Computer programs: patentable or not patentable?

It is well established that in the UK and Europe, computer programs are not patentable “as such”. However, the application of a computer program may be patentable if it possesses “technical character”.

However, establishing whether a computer program possesses “technical character” can be rather problematic.

Although the UK and European patent offices have been granting patent claims that relate to computer programs for many years, a European Parliament rejected the proposed EC Directive on the Patentability of Computer Implemented Inventions (EC Software Patent Directive) in July 2006, which caused some controversy.

There remains the question, therefore, of whether computer programs are actually patentable in the UK and Europe.

There is a considerable body of case law from the European Patent Office regarding the patentability of computer programs, which is rather contradictory. The UK Court of Appeal noted the contradictions in the Macrossan and Aerotel case (2006). The Court identified two approaches which were taken by the European Patent Office:

– The “technical effect” approach: this involved asking whether the invention as defined in the claim made a technical contribution to the known art – if it did not, the invention was not patentable. This approach was first adopted by the EPO Boards of Appeal in the Vicom/Computer-related invention [1987] case, in the IBM/Text processing (1990) case and in the IBM/Data processor network (1999) case;

– The “any-hardware” approach: this involved asking whether the claim involved the use of or was to a piece of physical hardware, however mundane (whether a computer or a pencil and paper)- f yes, the invention was patentable. This approach was adopted in three cases: Pension Benefits (T 931/95), Hitachi Auction (T 0258/03) and Microsoft/Data transfer (T0424/03).

However, the Court in the Macrossan and Aerotel (2006) case approved a four-step test for patentability, which it said was consistent with what had been decided in previous Court of Appeal cases:

1. Properly construe the claim;

2. Identify the actual contribution;

3. Ask whether the contribution falls solely within excluded subject matter; and

4. Check whether the actual or alleged contribution is actually technical in nature.

This is the approach that UK courts are likely to adopt for the foreseeable future.

The European approach remains unclear and it appears that whether or not inventions involving computer programs are granted the protection of a patent will be decided on a case by case basis.

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