Patents and Software

Filing a software patent

We are often asked whether or not it is worth filing for a software patent in the UK.

You will all know that a patent may be obtained in respect of an invention if it is new, has an inventive step, and is capable of industrial or technical application without falling in to any of the the exclusions. One of these exclusions is contained in the Patents Act 1977.Section 1(2) of the Patents Act provides that a patent will not be granted for “a program for a computer”. The same provision can be found in Article 52 of the European Patent Convention (EPC). Times change though and what if the software patent actually achieves some form of technical effect. Europe took the lead and many thousands of patents have been filed in the EPO which adopted a fairly liberal approach to software patents.

In the UK, the English courts have been much more restrictive in their approach. The Court of Appeal (Supreme Court) in Merrill Lynch and Fujitsu adopted the “technical effect” approach i.e. has it made a technical contribution to the known art. If it did not, it was deemed to be excluded from patentability by section 1(2) of the Patents Act. The approach taken in Fujitsu determines the UK’s approach to patent software law. However due in part to the ever change in software and as technology grows a pace, the Court of Appeal considered the position once again in Aerotel Ltd v Telco Holdings Ltd and others and (claim to the method of prepaying telephone calls was patentable) In re Macrossan’s Application [2006] EWCA Civ 1371 (claim to the method of preparing company incorporation documents was not patentable)

The UK’s approach now when assessing the patentability of software-related inventions was a four step test for patentability:

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.

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