Patents minefield for manufacturers and IT firms

“We’re back to square one on patent cases, back to where we were 10 years ago … and the position for IT companies is more complex than ever.” So says Graeme Fearon, IP lawyer for Thring Townsend solicitors. His comments come after a landmark ruling the House of Lords last month – the first for many years concerning patent law – that threw out accepted guidance and tests accrued over the last decade, against which judgments on alleged patent infringements have been being made. The ruling itself was on the long-running Kirin-Amgen Inc v Hoechst Marion Roussel case concerning recombinant DNA technology, but Lord Hoffmann, as is the tradition with House of Lords rulings, took the opportunity to clarify the 1997 Patent Act and subsequent revisions and practice – and the ruling will apply to manufacturing and to IT companies throughout the UK. “Software, as such, isn’t deemed patentable,” says Fearon, “but the devil is in the detail of those two words ‘as such’, and that’s where all the fun starts.” Society wants innovation to be patentable and rewarded, but it doesn’t want monopoly positions to result, so there’s a balance to be struck. Hence the practice of employing clever and expensive patent agents and lawyers both to protect IP and to take on those who appear to infringe it. And whereas, precedent had set a series of tests to guide and simplify rulings – so that ‘technical’ niceties weren’t abused and the spirit of cases prevailed, that luxury has now gone. “All bets are off, really,” agrees Fearon, “there’s no longer a rule of thumb to apply, and cases are going to have to be looked at in their entirety… It’s good news for patent lawyers” For business, however, it could be a very expensive nightmare. With simple tests removed, the implications of infringing others’ patents and having your own infringed are potentially far more damaging than they were. Although arguably also fairer, the costs of fairness in terms of patent preparation and litigation, will potentially be very much higher. Best advice: engage good patent agents and/or lawyers very early in your product or software development processes. And whatever you do, be sure to engage people that understand the technologies you’re concerned about. Failure to do so leaves you wide open.