The patenting of software is a complex issue that has been the subject of much judicial uncertainty in recent years. UK patent law is affected by the latest version of the European Patent Convention (EPC) which came into force at the end of last year. The 2006 Court of Appeal decisions in Aerotel and Macrossan interpreted the EPC to mean that software programs by themselves could not be patented.
Until the recent decision in the case of Astron Clinica Limited and other v The Comptroller General of Patents, Designs and Trade Marks in the High Court, this has reinforced a different interpretation (of what qualifies for patent protection under the EPC) between the European Patent Office (EPO) and the United Kingdom Intellectual Property Office (UKIPO).
Under the UKIPO’s interpretation of the EPC, patent protectability for software was flatly rejected. The EPO on the other hand considered claims for software patent protection permissible, provided that the software program had the potential to bring about, when running on a computer, a further technical effect or character which goes beyond the normal physical interactions between a software program and the computer. The Astron Clinica ruling has held that the UKIPO’s policy of flatly rejecting claims for patent protection for software was wrong. In line with the EPO, the potential technical effect of an invention implemented by a computer program can be taken into account, provided that the four-step test set out in Aerotel/Macrossan for assessing patentability is followed. The technical contribution implemented by software must be substantive. The UKIPO will not appeal the decision but has implemented a further practice note.
The result of the decision is that the UKIPO’s approach in interpreting the EPC in relation to the patentability of software is now in line with the EPO’s approach. More importantly, there is now a possibility that a properly drafted patent claim submitted to the UKIPO for methods performed by running a suitably programmed computer or to a computer programmed to carry out the method may, in principle, include claims for the program itself. In light of this, The technical effect or method introduced by the patent claim will be fundamental in establishing whether a claim will be granted.
Software programs can be said to have a technical effect because of the physical effect on computer hardware caused by the execution of the software program. However, this feature is common to all software programs and could not as a result be used to distinguish software programs with a technical character from software programs as such. The technical character must be found elsewhere in the effects caused by the execution of the software program by the hardware. Where these effects have a technical character or they solve a technical problem, the software program which brings them about may be capable of being patented.
The decision in Astron Clinica presents an invaluable opportunity (for appropriate software) to apply for patent protection for appropriate software programs having a technical effect and ensures harmony in patent assessment practice in this area between the UK and other EPC countries. The benefits of patent protection will serve to confer a monopoly on the proprietor to use and exploit the software program for a period of 20 years. Patent ownership also confers a legal right to prevent the unauthorised use of the software program and claim damages where such use is not permitted by the proprietor.
A potential disadvantage for software developers is that a third party may independently develop a similar or identical software program and gain patent protection. This could potentially prevent a software developer in the same field from using its own software even if it is unaware of any relevant patent. This risk is further compounded by the fact that the UKIPO will not issue any formal notification on receipt of a patent claim. Careful advice will need to be given on the precise scope of any patent which includes claims in respect of any aspects of the program itself.
The UKIPO will conduct searches of the “prior art” (which consists of publications and prior uses of an invention which has already been made available to the public)for the applicant of the claim and establish what earlier manifestations in the same general area of technology have been published before. A typical application may take between 2 and 4 years and it is not until the actual patent has been granted that a third party can instigate proceedings to challenge or revoke the patent. The grant of a patent does not guarantee that the patent is valid; as such validity is ultimately only determinable by the courts.
For a no-obligation chat about how we can help you with the patenting software, please contact
Rhys Jarman.
