Patent Law: Are computer programs patentable?
Introduction
On 13 March 2007, the Patents Court delivered its first ruling on Patents Act exclusions since the joint Court of Appeal cases of Aerotel and Macrossan in October last year.
This latest joint ruling is a response to separate appeals by Mr Cappellini and Bloomberg against decisions not to award patents by the Patent Office last summer.
The ruling is important as it clarifies:
- patent law in respect of computer programs;
- certain exclusions from patentability under the Patents Act 1977; and
- the 4 step test which needs to be met in order to successfully register an invention with a new patent.
Background: Why are patents useful?
A UK patent gives its owner a monopoly to commercially exploit an invention for 20 years, in return for publishing details of the invention to add to the stock of public knowledge.
A patent enables its owner to prevent third parties from making, using, selling or importing an invention in the country in which the right exists. Not all inventions qualify and there are stringent criteria which need to be met in order to be able to gain patent protection (see below).
What kind of inventions are patentable?
For an invention to be capable of registration as a patent it must be a process or a product and;
- be novel – i.e. it must not be known anywhere else in the world;
- involve an inventive step – i.e. it must not be obvious to someone who is skilled in the area of the invention;
- be capable of industrial application – i.e. it must be useful and be able to be used in a product or process;
- not be excluded by the legislation, nor be immoral or offensive.
What inventions can't be registered as a patent?
Section 1(2) Patents Act 1977 lists the following exclusions (which can't be patented):
- discoveries, scientific theories or mathematical methods;
- literary , dramatic, musical or artistic works or any other aesthetic creation;
- schemes , rules or methods for performing mental acts, games, doing business, and programs for computers; and
- the presentation of information.
Computer Programs and patents:
Current legislation and case law is far from straightforward in respect of patents for computer programs. Whilst computer programs fulfil the requirement of being capable of industrial application, they are rarely novel or non-obvious to skilled programmers (as most programs use standard techniques readily available in professional journals). However, the exclusion of computer programs applies only if the program itself is an abstract intellectual method.
The Patent Office may consider that the process is, as a whole, capable of being patentable if it passes a technical effect test. Is it capable of new technical application, effect or contribution? Accordingly, if a process is expressed in terms of improved and modified apparatus operating in a new way, it may be patentable .
What was decided in the ruling?
Mr Cappellini had invented a novel algorithm for determining the routes to be taken by a carrier when delivering packages. Bloomberg had created a method of distributing data, in which the data transmitted to a user was mapped to a more suitable user friendly form. Ultimately, both appeals were rejected for lack of "technical effect" as they related to schemes, rules or methods for performing a mental act. Bloomberg's on the basis that it was merely an advance in a computer program and Cappellini's on the ground that pure manipulation of data did not produce any physical or real world effect.
A potential lifeline
The prospective computer program patentee may have been offered a lifeline by the ruling. The Judge suggested that if a non-patentable invention can be "tethered" to a real-world effect or a real article, then an otherwise excluded claim may be rescued.
To give an example, a design method for a drill bit (a mental act) could potentially be made patentable by adding to the claim the step of making the drill bit in question i.e. otherwise excluded inventions could be "made" patentable by modifying the patent claim to one encompassing a real world effect. It will be interesting to see if his comments are followed in future cases.
What should I do now?
If you think that a software process or computer program you have invented has a commercial application (bearing in mind the costs and the timescales involved in applying for a patent), you should:
1) Ask yourself the following questions:
- Is it "new" or is it merely an advance on something which was there before?
- Is it obvious to a person with good knowledge and experience of the subject?
- Does it produce a technical effect "as such"?
2) Keep it quiet! Due to the requirement of novelty you need to be very careful to keep your invention a closely guarded secret. If you are sharing information with a third party then you will need an effective confidentiality agreement before any disclosure can be made.
3) Decide which markets you plan to exploit. A UK patent right gives protection only in the UK. There are different procedures for applying abroad.
4) Seek professional assistance when considering patenting and commercially exploiting an invention. Ashfords can advise you on your options and support you at all stages, including the selection of a suitably qualified and experienced patent attorney should this be required.
For further information:
To read the ruling click here: http://www.bailii.org/ew/cases/EWHC/Patents/2007/476.html
For information on the procedure for applying for a patent please click here: http://www.patent.gov.uk/patent.htm
If you need assistance with any technology law issue then please contact Ashfords' IP and IT Law Department.
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 nor as an alternative to taking professional advice relating to specific circumstances.
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