This is the second of of two articles looking at certain aspects of the protection afforded to computer programmes by copyright and patents.
There are a number of hurdles facing the inventor who has decided to seek patent protection for an innovation. If a computer processor is required to execute some or all of the innovation, the patent law applied by the European Patent Office (EPO) and national offices in Europe (including the IPO in the UK) set up an extra hurdle – certain classes of invention are excluded from patent protection. It will then be necessary to demonstrate that the invention is new, inventive and capable of industrial applicability.
Our inventor's challenge is to demonstrate that the innovation embodies not only an invention but that this invention is even eligible for patent protection. The law requires that the invention is not merely a program for a computer.
Methods for doing business are also excluded. It helps to realise that patent exclusions are relatively narrow – the law only allows an invention to be excluded if they relate to "a program for a computer … as such" (you can read the relevant law at bit.ly/Mw3mF3).
A few years ago there was considerable debate about an EU Directive intended to clarify and harmonise the national laws in this area. The debate became characterised as a suggestion that the exclusions discussed above might be deleted – effectively making all software patentable. In the end, the Directive was rejected by the European Parliament. Our legacy may not be perfect but at least it is familiar. At the EPO we are advised that computer implemented inventions can be patented if:
• They have technical character and solve a technical problem.
• They are new.
• They involve an inventive technical contribution over prior art.
The UK Patent Office takes a slightly different approach, stemming from patent litigation in the Court of Appeal. The idea here is first to make sure the patent claim is properly construed (so that it can be agreed what the claimed invention actually does). The claim is then compared to prior art (any relevant information that was available to the public on or before the day the patent application was filed) to identify the actual contribution. Note that the "contribution" here could be non-technical, technical or a mixture of the two. We then consider whether that contribution falls "solely within the excluded subject matter": this is to check that the invention is not a computer program (or a business method) as such. As a final step, we check whether the actual or alleged contribution is actually (at least in part) technical in nature. That technical contribution gives the invention a chance of patent protection.
In practice, innovations that are implemented by means of software or unique algorithms are not excluded provided there is a technical contribution. Actual lines of code (the expression of the idea – source code) remain unpatentable – but copyright protection is available for code. Likewise for business methods, implementation by means of an apparatus or technical process may skirt the exclusion provided, as always, there is that "technical contribution". A new accountancy procedure or method of organising a pension scheme would most likely fall foul of the "technical contribution" test because they are entirely non-technical.
This all begs the question – what does 'technical' mean? To paraphrase a sizeable body of case law, there are two half-answers: "you know it when you see it" and "not non-technical". Essentially, we rely on examples and counterexamples to define what is and what is not technical. The application of a scientific discovery may give rise to a demonstrable impact in the physical world and might in turn be taken as an indication of a technical contribution. The scientific discovery itself however is unlikely to be considered to make a technical contribution.
There are other things to look out for. Patent Examiners often point out that a method or process claimed in a patent application amounts to a "mere automation" of a task that is well known. It is generally not enough to have a computing device automate a known task: the technical contribution has to be over and above the typical behaviour of general purpose computers – and they in turn are assumed to be suited to the automation of many repetitive tasks.
So what can our inventor do to improve his chances?
• Provide the patent specification with plenty of material supporting the "technical contribution" beyond the expected behaviour of a general purpose computer
• Point to the impact of the invention on the "physical world" and the technical advantages of implementing the invention
• Always explain how the invention is implemented
Observing the requirements of technical contribution, (and of course novelty and inventiveness) will not guarantee that the inventor will reach the finish line with a granted patent to his name – but at least he won't fall at the first obstacle.
More information is available at D Young & Co's Knowledgebank at www.dyoung.com. Alternatively, please contact Doug Ealey at firstname.lastname@example.org or Anthony Albutt at email@example.com.
D Young & Co LLP
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