Is it possible to patent computer software?

The UK IPO and the EPO

It is possible to obtain patent protection in the UK by way of a national patent application filed at the UK Intellectual Property Office (UK IPO) or a European patent application filed at the European Patent Office (EPO). UK and European patent law states that it is not possible to obtain patents for computer programs as such. This is (perhaps understandably) often misinterpreted to mean that computer software is simply not patentable, but decisions of the UK courts and the Boards of Appeal of the EPO over the past 10-15 years have established the now relatively stable position that computer software is patentable if it provides a new “technical solution” to a “technical problem”. The word “technical” is not explicitly defined in either UK or European patent statutes, but the case law now provides reasonably detailed guidance as to how it should be interpreted. For example, computer software which implements methods for controlling an industrial process or methods of processing physical data (e.g. data representing temperature) can be considered “technical”. Computer software which merely processes data internal to a computer (without having an effect in the real world) can be more troublesome, but if that processing results in a faster or more reliable computer (for example), then it may be considered technical.

The UK IPO and EPO approaches, which differ in their details, are summarised below.

Brief summary of UK approach

The test for patentability adopted by the UK IPO is to determine whether the claimed invention involves a “technical contribution”. An important Court of Appeal decision involving Symbian and the UK IPO (also decided back in 2008) stated that it is important to consider what the computer program does “as a matter of practical reality” when considering whether it is “technical”. In this particular case, the invention was a computer program which fixed a problem with the programming of the computer, resulting in a faster and more reliable computer. Accordingly, although it was argued that the computer program did not change the computer in any way and so could not be considered to be making a “technical” contribution, it was decided that this was to ignore the effect of the computer program which “as a matter of practical reality” made the computer work better (faster and more reliably). It was therefore decided that the computer program was patentable in the UK. In a subsequent High Court decision involving AT&T Knowledge Ventures and the UK IPO, five “signposts” were set out which were considered by the judge to be helpful when considering whether a computer program provides a sufficient technical contribution. These are:

(i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;

(ii) whether the claimed technical effect operates at the level of the architecture (e.g. processor, cache memory or other internal components) of the computer, that is to say whether the effect is produced irrespective of the data being processed or the applications being run;

(iii) whether the claimed technical effect results in the computer being made to operate in a new way;

(iv) whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer (as modified by the Court of Appeal in HTC Europe Co Ltd v Apple Inc [2013]); and

(v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

Several subsequent judgements have pointed out that these signposts are to be considered to be merely guidelines, and not a definitive test. Nevertheless, they can be helpful in predicting whether the UK IPO will consider your computer software to be technical, and thus eligible for patentability.

It is worth noting that (perhaps counterintuitively) the UK IPO’s determination of the “contribution” made by an invention is often done without considering where the invention differs from the prior art. In addition, although an invention involving a computer may be “technical”, it does not necessarily provide a “technical contribution” as required by the UK IPO test. Accordingly, it is not possible to avoid the computer program exclusion under the UK IPO test simply by specifying technical means in a claim.

Brief summary of EPO approach

The EPO essentially applies a two stage test for patentability.

The first test is to determine whether the invention has “technical character”. This stage is relatively straightforward to overcome because the EPO will consider an invention to have “technical character” if it involves “technical means” (e.g. a computer) even if that technical means is known from the prior art. Features of a computer program itself may be considered to provide technical character to a claimed invention if it is capable of bringing about a “further technical effect going beyond the normal physical interactions” between software and the computer on which it is run.

The second (more substantive) stage of the EPO test occurs when the EPO is assessing the “inventiveness” of an invention. For an invention to be considered inventive, the EPO requires it to provide a non-obvious technical solution to a technical problem. In its assessment of whether a claimed invention fulfils these criteria, the EPO will determine the differences between the invention and the closest prior art and then assess whether those differences provide a technical solution to a technical problem. If there are differences which provide a technical solution to a technical problem, the invention may well be patentable. If no such differences exist, the EPO will object to the application on the basis that the invention lacks inventive step (rather than on the basis that the invention relates to excluded subject matter).

A difference between the UK IPO and EPO approaches is that the detailed analysis as to whether a computer software invention is technical is performed by the UK IPO before the prior art is considered, whereas (although there is an initial low hurdle “technical character” test) the EPO intertwines the substantive analysis of whether an invention is technical with its consideration of the prior art. As the UK IPO will subsequently consider whether an invention is novel and inventive over the prior art, the UK IPO and EPO should in theory reach the same result in most cases. However, in our practical experience, EPO examiners tend to look more favourably on the patentability of computer software inventions than the UK IPO. For inventions of borderline patentability, it can therefore be advisable to seek patent protection in the UK by way of a European patent application filed at the EPO rather than a national application filed at the UK IPO.

The US PTO

Up until relatively recently, US patent protection could be afforded to “anything under the sun that is made by man”. This approach meant that there was no explicit exclusion for computer software inventions from the US patent system (unlike the exclusion of computer programs as such under UK and European patent law) and the US Patent and Trade Mark Office (US PTO) was far more liberal in granting patents for computer software than the UK IPO and EPO. However, following several high profile US court decisions, most notoriously Alice Corp. v CLS Bank International, US practice has shifted significantly towards the European approach and the sphere of computer software inventions for which a patent is likely to be granted in the US has undoubtedly shrunk.

