IP/IT update September 2008

01/09/2008

By James Herbert, Partner and Head of Corporate and Commercial.

There is good news for software developers looking to patent their products and for all prospective trade mark owners as the application process is streamlined. We also update you on proposed developments in copyright law.

Patenting of computer programs

As a general principle of UK law, an invention which is purely a computer program is not patentable. Following a decision in the combined cases of Aerotel and Macrossan in 2006, that certain software could be patented if it makes a “technical contribution”, the UK Intellectual Property Office set out four step guidance taken from the judgment in the case. The guidance sets out the approach to be taken when considering whether an invention is more than merely a computer program. The 2008 Symbian case has re-opened the debate in a decision which went against the IPO. The IPO has rejected the decision on the basis that the four step guidance was not followed and will appeal to the House of Lords. Hopefully then, there may be some more definitive guidance to assist software developers.

Fast track examination of trade mark applications

New rules came into force on 6 April 2008 enabling fast-track examination of trade mark applications. The application for fast-track examination can only be made online and will cost £300 more than the basic current application fee of £200. The examination report will be sent to the applicant within 10 business days, instead of the standard period of several weeks. The changes are welcome as the registration process is a long one. At the same time, the period for objecting to an application is still three months, which means that, whilst the process will be shorter for uncontested applications, it is still at least four months' long. The IPO is investigating whether to reduce the opposition period.

Possible extension of copyright term for music recordings

The European Commission has proposed extending the term of copyright on recorded music from 50 to 95 years. One of the main aims would be to assist session musicians who contribute to sound recordings but are the least likely to benefit from royalty payments. Record companies would be required to establish a fund to reserve a proportion of royalties for the benefit of session musicians. In the UK, this proposition has been rejected at Government level, following the Gowers Review on Intellectual Property. The reasoning is that an extension would not benefit the majority of performers, who are mostly required to pay their royalties to the record company and because this would increase costs for businesses who pay to play music and consumers who buy the music.The baton has been picked up in a Private Members' Bill and we will report on progress in future editions.

Exceptions to the copyright rules

The UK Intellectual Property Office is consulting on proposed changes to the copyright exception rules. Of particular interest is whether to introduce a format- shifting exception, which would allow consumers to copy material protected by copyright to another format. It still comes as a surprise to most people that they are not legally permitted to copy their CDs or other digital material, for their own use. This envisages the situation where, for example, a CD is purchased and then downloaded onto a computer to then be uploaded into an MP3 player. The Music Business Group, which is a major music industry body, has submitted that the copyright holders, the artists and the record companies, will not be compensated for the resulting loss of revenue.