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Legislative Implementation of Flexibilities - United Kingdom

Title:Section 1 (2) (c) of the Patents Act of 1977(unofficial consolidation of 01/10/2011)
Field of IP:Patents
Type of flexibility:Patentability or exclusion from patentability, of software-related inventions
Summary table:PDF

Provisions of Law

Patentable inventions 1.-

(2) It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of -

(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;

but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.

MANUAL OF PATENT PRACTICE (as of 01/07/2013)

Computer Programs

1.28

In a case where claims to a method performed by running a suitably programmed computer or to a computer programmed to carry out the method are allowable then, in principle, a claim to the program itself should also be allowable. However, the program claim must be drawn to reflect the features of the invention which would ensure the patentability of the method which the program is intended to carry out when it is run. So Kitchin J. held in his judgment in Astron Clinica and other's Applications [2008] EWHC 85(Pat). In arriving at this conclusion he said in paragraph 49 of the judgment:

"Thus, in the case of a computer related invention which produces a substantive technical contribution, the application of step ii) [of the "four step approach" of Aerotel/Macrossan] will identify that contribution and the application of step iii) will lead to the answer that it does not fall wholly within excluded matter. Any computer related invention which passes step iii) but does not involve a substantive technical contribution will fail step iv). The answer to these questions will be the same irrespective of whether the invention is claimed in the form of a programmed computer, a method involving the use of that programmed computer or the program itself.

Aerotel/Macrossan requires the analysis to be carried out as a matter of substance not form, just as did Genentech, Merrill Lynch, Gale and Fujitsu. True it is that the first step requires the scope of the monopoly to be determined and, in the case of a program, that will necessarily be limited. However the contribution of that monopoly must still be assessed by reference to the process it will cause a computer to perform."

1.29

As a general rule, any invention which may be considered as computerising a system or process that might conventionally be performed manually is likely to be regarded as involving only an advance in an excluded field.

1.29.1

In Aerotel/Macrossan, Macrossan's application was found to fall within the computer program exclusion. The second step of the "four step approach" identified the contribution as being the provision of a computer program, probably in the form of an interactive website, which can be used to carry out the method of the invention. There was no contribution from hardware, with standard components being used. As the contribution lay solely in the provision of the computer program, the third step determined that the contribution fell within the computer programs exclusion. The fourth step was applied as a check, and found that the contribution was not technical.

1.29.2

In Rockwell First Point Contact's Appn (BL O/355/06), the contribution identified under step 2 of the "four step approach" lay in the features of a simulator wrapper that processed characteristics of an analysed signal. This contribution was wholly implemented by a computer and thus failed the third step. Next Page Inc's Application (BL O/030/07), Kabushiki Kaisha Toshiba's Application (BL O/031/07) and Fisher-Rosemount Systems' Application (BL O/026/07) each involved an automated process that the applicants argued went above and beyond a mere computer program. However, in each case the Hearing Officers held that the invention lay solely in the excluded category of computer programs, and the applications were refused.

1.29.3

In Symbian Ltd's Application [2008] EWCA Civ 1066, [2009] RPC 1 ("Symbian"), the Court of Appeal held that the contribution made by the invention was not a computer program "as such" because "it has the knock-on effect of the computer working better as a matter of practical reality". This judgment (especially paragraphs 54-56) provides an insight into what can be considered to constitute a "technical contribution" (a test which dates back to the EPO Board of Appeal decision in Vicom/Computer-related invention [1987] 1 OJEPO 14 (T208/84)); in other words a contribution which is more than solely a computer program. An important factor is what the program does as a matter of practical reality.

An invention which either solves a technical problem external to the computer or solves a technical problem within the computer does not fall under the computer program exclusion.

Symbian shows that improving the operation of a computer by solving a problem arising from the way the computer was programmed (in that case a tendency to crash due to conflicting library program calls) can be regarded as solving a technical problem within the computer if it leads to a more reliable computer. Thus, a program that results in a computer running faster or more reliably may be considered to provide a technical contribution even if the invention solely addresses a problem in the programming.

