UK Court dashes software hopes
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     31 October 2006
IP Software

On 27 October, the UK Court of Appeal turned down a plea from Australian programmer, Neal Macrossan, to allow his software system, UKCorporator – an online means of gathering company formation documents – to be patented. The case, which issued from a UK Patent Office rejection of March 2005, has once again highlighted the EU’s restrictive approach to software-related IP. Observing EU legislation, Lord Justice Robin Jacob ruled: ‘Mr Macrossan's method is for the very business itself, the business of advising upon and creating appropriate company formation documents. Accordingly we hold that Mr Macrossan's idea is excluded from patentability.

‘An arms race in which the weapons are patents has set in,’ Jacob continued. ‘Just as with arms, merely because people want them is not sufficient reason for giving them.’

However, Marks & Clerk partner, Dr John Collins, who specialises in software and business method patents, told IP Review Online: ‘It is disappointing that the Court did not truly clarify what software can be patented by avoiding the difficult interpretation of what a computer program is “as such” and what “technical contribution” is required to distinguish a software-based invention that can be patented. This decision will just create more heat and little light on the subject.’

Part of Justice Jacob’s ruling called for the European Patent Office’s Enlarged Board of Appeal to offer greater clarity on the very issues that Dr Collins has questioned. As if to highlight the need for such clarity, a parallel UK appeal judgement delivered on the same day ruled in favour of telecom firm Aerotel’s method for making phone calls from any available telephone using personal codes for prepaid accounts. The system was found to constitute a tangible hardware element.