A group of small British businesses has mounted a challenge to changes made by the Intellectual Property Office's (formerly known as the Patent Office) to the scope of the monopoly a patent holder can be granted for a software patent.
They are objecting, specifically, to paragraph 14 in the IPO's recent November guidance on granting patents on computer implemented inventions. In this notice, the IPO said that from now on, it will not normally grant a patent holder the exclusive rights to distribute or sell software that forms part of a patent description.
This all hinges on some of the finer points of patent law.
A patent contains (at least) two parts: the description, and the claims. The description must contain enough detail for another person to replicate whatever is being patented. The claims, meanwhile, determine the scope of the monopoly: i.e., what it is you can stop people from doing.
A patent office spokesman offered the following example. You have applied to patent a washing machine, which is controlled by software. You are effectively asking to patent two things: the washing machine, and the software that controls it.
Under the new guidelines, the patent office says that while you have a monopoly on the washing machine, you do not have a monopoly on the distribution of the code. That means other people can distribute or sell copies of the software, provided they are not knowingly aiding another person in the infringement of your main patent. (This would count as secondary infringement, and is verboten.)
But now five small UK firms have contested this, saying the new rules create an absurd conflict between European patents and UK patents.
In Europe, they argue, where an invention involves novel software, a patent owner is entitled "to control the distribution of computer disks and internet downloads of the programs which configure an apparatus to perform a patented process".
They hold that this has been settled law throughout Europe, and accepted as such by the British Patent Office and all the other major patent offices in Europe.
"The Court of Appeal [has] 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," said Nicholas Fox, of Beresford & Co, the patent attorney acting for the companies.
"Following the British Office's change of practice in this area, what once was absurd has now become policy."
The five companies, Astron Clinica Limited, Cyan Holdings Plc, Inrotis Technologies Limited, Software 2000 Limited and Surf Kitchen argue variously that the IPO is stifling British entrepreneurship, forcing UK firms to apply for patents outside the UK, and putting British inventors at a disadvantage.
A judgment is expected within two months. ®