Ashfords Solicitors - Can I get a patent for my computer program?

Practitioners advising clients trying to obtain a patent for a computer program have, on the whole, advised clients to file an application for a European patent (which means that the application will be considered by the European Patent Office ("EPO")) rather than for a UK only patent (which means that the application will be considered by the UK Intellectual Property Office ("UKIPO")). The reason for this is that it is felt that the EPO is more relaxed when it comes to allowing patents for computer programs.

The Court of Appeal in this country was recently asked to consider the scope of the exclusion of "programs for computers" from being patentable (Symbian Limited –v- Comptroller General of Patents). In summary, the Court of Appeal was asked to determine what types of computer program are patentable.

The Court of Appeal explained in its judgment that there appears to be a divergence of approach between the EPO and the UKIPO when it comes to determining what types of computer program are patentable. After considering the relevant case law, the Court of Appeal concluded that, in order to be patentable, the computer program must make a contribution which is "technical", or at least must have "technical features". Putting it another way, a computer program must have a "technical effect" before it is patentable.

The Court of Appeal then considered what was meant by the term "technical effect". It held that, when considering whether or not to grant a patent for a computer program, each case must be determined by reference to its particular facts and features. The mere fact that what is sought to be registered is a computer program is "plainly not determinative". However, if the computer program makes a technical contribution (for example, by solving a technical problem lying within the computer itself and thus making the computer a better computer, or by instructing a computer to instruct a machine to follow a novel and inventive process to manufacture a product) then it can be registered as a patent.

In the case in question, the alleged invention improved the speed and the reliability of the functioning of a computer. Thus, the Court of Appeal concluded that such an invention was not a computer program "as such", but had a "technical effect", in that it solved a technical problem lying within the computer itself.

In conclusion, the Court of Appeal has declared that if, when using a computer program, it results in a technical innovation (whether within, or outside, of a computer) then this will normally suffice to enable the computer program to be patentable (subject, of course, to the invention not falling foul on other grounds, such as it not being new, or involving an inventive step, or otherwise being excluded pursuant to the Patents Act 1977, such as where the computer program merely contains a method for performing a mental act, playing a game, or doing business).

Ashfords regularly work with clients to assist them in determining whether or not it is possible for them to obtain a patent, or some other form of intellectual property right, in relation to their activities. If you would like to discuss this article further, or whether or not it might be possible for your product or process to be covered by a patent or some other form of intellectual property right, then please do not hesitate to contact either Mark Lomas, Carl Steele or Garry Mackay.

Ashfords is regulated by the Solicitors Regulation Authority. The information in this article is intended to be general information about English law only and not comprehensive. It is not to be relied on as legal advice or as an alternative to taking professional advice relating to specific circumstances.

October 2008

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Can I get a patent for my computer program?

Introduction