Introduction

Dr. Brian Bandey is one of the world's leading experts on the International Application of the Law of Patents to Computer and Internet Programming Technologies; teaching Comparative & International Patent Law around the World (for example - University of Tulsa College of Law and the London School of Economics).

In this Section Dr. Bandey shares some of his experience as he looks at some of the Patent Issues that surround the commercial development of Computer Software Products.

The Name of the Game is "IN THE CLAIM!"

The Truth of the matter is that Software Developer's must use a lawyer that can effectively 'translate' the programming technicalities of their invention into the legal document which describes and protects the Patent. This is known as the "Claim".

The Race for "PRIORITY"

It really doesn't matter who invented what programming process when! The only thing that matters here is when you register your claim. This is called the "Priority Date". If you invent on the Monday and your competitor invents on a Wednesday - if he registers on the Thursday - he wins!

Don't "ANTICIPATE"

There's a thing called the "Doctrine of Anticipation". Essentially, your Patentable Software Process must be kept absolutely secret before the Patent is granted - otherwise it may be rendered absolutely null and void.

Always use specialised Non-Disclosure Agreements targeted to prevent "Anticipation".

So - Are Computer Programs Patentable?

The test for patentability of an invention is, in principle at least, straightforward. The invention must:

• be new throughout the world;
• involve an "inventive step", which in simple terms means that it is not obvious to a person skilled in the field of application of the invention;
• be "capable of industrial application", which means that it can be made or used in industry.

However, for public policy reasons in some jurisdictions (e.g. the UK in the Patents Act 1977) exclude some inventions from patentability, which would otherwise pass this test. One of these exclusions is "a program for a computer".

Although that language seems uncompromisingly clear, there has been some considerable debate over the past year as to where the boundary of a computer program stops and an invention begins. This article provides an update as to the current state of the law and so guidance to software developers as to whether their applications may be patentable in the UK.

In 2009 the UK Court of Appeal clarified the approach to be taken by the courts in Symbian v Comptroller General of Patents. In doing so, it effectively reaffirmed its own approach in the earlier case of Aerotel/Macrossan. The key element of the Aerotel and Symbian approach requires the courts to consider whether the claimed invention reveals a "technical contribution to the state of the art".

Technical Contribution

In order to understand the phrase "technical contribution", it is useful to look at how it has been interpreted. In Symbian itself, the Court of Appeal found that the program actually made a better computer, which was enough to qualify as a technical contribution. Other recent decisions which assist in determining this requirement include:

Nokia Corporation

The invention here related to a method of testing and developing new software on mobile phones and doing so wirelessly. It sought to overcome problems associated with other methods of development: development via the mobile phone handset (which had the problem of being too small and lacking processor power) or using an emulator running on a desktop computer (which was not a true test of the software in use on the relevant hardware). The UK Intellectual Property Office asked the Symbian question, "Is the contribution technical?" and decided that, although the invention was implemented in software, it provided a technical contribution by overcoming technical problems in the prior art. It did not fall within the computer program exclusion on patentability and so the patent was granted.

Kabushiki Kaisha Toshiba

This decision concerned an invention for calculating the optimal cable routing for cables used in installations in industrial plants. The examiner of the patent application took the view that the invention did nothing more than computerise the effort involved in carrying out tedious calculations. The decision was not overturned on appeal and the invention was deemed excluded from patentability as a computer program.

Fisher-Rosemount Systems Inc

The invention related to a method for generating a computer script based on parameters selected by the user. The original examiner identified the contribution of the claimed invention as "a computer program which generates a computer program". The IPO hearing officer had no difficulty in finding that the contribution was not technical and so the invention was excluded from patentability as it was a computer program without technical contribution.

Conclusion

As more case law emerges, the interpretation of the phrase "technical contribution" is likely to become more transparent and with it the patentability of software. For now, software developers may be assisted by the following "signposts" set out by in 2009 in the case of Re AT&T Knowledge Ventures as to whether the technical effect they see within a computer program is sufficient to render the program patentable:

• whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
• whether the claimed technical effect operates at the level of the architecture of the computer;
• whether the claimed technical effect results in the computer being made to operate in a new way;
• whether there is an increase in the speed or reliability of the computer;
• whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.