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An Overview of Software Patents in English Law

Written by Aasim Durrani on 06 December 2010

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Software patents are a complex area of the law where interpretation requires consideration of a substantial body of case law. The starting point when considering whether a computer program can be patented is section 1 of the Patent Act 1977. The English courts have interpreted this section in a way which transposes the requirements of Article 52 of the European Patent Convention 1973 ("EPC") into English law and Article 52(2)(c) states that computer programs are not capable of being patented.

However, the legal position is not as straightforward as it initially seems. In Vicom's Application (1987), the applicant was using computer-aided design in an engineering process. The European Patent Office stated that a technical process which was carried out under the control of a program did not constitute a computer program as such and was therefore capable of being awarded a patent. This showed that for a patent to be granted, a program must bring about an effect that is separate from the program and this approach was affirmed in Merrill Lynch's Application (1989), which was heard before the Court of Appeal.

The ability to patent computer aided design in Vicom's Application contrasts with the position adopted by the Court of Appeal in Fujitsu's Application (1997). In this case, the applicant had created a tool for modelling molecular structures where data about two compounds would be entered into the computer, together with details as to how they should be joined. This process was significantly quicker than assembling plastic models of the structure by hand. The Court of Appeal rejected the application on the grounds that the program did not achieve anything new and that its only advantage was to reduce the time taken to produce models of molecular structures. Accordingly, the application lacked anything beyond the normal advantages of using a computer program. The case was notable, however, because it stated that the English courts should be guided by the European Patent Office when deciding whether the subject matter of an application is patentable.

In 2006 the Court of Appeal gave its judgment in Aerotel v Telco and Macrossan's Application; two separate appeals from the High Court. In giving its judgment, the court set out a new four-stage test to be adopted when considering whether a patent should be awarded:

Properly construe the claim (i.e. decide what the subject matter is before considering whether it can be excluded);

Identify the actual contribution (consider how the invention works and the advantages is provides);

Ask whether the contribution falls solely within excluded subject matter (as mentioned under Article 52(3) EPC);

Check whether the contribution is technical in nature.

Aerotel v Telco related to an application for a telephone exchange system. A caller holding an account with the exchange owner would obtain credit from the owner. To make a call, the caller would dial the number of the special exchange and input a code, followed by the number of the person he wished to call. If the code was verified and he had enough credit, he would be put through. The call would be terminated if his credit ran out. The court held that this was patentable because the system was new and was not merely concerned with selling phone credit. It was also proposed that the implementation of the system would use new hardware rather than running on conventional computers, despite being able to do so.

Macrossan's Application was concerned with automating the system for incorporating companies. A computer user wishing to set up a company would be prompted by a remote server to answer questions from which the appropriate incorporation documents would be generated. The system relied on document templates being filled in using the information from the user's answers and the completed documents being made immediately available to the user, being sent to the user or being submitted on the user's behalf. The court rejected the application on the grounds that the applicant had not contributed a new form of hardware, as in the Aerotel case. The system also fell under the excluded subject matter exception, as Article 52(2)(c) of the EPC specifically excludes computer programs and methods of doing business from being patented.

The Court of Appeal was again asked to rule on whether a software patent could be granted in the case of Symbian v Comptroller-General of Patents, Designs and Trademarks (2008). In this case, the applicant company had applied to the Comptroller-General to patent dynamic links in computing devices as a means of accessing data. Dynamic link libraries allow for a set of functions to be used by many different processes in an operating system, thereby enabling the computer to work faster and more reliably. Lord Neuberger held that the subject matter of the proposed registration being a computer program was not enough in determining whether the application was valid. The issue had to be resolved by asking "whether it revealed a technical contribution to the state of the art".

The Court of Appeal upheld the view of the High Court that the claimed invention passed the four-stage test set out in the Aerotel case because it did make a technical contribution and was not precluded from registration under Article 52(2)(c) of the European Patent Convention. However, the court also stated that each case had to be judged on its own merits and there is currently no clear rule as to whether or not a computer program is excluded by Article 52. Accordingly, there are likely to be more software patent cases reaching the Court of Appeal in the future.

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