software inventions, is the approach to be used in the UK.

The Court of Appeal had previously considered the origin and interpretation of "technical" in the cases of Merrill Lynch and Gale, and most recently in the case of Aerotel. The judgment in Symbian confirmed that these cases are still good authority on the issue of "technical". In addition, the judgment in Symbian clarified that a technical innovation, whether within or outside the computer will normally suffice to ensure patentability for a computer software invention. This is contrary to recent practice at the UK Intellectual Property Office, which had adopted a restrictive approach to the issue of patentability of computer software inventions, allowing patents only for software that produced a technical innovation outside a computer.

The questions developed in Aerotel to aid in the determination of whether a particular computer software invention is patentable were applied to the invention in this case. It was found that contrary to the UK Intellectual Property Office's original decision to refuse to grant a patent, Symbian Ltd's invention was patentable.

The judgment noted a degree of inconsistency between the European Patent Office's approach to computer software inventions and the approach applied by some national courts across Europe, and called for "a two-way dialogue between national tribunals and the European Patent Office, coupled with a degree of mutual compromise".

In a perhaps surprising response to this call, on 22 October 2008 the President of the European Patent Office has referred a number of questions on the subject of patentability of computer software to the European Patent Office's Enlarged Board of Appeal. It is likely to be some time before the Enlarged Board of Appeal responds, if they even do – they have the power to refuse to consider the President’s referral. In the meantime we expect the Symbian judgment will be very helpful in securing UK patents for computer software inventions that improve the speed and efficiency of computers themselves.

Click here The full text of the Symbian judgment.

Click here for the President of the European Patent Office's referral, or here for a summary.

New Trade Mark Rules

On 1 October 2008 a new set of Trade Mark Rules came into force. As well as removing duplication and inconsistencies in the previous Trade Mark Rules, they will also include a number of policy changes. The Statutory Instrument which sets out the new rules is available here.

The process applied by the Trade Marks Registry for dealing with applications will, in the main, be unaffected by the rule changes. However, there are some important changes relating to opposition and proceedings before the Registry.

Opposition period: The opposition period is now reduced from three months to an initial two months. The two month period can be extended for a further month should a third party still be considering opposing an application. This change is intended to bring forward the registration of most trade mark applications by one month.

Cooling off period: The cooling off period during opposition proceedings is changed from a single 12 month period to a split period, allowing 9 months initially, with an option of extending the period to 18 months on request by both parties.

EPO Fees

Change in Fee Structure at the European Patent Office

Following on from the fee changes of 1 April 2008, the European Patent Office (EPO) will make further fee changes which will take effect on 1 April 2009. The fee changes are summarised below.

Excess claims fees

Currently, excess claims fees are charged at €200 for each claim after the 15th. From 1 April 2009, the charge for each claim in excess of 50 will be €500. This will have a significant effect on applications containing a large number of claims. The revised excess claim fee structure will be applicable to all newly filed European Patent Applications, and all PCT applications entering the regional phase at the EPO after 1 April 2009.

What steps can be taken to reduce the effect of the new fee structure?

• Consider reducing the number of claims
• Consider filing new European applications before the new fee structure comes into effect, i.e. before 1 April 2009
• Consider entering the regional phase in Europe early for pending PCT applications. i.e. before the new fee structure comes into effect on 1 April 2009