How do I navigate through the different approaches currently taken on software-implemented inventions in the UK, Europe and US?


This isn't easy, even for lawyers and patent agents, but below is an explanation of the principles adopted in the US, the UK and the EU. In order to apply those principles to a specific software implemented invention, you will need the assistance of a patent agent in the relevant territory.


Software is protected by copyright as a literary work, but that only applies to the software code or, sometimes, the way a program looks and feels.  Copyright does not protect the underlying idea or invention that a program puts into effect.  In certain situations that underlying idea or invention may be protected by the registering a patent. 


Obtaining Patents in Europe and the US


The owner of a patent has a monopoly under which he can prevent anyone else from using any software that includes his invention (as defined in the patent claims) for 20 years from the date of the application. 


The European Patent Office (EPO) and some national patent offices have issued tens of thousands of patents for computer-implemented inventions.  Patents have been granted by the EPO for inventions relating to digital data processing, data recognition, representation and storage.  Patents have also been granted for software technology in automotive and mechanical engineering.  Image processing and computer graphics patents have also been granted. 


To qualify for patent protection in Europe an invention must be:

  • new;

  • involve an inventive step; and

  • be capable of industrial application


(Article 52 European Patent Convention and Section 1 of the UK Patents Act 1977.) 


Programs for computers "as such" (e.g. lines of code and algorithms) are not inventions and cannot be patented.  Nor can methods of doing business or playing a game.  Deciding whether an invention is or is not an program for a computer "as such" is difficult and there is much confusion over what can and cannot be patented. 


In the US the law on what is or is not patentable is far less restrictive than in Europe.  As long as an invention involves any new and useful process, or machine, composition of matter, method of manufacture, or any improvement to such an invention, the inventor may obtain a patent.  There is no statutory exclusion of computer programs or business methods "as such".  Since a decision of the Court of Appeal for the Federal Circuit in 1998  it has been an established principle in US patent law that the test applied to determine whether a computer program is patentable is whether it provides a useful, concrete and tangible result.   This means that all sorts of software, including non-technical applications such as accountancy software, are patentable in the US.


The fact that companies can obtain patents for software in the US creates increasing pressure for them to apply for patents covering the same software related inventions in Europe.


Deciding whether an invention is or is not a program for a computer “as such”


A significant difference between patent law in the US and European patent law is that, in Europe, an invention has to provide a technical contribution or possess a technical character, whereas in the US no technical contribution is necessary for patent protection.  (A technical contribution is a contribution to the state of the art in a non-excluded field which is new and not obvious to a person skilled in the art.) 


There has been some disagreement between the English courts and the EPO Technical Board of Appeal over the best approach to establishing whether there is a technical contribution. 


In Aerotel Ltd v Telco Holdings Limited and Macrosssan's Application [2006] EWCA Civ 1371 the Court of Appeal accepted the approach proposed by the UK Patent Office as it followed the decision in Fujitsu Limited's Application rather than the approach of the EPO, which the Court of Appeal considered was not yet settled.  The approach accepted by the Court of Appeal involves four steps to assessing patentability:


1.                   the actual contribution in terms of novelty;

2.                   the inventive step;

3.                   whether it is excluded subject matter "as such"; and

4.                   whether it has technical character.


In the more recent case of Symbian Ltd’s Application [2008] the EPO granted a software patent, but the IPO refused the UK application following the test set out in Aerotel.  The decision of the UK IPO was appealed and came before the Court of Appeal as something of a test case on the approach that should be taken on determining “technical contribution”.  


The patent was for a method of accessing data in a computing device that avoids the difficulties and potential unreliability, and therefore the malfunctioning of the prior art link-by-ordinal system.  The claimed invention was said to have “an application to a wide range of electrical devices including any form of computer, various forms of cameras and communication devices such as mobile phones… and other products which combine communications, image recording and computer functionality within a single device.”   The invention would enable such devices to work faster and more reliably.  


he Court of Appeal applied the four stage approach from Aerotel and decided that the invention was not a computer program “as such” because “it has the knock-on effect of the computer working better as a matter of practical reality” as “the instructions solve a ‘technical’ problem lying with the computer itself” and the “beneficial consequences of those instructions will feed into the cameras and other devices and products, which, include such computer systems.”  


The Court of Appeal judgment in Symbian has provided a good example of the sort of software that can be patentable and a useful explanation of the approach to be taken by the UK IPO and the courts in deciding whether a computer-implemented invention is patentable.  As a result of the Court of Appeal decision the UK IPOI has issued a Practice Note confirming that their examiners will continue to follow the four point test laid down by the Court of Appeal in the Aerotel case.  However, determining where the boundary lies between software that is or is not patentable remains difficult.  As the Court of Appeal recognised, “Bearing in mind the multifarious features of computer programs and the unpredictable developments which will no doubt occur in the IT field, we believe that it would also be dangerous to suggest that there is a clear rule available to determine whether or not a program is excluded by art 52(2)(c). Each case must be determined by reference to its particular facts and features, bearing in mind the guidance given in the decisions” 


Contact Details


If you would like further advice about any of the issues considered above please contact PaulNorthwood on 01869 331753 or email him at paul.northwood@northwoodreid.com


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This article is not intended to be, and should not be taken as being, legal advice.    The law often changes and it varies from jurisdiction to jurisdiction; the information in this article is generic in nature and specific legal advice should be taken before acting on any of it.


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