UKIPO changes its practice re Computer-related inventions

The UK Intellectual Property Office (UKIPO) has recently announced a revision of its practice relating to the assessment of patentable subject matter in the field of computer software. The revision sets out how, in certain conditions, computer program and the carriers containing those programs are patentable. Although narrow in scope, this change of practice is good news for businesses that sell software.

The UKIPO’s revised practice is due to a recent High Court judgement in Astron Clinica in which the UKIPO’s approach to the patentability of computer programs was under review. The review was part of an appeal from various decisions of the UKIPO in which claims in the form of a method performed on a suitably programmed computer and a computer programmed to carry out the method were allowed, but the claims to the computer program itself were not. In the judgement, the High Court criticised the UKIPO’s present practice and allowed the appeal, resulting in broader protection now being available for software.

As a result the UKIPO has issued a practice note setting out, with immediate effect, its revised approach. In this revised approach, the UKIPO has indicated that, whilst they would continue to follow their previous practice and apply the now well known Four-Step test, they would adapt their practice in certain conditions. The certain conditions being that if a method running on a suitably programmed computer and the programmed computer itself are patentable, then, in principle, the computer program underlying the method or running on the computer is also patentable.

This means that a UK patent application having claims to a computer program or to a carrier, containing the computer program, will now be allowable, as long as the method or apparatus running the program are considered to be patentable by the UKIPO.

More information about the UKIPO’s treatment of patentable subject matter can be found on the UKIPO website (http://www.ipo.gov.uk/patent/p-decisionmaking/p-law/p-law-notice.htm)

UKIPO Announces UK Trade Mark Application Fast Track Service

After 7 April 2008, a fast-track examination service will be available to anybody that file their UK Trade Mark applications online. The benefit of the fast track service is that the UKIPO will issue the first examination report for the application within 10 business days. This means that if the first examination report is a decision to publish the application ahead of its registration and, assuming it is not opposed, then a UK trade mark application could be registered in under 4 months.

The fast track service can only be selected by filing an on-line application and has to be selected and paid for at the time of filing. The cost of the fast track service is an additional £300 in official fees on top of the cost of the application itself. The UKIPO indicates that if it does not meet its ten day obligation, then the fast track fee will be refunded.

Further guidance on how the service will operate can be found on the UKIPO website (http://www.ipo.gov.uk/tm/t-decisionmaking/t-law/t-law-notice/t-law-notice-fasttrack/t-law-notice-fasttrack-guidance.htm).

Change in Fee Structure at the European Patent Office

The European Patent Office (EPO) has announced changes to the fee structure which will take effect on 1 April 2008 and 1 April 2009. The fee changes are summarised below.

Excess Claims Fees

Current EPO rules require excess claims fees to be paid for any application having more than 10 claims.

From 1 April 2008, no charge will be made for the first 15 claims, but a fee of €200 will be charged for each claim in excess of 15. This will clearly have a significant effect on applications containing a large number of claims.

Furthermore, from 1 April 2009, the charge for each claim in excess of 50 will be €500. This will have an even more significant effect on applications containing a large number of claims.

The revised excess claim fee structure will be applicable to all newly filed European Patent Applications, and all PCT applications entering the regional phase at the EPO after the date on which the relevant fee increase comes into effect.

What steps can be taken to reduce the effect of the new fee structure?

• Consider reducing the number of claims
• Consider filing new European applications before the new fee structure comes into effect, i.e. before 1 April 2008 and 1 April 2009
• Consider entering the regional phase in Europe early for pending PCT applications. i.e. before the new fee structure comes into effect on 1 April 2008 or 1 April 2009