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Patentability of Computer Programs

Written by Michael Coyle on 23 October 2008

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If you have a computer program is it patentable? The debate continues.

Is a computer program patentable? This ongoing debate was rasied once again in Symbian which made its way to the Court of Appeal. At the first hearing the Hearing Officer considered that the application related to "a program for a computer as such" within the meaning of section 1(2)(c) of the 1977 Act, and that accordingly it was excluded from patentability. The Act states:-

-1.(1) A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say

(a) the invention is new;

(b) it involves an inventive step;

(c) it is capable of industrial application;

(d) the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A below;

and references in this Act to a patentable invention shall be construed accordingly.

(2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of-

(a) a discovery, scientific theory or mathematical method;

(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;

(c) a scheme, rule or method for performing a mental act, playing a game, or doing business, or a program for a computer;

(d) the presentation of information;

but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.-

The relevant provision of the European Patent Convention (EPC) for present purposes is article 52, which provides as follows:

-(1) European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

(2) The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

(d) presentations of information.

(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.-

Jacob LJ, giving the judgment of the court in the Aerotel/Macrossan case, said that, the court should adopt a four stage approach, namely:

(1) Properly construe the claim;

(2) Identify the actual contribution;

(3) Ask whether it falls solely within the excluded subject matter;

(4) Check whether the contribution is actually technical in nature.

An important question when discussing the patentability of a computer program is what has the inventor really added to human knowledge? When one identifies the contribution you can then decide whether that contribution is solely the excluded subject-matter itself ie point 3 and moving on effortlessly to emphasise that the contribution must be technical ie point 4.

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