Software patent refusal could go to House of Lords

The businessman behind a patent application that failed on the grounds of being a software program has applied to appeal the case to the House of Lords.

Neal Macrossan is attempting to gain a UK patent for his invention, which is an automatic system for collating the forms needed to form a company. The long-running case has been closely watched as a test of whether or not the law on software patents would change in the UK.

"There is an issue of law here that affects not just me, but all sorts of interested parties," said Macrossan, who lives in Australia. "Unlike the Court of Appeal, the House of Lords is not bound by any previous decisions, including its own."

Patent attorneys Marks & Clerk will coordinate the team representing Macrossan, which includes its own solicitors and Alastair Wilson QC of Hogarth Chambers. Whilst Macrossan will pay court fees, the team is not requiring him to pay their professional fees.

"This is an area of great public interest, especially given the failure of the EU directive on computer-implemented inventions to restore a pan-European consensus," said Dr John Collins of Marks & Clerk.

When Macrossan applied for a patent his application was refused by the UK Patent Office. His appeals to both the Patent Office and the High Court were unsuccessful. He was given permission early this summer to take his case to the Appeals Court, when a judge said his case had "a real prospect of success".

The European Patent Convention (EPC) does not allow patents to be awarded for inventions which are nothing more than "schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers". That was brought into UK law by the Patents Act of 1977.

The Appeals Court last month rejected his application, ruling that it was both a business method and a computer program and therefore ineligible for a patent.

The Patent Office has just issued a practice note which advises applicants and attorneys on the effect of the Macrossan ruling on its behaviour with regard to patent applications. The Patent Office said that it would treat the Macrossan ruling, and a ruling on a company called Aerotel considered in parallel with it, as the definitive statement on software and business method patent applications, and would follow its precedent above previous ones.

"The Office takes the view that Aerotel/Macrossan must be treated as a definitive statement of how the law on patentable subject matter is now to be applied in the UK," said the Patent Office. "It should therefore rarely be necessary to refer back to previous UK or European Patent Office (EPO) case law."