Is software patentable? Episode II

The UK IPO have always trod a somewhat solitary path on software patents, relying on UK case-law. That test meant that the UK IPO were to:

1 properly construe the claim

2 identify the actual contribution

3 ask whether it falls solely within the excluded subject matter and

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

In the Symbian case the UK IPO appealed against an appeal against their refusal to grant a patent. Believe me, this is not an easy area. Somewhat understandably, you might argue, there are a lot of people keen on getting patent protection for software.

But unfortunately the Patents Act 1977 (as amended) states in Section 2(c) that, and I more or less quote, a “program for a computer” is not an invention for the purposes of the Act. Fairly black and white, you might say.

So what happens next with lawyer types is that we look for something that is patentable in relation to the program – if that ain’t patentable I’ll damn well find something that is..

What the guidelines mean in practice is that the UKIPO and the courts are concerned with identifying a “technical contribution”. The Symbian patent application was held to be patentable because a technical contribution was provided by improving the operation of a computer.

I wish it were all so simple however it is a good place to start. There have been a lot of contradictory cases heard, articles written and opinions aired, but that is our problem. The usual definitive way to find out if something is patentable is to file an Application. From that point Lawdit will endeavour to tease out the patentable element that will ensure you gain monopoly protection. B.T.W. the whole question is simpler in the US.

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