Computer Programs and Computer Implemented Inventions

The availability of patent protection for computer implemented inventions in the UK and Europe is a much discussed area of law. There is a widely held misconception by some that it is simply not possible to obtain a patent in the UK or Europe for a computer program or computer implemented inventions more generally.

Introduction

This article will address these misconceptions and explain why they arise, whilst also making some suggestions for how practice can be optimised to increase the chance of getting a patent granted for an invention which has, at its heart, a computer program. It is certainly true that in some cases software can be difficult to protect by patent. However, the law in the UK and Europe, although differing in details of approach, often leads to the same result which is that computer programs or computer implemented inventions are protectable by patents.

The discussion below will relate to the position specifically before the UKIPO and UK courts. It has been recognised by the UK courts for many years that although the statute expressly excludes computer programs as being “inventions” which are capable of patent protection, the exclusion is narrow. It relates only to computer programs “as such”. This is taken to mean that if the computer program, when run on a computer, makes a technical contribution, it will be an invention and therefore good subject matter for a patent, irrespective of the fact that it is embodied by a computer program.

This same approach, of looking for a technical contribution, is often used to determine whether other types of apparently proscribed subject matter, are inventions and therefore capable of patent protection.

Here we describe the current position and approach to these issues before the UKIPO and courts, as established over the years by statue and the courts. We then describe some recent cases that shine a new light on this established area of law. Finally, some practical points are included to bear in mind when deciding if it would be worthwhile to proceed with a patent application.

Background

The legal provisions for having a patent granted include the requirement that there is an “invention”. Within the UK law (or indeed any substantive patent law in Europe) there is no positive definition of what something must be or do to qualify as an invention. Rather, a list of exclusions is provided that defines those things that are considered not to be inventions. The list includes generally abstract ideas, and specifically includes, computer programs and rules and methods for performing mental acts. Something will only fall foul of one of the exclusions if it is considered to relate to that thing “as such”.

There is a long history of cases in the UK Courts, which started almost 30 years ago, by the adoption into UK law of the Vicom case (T208/84 Computer-related invention/VICOM) of the EPO Boards of Appeal. This decided that what matters is whether the claimed subject matter, considered as a whole, makes a technical contribution to the art. If it does then there is an invention which can be examined for novelty and inventive step. If no technical contribution exists, then there is no invention, and the analysis ends.

The EPO has, over the years, moved away from this “contribution approach”. The fundamental objection to this approach has been that the point at which to decide on the patentability of anything with respect to the art is in the consideration of novelty and inventive step. Thus the EPO has left behind the formal contribution approach, but it has remained the law in the UK, due largely to the more rigid principles of precedent within the UK legal system.

UK Approach Today

So, how does it work today in practice? We need go no further back than 2007 to the case of Aerotel [Aerotel Ltd v Telco Holdings Ltd and Macrossan’s Application [2006] EWCA Civ 1371, [2007]], decided in the Court of Appeal.

In Aerotel, the court reviewed the case law on the interpretation of section 1(2) of the UK Patents Act 1977 and approved a four-step test (actually proposed by the UKIPO) for the assessment of what is often called “excluded matter”, as follows:

• Step one: properly construe the claim
• Step two: identify the actual contribution
• Step three: ask whether it falls solely within the excluded matter
• Step four: check whether the actual or alleged contribution is actually technical in nature.

Subsequently, the Court of Appeal in Symbian [Symbian Ltd’s Application [2008] EWCA Civ 1066, [2009] RPC 1] made clear that the Aerotel test is not intended to provide a departure from the previous requirement set out in case-law, namely that the invention must provide a “technical contribution” if it is not to fall within excluded matter.

In a subsequent decision AT&T/CVON [AT&T Knowledge Ventures LP and CVON Innovations Limited v Comptroller General Of Patents [2009] EWHC 343 (Patents)], and with the intention of helping attorneys, applicants and judges down the line when faced with these issues, a number of “signposts” were laid down. These were said to help point to answers to the fundamental question; whether the subject matter falls solely within the excluded matter. These include such points as

• whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
• whether the claimed technical effect operates at the level of the architecture of the computer; that is to say, whether the effect is produced irrespective of the data being processed or the applications being run;
• whether the claimed technical effect results in the computer being made to operate in a new way;
• whether there is an increase in the speed or reliability of the computer;
• whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

In combination, together with a number of other cases which fine tune the approach, these case define these way that the UKIPO and subsequently the courts will analyse a case and arrive at a decision as to whether or not an invention, implemented in software, nonetheless relates to a computer program “as such”. Such dry legal analysis can be interesting to lawyers. However, to inventors, engineers and managers in a commercial environment, it can create a confusing and messy reality. It is within this context that the incorrect belief that software cannot be protected by patents propagates.

A Commercial Approach

This was cut through recently, in a decision of His Honour Judge Colin Birss sitting in the High Court, [Halliburton v Comptroller of Patents ( [2011] EWHC 2508)], relating to excluded subject-matter, including mental acts and computer-implemented inventions. Although this is only a High Court decision, and therefore not determinative when stood next to the earlier Court of Appeal cases in this area, it provides an extremely useful précis and summary of the approach to follow. Judge Birss is known and respected for his no-nonsense commercial approach.

The court’s conclusions in summary were that, when considering whether or not a computer program is patentable subject-matter, it is necessary to look at what task it is that the program, or programmed computer, actually performs.

The invention in Halliburton related to a method of designing drill bits for drilling in earth formations, i.e. large drill bits for oil fields and the like. The patent application had been refused by the UKIPO as a mental act and/or a computer program and the applicant appealed to the High Court.

On the point of computer programs, the judge concluded that when there is an invention that is implemented in software, this is not of itself enough to conclude that the subject-matter is excluded. As he stated,

“…The question is decided by considering what task it is that the program (or the programmed computer) actually performs. A computer programmed to perform a task which makes a contribution to the art which is technical in nature, is a patentable invention and may be claimed as such…”

Thus, it matters not how the function is performed or achieved. What matters is if the programmed computer does something technical. This may be useful in coming to a conclusion and is the way the UK courts seems to be thinking at present. Halliburton is of course “only” a High Court decision, but it shows us how the Court of Appeal decisions, in, say, Aerotel and Symbian ([2008] EWCA Civ 1066) can be applied.

Conclusions and Practice Points

Ultimately drafting alone is unlikely to be sufficient to place an invention into the realm of patentable subject matter if it is not there already or at the very least does not solve a technical problem using technical means. However, by focussing on what it is that an invention does and the technical contribution that it provides, the chances of success before the UKIPO and ultimately before the Court will be maximised.

The approach of Halliburton can be considered a “black box” approach. Ignore the fact that the invention is embodied in a computer program. Place it in a black box and ask what it is doing. If it provides a technical contribution, the fact that it is really just a computer program need not get in the way of a patentability.