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United Kingdom - Change in Practice for Computer-Related Inventions

Spurred on by the EPO Technical Board decisions in the IBM cases discussed above, the British Patent Office has issued a Practice Notice in which it is stated "The Patent Office's practice will in future be to accept claims to computer programs, either themselves or on a carrier, provided that the program is such that when run on a computer it produces a technical effect which is more than would necessarily follow merely from the running of any program on a computer and which is such that claims to the computer when programmed would be rejected under Section 1(2)(c) under the existing practice".

The Practice Notice points out that the EPO decisions do not change the existing practice of the EPO in relation to patentable subject matter for which patents may be granted (there must still be a technical effect) "but only the nature of claims which will be accepted".

The British Patent Office takes the view that the British case law has decided that it is the absence of a substantive technical contribution in the subject matter which renders an invention unpatentable and that it is not possible to rescue inherently unpatentable subject matter merely by changing the semantic form of the claims i.e. by dressing a program for a computer up as a carrier or a conventional computer containing the program. However, the Patent Office agrees that, if an invention defines a substantive technical contribution to the art, then claims to a conventional computer program to perform that technical contribution, or to equivalent methods or processes, will be accepted as statutory. The prior practice of the Patent Office has been not to accept claims to the programs, whether in the form of a carrier bearing the program or otherwise since it was argued that such a claimed invention did not itself deliver the technical contribution which underpinned the invention, except when run on a computer. In view of the EPO decision, the prior practice is rescinded.


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© Copyright 1999 Ladas & Parry - Posted 10/11/1999
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