The High Court is set to review government restrictions on the protection of computer-implemented inventions in the U.K.
[ClickPress, Mon Nov 12 2007] The High Court is set to review government restrictions on the protection of computer-implemented inventions in the U.K.
The hearing, set for 19 November follows an appeal by four small high-tech English companies against a decision of the UK-Intellectual Property Office in July. The high-tech four are challenging the UK-IPO’s refusal to accept patent claims that cover disks and downloads, thus undermining the ability of British industry to protect inventions reliant upon the development of new software.
Astron Clinica Limited, Software 2000 Limited, Surf Kitchen Inc and Cyan Holdings Plc. have developed technology in fields ranging from skin imaging and printer drivers through to telecoms and micro-controllers. Each is reliant on novel software, and the ability to control the distribution of that software is critical to the success of their business.
The UK-IPO’s decision to exclude protection for disks and downloads means that British industry can no longer rely on British patents to give them the protection they need to successfully market and compete in the field of computer-implemented inventions. The UK-IPO’s surprise new practice, announced in November 2006, is at odds with settled patent law and practice throughout Europe. High-tech businesses can obtain a European-level monopoly over the distribution of computer disks and internet downloads of programs that configure an apparatus to perform a patented process. Now, in Britain, they cannot.
The UK-IPO’s arbitrary move disproportionately affects British industry. English companies normally choose to file British patents first because of the lower costs and typically quicker grant periods. Now, in order to secure the competitive advantage they need, British business must file European instead. The higher costs and slower grant process impedes the ability of British industry to protect, license and market patented products and processes from an early stage.
“A lot of people think there is no problem here because disks and downloads are protected by copyright,” noted Nicholas Fox, of Beresford & Co, the patent attorney acting for the high-tech five. “However, that is just not true. Copyright protection only protects code against copying. In contrast, patent protection enables a company to monopolise an invention even if competitors independently come up with the same idea. In order to protect their commercial interests companies need patent claims directed towards the products and processes that are sold in the market place. In the case of computer based inventions this means that claims to disks and downloads embodying an invention are required.”
Judgement is expected within 2 months of the hearing date.
Notes to Editors
1) The European Patent Office decision allowing protection for patent protection of computer programs which implement "technical inventions" is IBM /Computer Program Product Claim -Decision No. T1173/97. The policy of allowing such claims is reflected in the Guidelines for examination on programs for computers issued by the European Patent Office which can be accessed at the European Patent Office Website at http://www.european-patent-office.org/legal/guiex/e/c_iv_2_3_6.htm The European Patent Office is responsible for examining and granting approximately 80% of the patents which are currently in force in the Britain today.
2) The change in practice by the UK-IPO was announced in a practice notice dated 2 November 2006 which can be accessed on the UK-IPO website at: http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice/p-law-notice -subjectmatter.htm The relevant portion of the notice is paragraph 14 which whilst noting that the Aerotel decision which prompted the publication did not address the issue, the Patent Office's view was that "few claims to programs in themselves (or programs on a carrier) will pass [the test for patentability]"
3) The UK-IPO decision rejecting the claims to disks and downloads can be accessed on the UK-IPO website at : http://www.ipo.gov.uk/patent/p-decisionmaking/p-challenge/p-challenge-decision-results/o18507.pdf In the decision, the Hearing Officer concludes at paragraph 32 that the position of the UK-IPO is “inconsistent with practice in the EPO and other European countries, which is highly undesirable” . The Hearing Officer then proceeded to reject the claims based on his understanding of the 2 November 2006 practice notice.
4) Astron Clinica, based in Cambridge UK, designs, develops and brings to market products that incorporate its proprietary skin imaging technology SIAscopy, further information available at www.astronclinica.com. SIAscopy uniquely enables medical, pharmaceutical and cosmetics industry professionals to visualise up to 2mm beneath the surface of the skin using both a proprietary hand held scanner and an off-the-shelf digital camera. Astron Clinica's customers include dermatologists, plastic surgeons, GPs and aesthetic medicine practitioners. Astron Clinica, DERMETRICStm, SIA, SIAscopy, Powered by SIAscopy, SIAscanner, COSMETRICS, SIAscan, SIAscope, Beau Visage, Beauty Timeline and MediSpa are trade marks of Astron Clinica Limited.
5) Cyan Holdings plc is a fabless semiconductor company which specialises in the design, sale and support of a range of 16-bit and 32-bit general-purpose low power, high performance microcontroller chips ("MCUs"). These chips are integral components used in nearly all electronic products, ranging from mobile phones and washing machines to toys, televisions and motorcars. Consumer entertainment markets require more powerful processors and are usually based on 32-bit chips which Cyan is developing to serve this market segment. Cyan operates in a $14 billion worldwide market for microcontrollers, which is poised to grow to $20 billion by 2010.
6) Software Imaging is well respected as one of the most influential and reliable technology providers in the print and imaging industry. For over twenty years the company has been at the forefront of global innovation in print and imaging software, delivering significant time-to-market and cost advantages to customers through its Printer Driver Technologies, Embedded Systems and Specialty Applications. Software Imaging is the Microsoft development partner for Unidrv and with the launch of Windows Vista continues to work with Microsoft on the new XPS document format. Headquartered in the Oxford with offices worldwide, Software Imaging licenses technology to the world's largest suppliers of printers, digital copiers, and print-related services.
7) SurfKitchen is uniquely focused on delivering a mobile end-user experience superior to alternative browser based solutions. SurfKitchen's simple logical menus ensure easy discovery, consumption and repeat usage of mobile data services. Simplifying the end user experience improves subscriber satisfaction, encourages adoption and promotes operator brand identity. SurfKitchen's platform enables digital content to be sent over-the-air and stored on a wide range of handsets from feature phones to smart phones, ensuring the end-user always has fresh content. SurfKitchen provides service providers with the right applications and comprehensive support to increase data usage, customer loyalty and ultimately reduce churn. SurfKitchen's solutions have been deployed by major operators throughout the world including Orange Group, Telstra , Maxis, Etisalat, Telenor, Telefonica Moviles España and MTC Group. This list of high profile customers, combined with SurfKitchen's unique expertise, has resulted in SurfKitchen becoming the market leader in On-Device Portal Applications delivering a dynamic user experience. For more information, visit: www.surfkitchen.com
For Astron Clinica
Miranda Carew +44 1223 265000
For Cyan Holdings
Paul Johnson +44 1954 234400
For Software Imaging
Jon Williams +44 1865 786000
For SurfKitchen Inc
Marketing Department +44 (0) 870 351 2914
For Beresford & Co
Nicholas Fox +44 2078312290