A ruling in the House of Lords on patents will create more confusion about when companies can enforce patents on technology they have developed, according to law firm Thring Townsend.
In a ruling last month (Kirin-Amgen v Hoechst, based on a patent dispute over DNA technology between two biotechnology firms), the House of Lords said there could be no simple test to decide whether an organisation's patent had been infringed.
The Lords ruling has disappointed critics of the UK patent law, who have claimed it is confusing and hard to apply.
A patent gives an organisation or individual a 20-year monopoly to exploit their invention in return for publishing it.
Although computer programs cannot be patented, software or hardware that produces a "technical effect" (ie does something new and clever) can be patented.
Of the 30,000 applications received by the UK Patent Office each year, 15% relate to computer-implemented inventions.
Graeme Fearon, intellectual property specialist at Thring Townsend, said, "The ruling did not define a checklist for saying whether something infringes a patent. Every patent dispute has to be treated on its own merits. There is no short cut."
IT and biotechnology firms are likely to be most affected by the ruling, he added.
How to protect your IT inventions
- Keep detailed, daily, dated and signed records, such as a lab notebook, of the research and development process, so that it can show at each point how the invention was arrived at
- Involve patent experts from an early stage. They will be able to help identify the crux of the invention and describe it appropriately in the draft patent
- Software is usually protected by copyright, but this only protects the specific coding of a program against copying and does not prevent someone else from obtaining the same result in a different way or independently developing a competing product
- "Clean room" techniques - where developers start from scratch without reference to existing software - are not strictly necessary from a patenting point of view, but are useful to avoid allegations of copyright infringement
- The fact that an invention consists of inventive software or hardware is not fatal to an application for a patent, but needs careful handling to emphasise the technical effect of the invention.
This was first published in November 2004