The Waterfront Partnership

Patenting Software

General Overview of Patenting Software as at June 2008

US Position

In the US, the general principle is that software (and business methods) are capable of patent protection.

European Position

In Europe, Article 52(2) of the European Patent Convention (EPC) excludes from patentability inter alia methods of doing business and programs for computers. However, the exclusion only extends to patents that relate to the excluded subject matter "as such".

The general principal is that software can be patented (notwithstanding Article 52(2)) provided that it is (i) new; (ii) inventive; (iii) capable of industrial application; and (iv) has the necessary technical effect, meaning a technical effect which goes beyond the normal physical interactions between the software and the computer.

The case law indicates that the required technical effect will be found when running the software results in something technical, such as the solution to a technical problem, or where technical features are required to carry out the claimed invention.

In the Hitachi Ltd's Application case, the EPO gave guidance on the "as such" exclusion and held:

"all that is required to save an application from being regarded as an item "as such" is the "presence of technical character which may be implied by the physical features of an entity......or may be conferred to a non-technical activity by the use of technical means"; and information does not necessarily confer a technical character to such a method."

In Hitachi the EPO noted that the act of using a pen and paper to write down the result of a mental act was a "technical effect". The upshot is that if there is a technical effect then the invention is not excluded by Article 52(2). However the tribunal must then proceed to the second step which is to look at the prior art and ask whether the patent is both novel and contains an inventive step "taking into account only those aspects of the claim that give the invention its technical character".

UK Position

Like Article 52(2) of the EPC, Section 1(2) of the UK Patents Act excludes the patentability of programs for computers "as such".  The UK authorities also make use of the "technical effect" test, however approached this test with a much narrower and stricter understanding of what would constitute the necessary technical effect. This meant of course that it was more difficult to obtain patent protection in the UK than it was in the EU.

There were however inconsistencies in the approach of the authorities in the UK in applying the "technical effect" test, and uniformity was desperately needed. Then in October 2006, the Court of Appeal in the Aerotel/Macrossan case adopted a new four stage technical effect approach, namely:

1. properly construe the claim;
2. identify the actual contribution;
3. ask whether it falls solely within the excluded subject matter; and
4. check whether the actual or alleged contribution is actually technical in nature.

This new four stage approach was seen to provide a structured and more helpful way of re-formulating the statutory test. However, the position in the UK was still some distance from that as applied in the EPO.

However, the position regarding the patentability of software in the UK has very recently received a good old-fashioned shake up with the High Court's decision in the case of Symbian's Patent Application, which overturned a decision of the UKIPO to refuse the patent because it relates to nothing more than a computer programme.

The Symbian judgement does go a long way towards the harmonisation of the approaches in the EPO and the UK, although this harmonisation is not yet set in stone as the IPO plans to appeal to the Court of Appeal on the grounds that the court in Symbian did not follow the procedures that were laid down in the Aerotel/Macrossan Appeal case.

The outcome of this appeal, if lodged, will be a hugely anticipated affair.

Richard Hill

Waterfront Partnership

© The Waterfront Partnership 2008