Guidance released by the US PTO following Alice sets out a three part test (of which the latter two are the most important, the first test almost always being satisfied) to determine whether an invention is patent eligible (which is treated separately from novelty and inventive step):

1. Is the claimed invention a machine, process or manufacture?

2a. Is the claimed invention directed to an abstract idea?

2b. If so, is any element, or combination of elements, in the claim sufficient to ensure that the claim as a whole amounts to significantly more than an abstract idea?

Thus, if the invention is directed to an “abstract idea” and does not amount to “significantly more” than an abstract idea, it is not patent eligible. While this may seem relatively straightforward, there is still considerable uncertainty as to exactly how the criteria for patent eligibility will be interpreted. Indeed, the current consensus among US patent practitioners appears to be that the patent eligibility criteria set out in the guidance is not being applied consistently across the different technical art units at the US PTO; rather, examiners of different technical art units are applying them more strictly than others. In extreme cases, some technical art units are granting patents at rates as low as 3% to 10% (e.g. examining units which handle business method type applications). The approach of some art units is so severe that patent practitioners are now considering whether patent applications for potentially borderline patent eligible computer software inventions can be drafted in such that they will be allocated to art units which will apply the patent eligibility criteria less strictly.

Despite receiving patent eligibility objections, some applicants are taking any actions necessary to keep their US patent applications pending (e.g. filing repeated Requests for Continued Examination or Appeals) in the hope that US PTO practice will soften over time, and that their applications will ultimately be allowed.

Two recent cases decided in the US courts which relate to computer software related inventions and which resulted in findings of patent eligibility are DDR Holdings v Hotels.com and Enfish v Microsoft.

DDR Holdings v Hotels.com concerned the patent eligibility of DDR’s invention which related to a method, where, upon clicking an advertisement for a third-party’s product, the customer is taken to a hybrid web page generated by the host website that is a composite of the third-party’s product information and the “look and feel” of the host website. This invention was considered to be patent eligible on the basis that, even if it was directed towards an “abstract idea” in accordance with stage 2a of the test, the claims did not “merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet” but were functionally different by overriding “the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink”, so ordinary use of the computer or internet were not involved. The claims were considered to have addressed a technological problem “particular to the Internet” by implementing a solution specific to that technological environment and different from the manner suggested by routine or conventional use within the field, and that the claimed solution was found to be “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks”. Thus, the court held that the invention related to more than an abstract idea, and so was patent eligible.

In another example, Enfish v Microsoft concerned Enfish’s invention relating to a logical model for a computer database (which describes how the information in the database is related). The Enfish logical model is described as “self-referential database table”. In this case, the Court found that the self-referential table is a “specific type of data structure designed to improve the way a computer stores and retrieves data in memory”. Accordingly, the invention was considered to be a “specific implementation of a solution to a problem in the software arts” and not directed to an abstract idea. The invention was thus considered to be patent eligible.

Accordingly, in these cases at least, the US courts appear to be applying a test similar to the EPO standard of having to provide “a technical solution to a technical problem”.

The uncertainty as to precisely how the criteria for patent eligibility should be interpreted, coupled with the extreme approach being adopted by some technical art units of the US PTO, is making it very challenging to obtain patents for some types of computer software implemented inventions in the US. However, by no means all computer software implemented inventions receive such objections and it is still possible to obtain patent protection for computer software in the US, particularly if it is clearly solving a technical problem in a technical way.

So what does this mean if you’re considering a computer software patent?

It is possible to obtain patent protection at the UK IPO, the EPO and the US PTO for computer software inventions. The UK IPO and EPO have developed a stable approach to the determination of patent eligibility which yields reasonably predictable results. In addition, although US PTO practice on the assessment of patent eligibility is now much stricter than it once was, computer software clearly solving a technical problem in a technical way should still be patentable.

Some practical tips are as follows:

1. Discuss with your patent attorney whether your computer software invention provides a “technical solution” to a “technical problem” and, if so, how the technical aspects of your invention can be made more apparent in the specification.
2. If you are seeking patent protection for computer software in the UK, consider filing a European patent application rather than a UK national patent application.
3. If you are seeking patent protection for computer software in the US, think about whether the emphasis of your application could be shifted so that it will be examined by a technical art unit of the US PTO which looks more favourably on patent eligibility of computer software.
4. Consider whether the claims for your computer software invention could be modelled on claims already considered to be patent eligible by the US courts, or on examples of patent eligible claims provided in the guidance note issued by the US PTO on the subject to make it clear that your invention is not directed to an “abstract idea” (or is at least “significantly more” than an “abstract idea”).

For more information, please contact us.

Disclaimer

This document is provided as a source of general information only and should not be considered legal advice. No guarantee is provided that the information provided herein is complete or current. Readers should not act or rely on any information provided herein without first obtaining specialist professional advice.