The UK Intellectual Property Office (IPO) issued new guidance (the Guidance) on how patent examiners will assess the patentability of software implemented inventions. This Guidance follows the recent judgement of the Court of Appeal in the Symbian Application, where the Court overturned the IPO's decision that Symbian should not be granted a patent.

Background

Under the Patents Act 1977 (the Act) a patent may only be granted for an invention which meets the conditions of being (a) new; (b) inventive; (c) capable of industrial application; and (d) not excluded under other sections of the Act. A computer program is excluded from patentability to the extent that the patent or application relates to the program "as such". The "as such" qualification has become a key area for debate in determining whether a software related invention can be patented.

Although the exclusion of computer programs in section 1(2) of the Act is worded almost identically to Article 52 of the European Patent Convention 1973 (EPC), the IPO and the European Patent Office (EPO) have taken divergent approaches to applying the exclusion. The IPO interpret the exclusion more broadly and are less likely to grant a patent to an invention incorporating a computer program.

Symbian Application

The Court of Appeal's decision in the Symbian Application has been viewed as a move towards the more permissive European approach to granting software related patents. Symbian's patent related to a software application which provided a new way of accessing data in a dynamic link library of functions on a computer.

The IPO rejected Symbian's application on the basis that the application related to a computer program "as such" and accordingly was excluded from patentability. However, the Court ruled that Symbian's application did not fall within the excluded subject matter, as the invention made a technical contribution to the state of the art, as the program resulted in the computer running more quickly and more reliably "as a matter of practical reality".

This marked a departure from the more structured four-stage Aerotel/Macrossan test applied by IPO patent examiners when determining the scope of patentability in the UK as follows:

  1. properly construe the claim;
  2. identify the actual contribution;
  3. does the invention fall solely within excluded subject matter; and
  4. check whether the actual or alleged contribution is technical in nature.

The Guidance

Despite the Court of Appeal's approach in Symbian, paragraph 3 of the IPO's Guidance states that patent examiners will continue to apply the structured approach in the Aerotel/Macrossan test when assessing whether a claim falls within the excluded subject matter. This is on the basis that "both tests are legitimate for determining excluded matter" and are intended to achieve the same result – "as a matter of practice this will achieve outcomes consistent with the Court of Appeal judgement in Symbian more reliably".

The guidance acknowledges that a program will not be excluded if it improves the operation of a computer by solving a problem arising from the way the computer was programmed (i.e. a "technical problem within the computer") if it leads to a more reliable computer.

However, the Guidance expressly confirms that the IPO intends to maintain its divergent approach from the EPO, stating "the mere presence of conventional computing hardware does not in itself mean an invention makes a technical contribution and so avoids the computer program exclusion."

Comment

Although the Guidance provides a concise summary of the steps taken by patent examiners when determining a patent application in the UK, it seems to be a grudging acceptance of the Court of Appeal's approach in Symbian.

While the IPO acknowledge in paragraph 5 of the Guidance that software can be patentable when it has a technical effect in terms of improving the way in which a computer program works by increasingly reliability or speed, the Guidance seems to be based on a narrow interpretation of Symbian and does not pave the way for a more permissive approach to the granting of software patents.

This is particularly problematic for inventors, whose software related inventions may be patentable in the eyes of the EPO and the Court of Appeal, but will continue to encounter problems in being granted patents by the IPO due to its strict approach.

The UK IPO guidance can be viewed here: http://www.ipo.gov.uk/pro-types/pro-patent/p-law/p-pn/p-pn-computer.htm

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