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Top of Form; the patentability of software.

Written by Jane Coyle on 25 April 2009

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A new test restricting patentability of software has been introduced in a US Federal Court known as the "machine or transformation". The President of the European Patent Office (EPO) has referred a set of questions to the EPO'S Enlarged Board of Appeal on software patentability, which will have an impact in Europe.

Mr Justice Lewison, sitting in the Patents Court has considered the UK position following the Court of Appeal's most recent judgment in Symbian. Mr Justice Lewison admitted after the Court of Appeal's most recent judgment in Symbian that he was disappointed that the Court of Appeal had declined to provide a clear rule to determine whether or not a program is excluded from patentable subject matter. What follows is a summary of his and the UK's position of what amounts to a "technical" contribution:

The four-stage Aerotel test remains the law, but should not be followed blindly, one must ask whether the contribution made by the invention is "technical". The Court of Appeal "somewhat depressingly" failed to spell out what this means, but referred to early decisions of the EPO Technical Boards of Appeal and its own earlier decisions in Merrill Lynch and Gale.

Mr Justice Lewison analysed these decisions and distilled the following signposts to what he called a "relevant technical effect":

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;

And/or whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

He added the qualification that, if there is a technical effect in this sense, it is still necessary to consider whether the claimed technical effect lies solely within matter excluded from patentability. This seems rather circular as the above principles are culled from decisions identifying the type of technical contribution that is patentable. While each case must be decided on its own facts, Mr Justice Lewison's guidance points to precisely the sorts of things that are not excluded from patentability.

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