Software patents after the Court of Appeal ruling

The appeal court recently confirmed a set of standards for determining the patentability of software, but the ruling will not be the end of the matter.

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The recent decision by the Court of Appeal in Symbian Ltd vs. Comptroller General of Patents (the UK Intellectual Property Office, or UKIPO, to you and me) confirms that software patents are alive and well in the UK.

The decision has brought the approach in the UK more in line with that of the European Patent Office (EPO) and, it is hoped, provided a greater degree of predictability in the patenting of software inventions. Symbian invented software which led to a “better” computer. The Court of Appeal has said that that was patentable.

While software has always been patentable to some degree, the recent practice of the UKIPO has made it difficult to get patent protection for certain types of software invention. This has become particularly noticeable in view of the more lenient approach of the EPO which also grants patents covering the UK.

The commonly mis-held belief that software is not patentable can be traced to the wording used in the UK Patents Act, which explicitly excludes certain inventions from patentability, even if the usual conditions of novelty and inventiveness are satisfied.

The exclusions include mathematical methods and computer programs. However, these are only excluded if the patent relates to that material as such. Similar wording can be found in the European Patent Convention, and UK law is supposed to have essentially the same scope.

Unfortunately, the two patent offices have taken somewhat different approaches to interpreting this limitation when considering whether to grant a patent.

When deciding whether or not an invention is patentable, the EPO has developed tests which look at whether or not the invention has ‘technical character’ or ‘technical effect’.

By any objective standard, just about anything to do with the workings of a computer can reasonably be considered to be technical. Therefore, the logic has been developed to consider the contribution being made by the invention to be patented (in other words, the clever bit).

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