Full case report

Astron Clinica Ltd & Ors v Comptroller General

Reference [2008] EWHC 85 (Pat)
Court Chancery Division (Patents Court)

Judge Kitchin J

Date of Judgment 25 Jan 2008


Summary

Patents – Software – Patentability of software – UK Intellectual Property Office (UKIPO) practice – Substantive inventive contribution


Facts

Astron Clinica (skin imaging technology up to 2mm beneath skin’s surface), Software 2000 (print software) and SurfKitchen (superior mobile phone applications) and Cyan Technology (semi-conductor chip design specialist) appealed UKIPO’s decision to refuse their patent applications for software.


Issue

Whether UKIPO’s practice of refusing claims to computer programmes, because it considered that such claims did not of themselves deliver the contribution underpinning the invention, was correct.


Held

Remitting the applicants’ cases to UKIPO for reconsideration:

Not all software is necessarily excluded from obtaining patent protection. It may be patentable in the UK if it produces a new and substantive technical contribution. UKIPO’s interpretation of software’s patentability should be brought into line with EPO.


Comment

British industry will applaud this decision, having formerly had to eschew the lower costs and typically quicker grant periods of a UK patent application in favour of the more expensive and typically less robust grant process of a European patent application. A stream of software related UK applications is predicted.


Download this Judgment


Instructing Solicitors

Beresford & Co. for the Appellants; Treasury Solicitor