Patent protection for software in the UK - a practical approach
02 March 2016
It is well-documented that although the European Patent Convention (EPC) and the UK Patents Act 1977 exclude computer programs from patent protection, this exclusion only applies to the computer programs as such.
In practice this means that both the European Patent Office (EPO) and the UKIPO will assess if the novel aspects of your software invention make a technical contribution to what is already known. Although neither the EPC nor the UK Patents Act 1977 explain what is meant by 'technical', in practice there is little debate about whether a claimed aspect (claim integer) is in fact technical in nature, as long as it is not related to a method of doing business (which is statutorily excluded from patentability).
The EPO and UKIPO have adopted different approaches to establishing whether the claimed invention achieves such a technical contribution.
The EPO assesses novelty and inventive step for software inventions like any other invention. What is particularly relevant for software inventions is that non-technical features of the claims will be ignored in this assessment. Importantly, the EPO interprets any exclusion to patentability (including computer programs) narrowly, such that protection for a broad spectrum of software inventions is available.
In contrast, the UKIPO identifies the novel features of the claimed subject matter and determines whether these novel features entirely fall within excluded subject matter and establish a technical contribution to the art (this is sometimes referred to as the 'contribution approach'). In contrast to the EPO, the UKIPO interprets the exclusion to patentability for computer programs broadly.
In two English High Court decisions of 2009 known as AT&T Knowledge Ventures' Application and CVON Innovations Ltd's Application, the High Court set out five signposts which may be used to determine whether a computer program is not excluded from patentability. The five signposts are:
1. whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
2. whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
3. whether the claimed technical effect results in the computer being made to operate in a new way;
4. whether there is an increase in the speed or reliability of the computer; and
5. whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
However, the UKIPO tends to use these signposts as exclusive tests for assessing the patentability of a software invention.
Therefore, when contemplating seeking protection in the UK for your software invention, it will be necessary to carefully assess whether the UKIPO is likely to accept that your invention achieves one of these five signposts. If it does not, the UKIPO almost certainly will refuse to grant you patent protection your invention, in which case obtaining protection for your software invention in the UK via the more expensive European route is more likely to succeed.
Please do not hesitate to contact us if you seek guidance in this respect.