Patent law has had to develop significantly since its inception in order to keep pace with changing technologies. Despite this, the recent explosion in computer-implemented technologies has left the patent system struggling to keep up with the innovation that it seeks to encourage.
The UK Patents Act states that a patent shall not be granted in respect of a programme for a computer but goes on to state that this exclusion shall apply “only to the extent that a patent or application for a patent relates to that thing as such” (emphasis added). The precise meaning of “as such”, which appears almost as an afterthought, has been the subject of much debate in the industry. What sort of computer-implemented inventions are not programmes for computers “as such”?
The approach to computer-implemented inventions also varies from country to country, traditionally being more lenient in the US than in the UK and the rest of Europe. This has left inventors and patentees uncertain as to the chances of obtaining and maintaining patent protection.
For those interested in understanding more about how the law is interpreted at present, recent case law on the subject in the UK, EU and US is discussed briefly below. If you are short of time however, you may prefer to skip ahead to the “How do I know if my invention is patentable?” section at the end of this article for a practical approach to how the law in this area may be applied to your invention.
UK and Europe
In recent years, approaches taken in the UK and in Europe have diverged. Although the UK courts are encouraged to take account of EPO decisions, in the field of computer-implemented inventions they appear to have forged their own path. The UK courts use a test based on the seminal case, Aerotel. This test involves first determining the actual inventive contribution made over existing technologies and then deciding whether this contribution can be described as a programme for a computer as such (whether the contribution relates to technical subject-matter or not). If it is decided that the only contribution falls within excluded subject-matter then the application is rejected. The 2013 Lantana decision emphasises that decisions relating to computer-implemented technologies will depend on the particular facts of each case.
The European Patent Office has moved on from a similar contribution approach set out in Vicom, which again emphasised that an invention should not be excluded merely by its implementation as a computer program, to a simpler consideration of technical means. The recitation of even a generic computer system can, in Europe, be enough to bring a claim out of the realm of excluded subject-matter. However, even once this first hurdle is overcome, the EPO will then disregard any non-technical features in the claim (e.g. presentations of information, methods of doing business) and consider the novelty and obviousness of the remaining subject-matter. If all that is left is a generic computer system, this will be objected to as lacking novelty or an inventive step.
In practice, whilst the methodology for assessment of the patentability of computer-implemented inventions differs between the EPO and the UKIPO, they tend to arrive at similar conclusions.
Notable US Cases
Alice v CLS, a US Supreme Court case published in 2014 is the subject of much discussion and could certainly be said to be one of, if not the, most important case in the US relating to computer-implemented inventions over the past few years. The judgment sets out a two-part test based on the earlier Mayo decision. If an abstract idea is present in the claim (for example economic activities or mathematical formulae) then it must be determined whether other features or combinations of features in the claim result in the subject-matter amounting to significantly more than just that abstract idea. The mere implementation of an abstract idea using a computer would not be enough to render the claimed subject-matter patentable. As mentioned, the situation in the US has traditionally meant that it is much easier to obtain protection for a software or business method related invention.
The position of the US courts regarding computer-implemented inventions has been progressed by the Enfish v Microsoft decision published in May 2016. In this decision, it was concluded that inventions should not automatically be considered to be abstract ideas simply by virtue of the fact that they relate to computer-implemented technology. The invention claimed, whilst not including new physical components, did improve the functioning of the computer and could thus be considered to solve a technical problem. The US approach is therefore now more in harmony with that of the EPO and the UKIPO which focus on whether subject-matter is or is not technical, and would appear to be more patentee-friendly.
How do I know if my invention is patentable?
Although the law in the different jurisdictions varies, there is, in general, the underlying requirement that subject-matter relating to computer-implemented inventions must be “technical” or “non-abstract” in some way in order to be patentable. It is the decision as to what constitutes technical subject-matter that is problematic. There is no real definition of the meaning of “technical” provided in case law, which results in the need to rely on previous decisions relating to specific examples.
In the UK, AT&T (modified by HTC v Apple) provide signposts which are now widely used by the UKIPO and UK courts when deciding if a software-based invention relates to patentable subject-matter. These signposts are considered as indicators of technical subject-matter and generally relate to some sort of a real world effect taking place outside the computer.
An inventor having devised a software-related invention and wondering whether it might be possible to obtain a patent could as a first step ask themselves the following questions, which are based on the signposts:
- Does the claimed technical effect have a technical effect on a process which is carried on outside the computer?
- Does the claimed technical effect operate at the level of the architecture of the computer (e.g. irrespective of what data is being used)?
- Does the claimed technical effect result in the computer being made to operate in a new way?
- Does the claimed technical effect make the computer more efficient and effective as a computer??
- Is the technical problem defined overcome by the claimed invention as opposed to merely being circumvented?
If the answer to any of these questions is yes, then the chances of obtaining a software patent are likely to be higher.
Although, ultimately, the patentability of an invention will depend on its content, it does pay to draft an application to a software-related invention carefully, ensuring that plenty of detail of the real world effects is provided.
The situation regarding software patents has settled over the past few years but it is still one of the fastest-developing, and most interesting, areas of patent law. Watch this space for more updates.
 Aerotel Ltd v. Telco Holdings Ltd,  EWCA Civ 1371
 Lantana Limited v Comptroller General,  EWCA Civ 1463
 T208/84 (Computer-related invention)
 Alice Bank v. CLS Bank International, 134 S. Ct. 2347 (2014)
 Mayo v. Prometheus, 132 S. Ct. 1289 (2012)
 Enfish, LLC v. Microsoft Corp., Court of Appeals for the Federal Circuit, Appeal No. 15-1244 (2016)
 AT&T Knowledge Ventures LP,  EWHC 343
 HTC Europe Co Ltd v. Apple Inc,  EWCA Civ 451