Five UK-based technological SMEs are confronting the UK Intellectual Property Office (UKIPO) over inconsistencies between British and European law. The firms – Astron Clinica, Cyan Holdings, Inrotis Technologies, Software 2000 and Surf Kitchen – are contesting a decision of late 2006 that deprived British companies of the ability to control disks and downloads of software that drives computer-implemented inventions. As a consequence of the decision, the firms have found that duplicate copies of their key inventive programs have been illegally distributed.

When UKIPO – in its former incarnation as the UK Patent and Trademark Office – stated last November that it would no longer accept claims related to disks or downloads, it placed itself in immediate contravention of European Patent Office (EPO) policy. The firms have moved to challenge the decision in a UK Court of Appeal hearing of 21 May; a ruling is expected in two months’ time.

Astron Clinica CEO, Professor Annie Brooking, said: ‘We have an active and aggressive intellectual property strategy at Astron Clinica – our intellectual properties are a core asset for the company and it's essential that we are not disadvantaged in protecting them relative to our competitors, especially by our own legal system.’

Software 2000 product manager, Jon Williams, also set out his concerns: ‘[We are] totally reliant on intellectual property for commercial success. Innovation is our business, and we rely on protecting it and licensing it as an integral part of our business model. Without the ability to protect Software 2000's innovation it would prove difficult to compete in the marketplace.’

Nicholas Fox, patent attorney for Beresford & Co and the firms’ representative, gave his overview of the situation: ‘In a judgement a number of years ago, the Court of Appeal stated that it would be “absurd”, if on an issue of patentability, a patent application should suffer a different fate according to whether it was filed at the European or British Patent Office. Following the British Office's change of practice in this area, what once was absurd has now become policy.’

However, UKIPO told IP Review Online: ‘[Our current] approach to patenting inventions involving computer programs is based on a four-step test laid down by the Court of Appeal in a judgement in the cases of Aerotel and Macrossan. Patents will not be granted for innovations that are solely business methods or computer programs. Innovations which add something to human knowledge beyond this – for example, an improved car braking system – may be patentable, even if the only new element is a new computer program.’

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