The Court of Appeal considered that such a technical contribution rendered the claim patentable.

1.29.4

It remains the case that whilst an invention involving a computer is undoubtedly "technical", in law the mere presence of conventional computing hardware does not of itself mean an invention makes a technical contribution and so avoids the computer program exclusion. This is in contrast to the practice of the European Patent Office, which the Court of Appeal rejected in Symbian.

1.29.5

Further guidance as to what constitutes a "technical contribution" can be found in the decision of Lewison J in AT&T Knowledge Ventures' Application and CVON Innovations Ltd's Application [2009] FSR 19("AT&T"). In his decision the Judge considered the previous case law on the subject of computer programs and set out five signposts that he considered indicated that a program made a relevant technical contribution that would overcome an excluded matter objection.

Lewison LJ further considered the signposts in HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 and in doing so he revised the fourth signpost so that they now read:-

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 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 made the computer a better computer in the sense of running more efficiently and effectively as a computer;

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

1.29.6

The five signposts have been considered and applied by the courts in a number of judgments.

In Really Virtual Co Ltd v UK Intellectual Property Office [2012] EWHC 1086 (Ch) John Baldwin QC (sitting as a Deputy Judge) noted that the AT&T signposts, although useful, are no more than signposts and that there will be some cases in which they are more helpful than in others.

In Protecting Kids the World Over (PKTWO) LTD's Patent application [2012] RPC 13 the invention was found to solve a technical problem lying outside the computer, namely how to improve the generation of an alarm in response to inappropriate communication, and therefore was not excluded from patentability.

In HTC Europe Co Ltd v Apple Inc [2013] EWCA Civ 451 a system using flags to indicate whether a view on a touchscreen computer could handle single or multi-touch events was found to be patentable. In emphasising that the analysis of a claim must be a matter of substance over form Kitchen LJ considered that the contribution was concerned with the basic operation of a computer and operated irrespective of particular application being used.

In using flags to provide a solution to the technical problem of how to deal with multiple touches on the screen, Kitchen LJ held:

"It causes the device to operate in a new and improved way and it presents an improved interface to application software writers."

Lewison LJ held:

"This invention operates at the level of the operating system of the device. It works with any application that is programmed to run on it irrespective of the data processed by the application. It will work just as well with a game as a currency converter."

1.29.7

The President of the EPO referred four questions on the patentability of computer programs to the Enlarged Board of Appeal in October 2008 (G3/08). The Enlarged Board subsequently found the referral to be inadmissible and as a consequence declined to answer the questions. The comments of the Board are thus concerned only with their findings on the admissibility of the referral and cannot be read any wider. The Board in refusing the referral decided that the decisions of the Technical Boards were "a legitimate development of the law" in this area. They also noted that they saw a convergence of practice across a number of jurisdictions, including the UK, but accepted that this had not yet reached an authoritative conclusion or statement of fact as to what was and was not patentable in the area of computer programs.

1.29.8

In Merrell Dow Pharmaceuticals v N H Norton [1996] RPC 76 and more recently in Actavis UK Ltd v Merck & Co Inc. [2008] RPC 26 the courts set out a presumption that where the case-law of the EPO Boards of Appeal is settled then the UK courts should follow unless (in the words of Jacob LJ in Actavis) "we are convinced that the commodore is steering the convoy towards the rocks [in which case] we can steer our ship away". In the absence of such settled EPO practice or case-law, and bearing in mind the views of the Court of Appeal expressed in both Symbian and Aerotel, the Office is not bound to follow the EPO practice. In any event, the Office remains bound by the precedents set by the UK Courts. Consequently, the assessment of whether an invention is no more than a computer Page 12 of 15 July 2013 program as such is set out in the Court of Appeal's decisions in Aerotel and Symbian.

This approach is illustrated by the decision of the hearing officer in Dell Products LP's Application BL 0/321/10.

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