I was thrilled to recently learn that some certainty has seeped its way into the area of apparently un-patentable subject matter (the dreaded Âas-suchÂ exceptions, contained within s1 (2) Patents Act 1977).
Â It is almost impossible to decipher from the mass of case law, both from the UK and Europe, whether a computer program could actually be given protection by the patent system. Statute tells us that they cannot be patented, although this has not been Â interpreted strictly. Case law has suggested that, indeed, computer programs can be patented (usually if they have some sort of technical contribution). Furthermore, a European Directive which attempted to regulate the law in this area by providing for computer program protection was rejected.Â
In a fantastic move, in the case of Rockwell Firstpoint Contact (2006) the Patent Office applied aÂ four step test which will hopefully confirm the formula to apply when deciding whether a computerÂ program is patentable (Please see below).
The Patent Act 1977 tells us that a computer program is not an invention (and therefore not patentable) if it is a computer program Âas suchÂ. Cases such as Vicom, the IBM decisions, FijitsuÂs application, PBS Partnership, Hitachi and the CFPH case all applied slightly different tests to determine whether a computer program was patentable.
The new test derived from the recent case of Aerotel v Macrossan (2006), which itself attempted to insert some certainty into this complex area. The test is as follows-
Â· Properly construe the claim
Â· Identify the actual contribution
Â· Ask whether it falls solely within the excluded subject matter
Â· Check whether the actual or alleged contribution is actually technical in nature.
The subject matter in the Rockwell case concerned an application for a method and system of predicting transaction outcomes based on the monitoring and analysis of customers and agent interactions in a telephone call centre to enable an agentÂs advice to be tailored to each individual customer. The application was rejected using the above test as falling solely within excluded subject matter. Â
Hopefully this new test will remove the controversy which previous case law had exacerbated in theÂ patentability of computer programs.