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"Tricky Territory" : Computer implemented invention patenting

The information technology industry invests large sums each year in the innovation and development of new tools for mobile handsets and other computer systems.

October 2013

Although copyright may protect the underlying software in these systems, this form of protection is limited. For example, copyright law cannot prevent the independent development of rival products, it can be hard to prove and it is generally inadequate to stop reverse engineering. Furthermore, whilst the law of confidentiality can provide a remedy for those who believe that features of their systems have been covertly taken, such claims are again by no means straightforward – as with copyright, it is necessary to prove derivation from the claimant's work.

But do patents offer an alternative? Novel and inventive devices and systems are more usually the subjects of patent protection. Patents are registered rights, protecting everything expressly recorded in their claims. Therefore, everybody knows, at least in theory, what is protected. As well as protecting against the direct copying of the invention, patents cannot be avoided by reverse-engineering and they protect against the production of the same invention completely independently.

Why not, then, simply file a patent for every new computer implemented invention ("CII")?

The problem with patents as regards CIIs is that the European Patent Convention ("EPC") contains a provision that excludes programs for computers from protection1. This is implemented in the national laws of the contracting states to the EPC2. The effect of this exclusion is that a pure computer program is not patentable – pure programs therefore remain the preserve of copyright and confidentiality. However, the EPC does say that the exclusion only applies to computer programs "as such"3. This means that inventions which do not consist purely of computer software, but instead implement the software in a device or a system, are potentially patentable.

How do you know if your CII is patentable or not?

Whether a CII falls on the right side or the wrong side of the exclusion for computer programs "as such", has been a difficult and controversial area of law in the UK. In 2006 the Court of Appeal, in the joined cases of Aerotel and Macrossan4, set a four-step approach to attempting to answer this question, as follows:

  • Properly construe the patent claim;
  • Identify the actual contribution in the claim (in other words, what does it contribute to human knowledge);
  • Ask whether it falls solely within the excluded subject matter (that is, programs for computers);
  • Check whether the actual or alleged contribution is actually technical in nature.

In the context of CIIs this four-step approach essentially asks what the technical contribution of the invention is beyond the computer program. However, it does not provide any more detailed guidance as to how to recognise such a technical contribution. For this reason, Lewison J in AT&T Knowledge Ventures LP's Patent Application5, set out a number of "signposts". Affirmative answers to the signposts will tend to indicate that there is a technical contribution in the CII that is capable of patent protection:

  • Whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
  • 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;
  • Whether the claimed technical effect results in the computer being made to operate in a new way;
  • Whether a program makes a computer a better computer in the sense of running more efficiently and effectively as a computer;
  • Whether the perceived problem is overcome by the claimed invention as opposed to being merely circumvented.

Mallet on law bookAlthough they should not be regarded as providing an answer in every case, these signposts have been recently endorsed by the Court of Appeal, in HTC Europe Co Ltd v Apple Inc6 , with a modified signpost 4 (included above).

HTC Europe itself illustrates an example of when an invention does provide a technical contribution or effect beyond the computer program and falls on the right side of the exclusion:

HTC Europe v Apple Inc

The invention examined for patentability under the computer program exclusion in HTC Europe was for computer devices with touch sensitive screens capable of responding to more than one touch at a time. At first instance, Mr Justice Floyd (as he then was) had held that the invention was excluded. However, the Court of Appeal overturned his decision. It held that the solution provided by the patent to enable multiple simultaneous touches on a multi-touch device is essentially technical in effect. Additionally, the Court of Appeal considered the manner in which the system software enables this function – dividing up the screen of the device into views and configuring them as single-touch or multi-touch – concerns the basic internal operation of the device and causes it to operate in a new and improved way. The improved interface for application software that results would also make it easier for software programmers to use, which is also a technical effect.

Contrast this decision with the decision in Lantana v Comptroller General of Patents7 below:

Lantana

In Lantana Mr Justice Birss uses the five signposts to technical effect from AT&T Knowledge to hold that the invention at issue is excluded as a computer program as such.
The invention claimed was to "methods, systems, and computer program products for retrieving a file or machine readable data". It was common ground between the parties that the invention related essentially to systems such as a computer accessing the desktop of another computer and allowing the user of the first computer to move the cursor to access files on the second computer. It purported to remedy the instability of connections between terminals over periods of time that hamper the existing use of such systems.

Because the invention essentially consisted of nothing more than software on two computers, Birss J comments that it is in the "tricky territory" because everything is going on inside the computer. Indeed, the judge finds that there is no technical effect lying outside the software exclusion according to the five signposts. In particular, there is no effect on a process going on outside the computer and there is no change to the way the computer operates. The judge is also unimpressed in his judgment by the suggestion that a solution has been found to the technical problem of the need for a continuous connection: the idea of an email message containing machine readable instructions being sent from one computer to the other.  Birss J holds that the technical problem at issue - instability of connection - is not solved by this, but merely circumvented. Referring to the fifth signpost, he says a circumvention is not a solution and therefore can derive no technical character from the problem solved.

"Tricky territory"

Mobile phoneThese two decision, one falling on each side of the software exclusion, illustrate quite how nuanced the patentability analysis of a CII can be: the patentable invention in HTC Europe provides a technical effect by improving the utility of a device by the consumer and programmers; on the other hand, the access of one computer's desktop by that of another, in a stable way, is not. The subtle nature of the factual assessment in these cases also demonstrates why, beyond providing the signposts, the court is reluctant to draw up generally applicable rules about what is and what is not patentable. As ever with such inventions, the courts will decide on the application of the software exclusion on a case-by-case basis.

If you have any questions on this article please contact us.

1Article 52(2)(c).

2Including section 1(2) of the UK Patents Act 1977.

3Article 52(3).

4Aerotel Ltd v Telco Holdings Ltd and Macrossan's Patent Application [2006] EWCA Civ 1371.

5[2009] EWHC 343 (Pat).

6[2013] EWCA Civ 451.

7[2013] EWHC (Pat).

Copyright
Paul England


Paul England looks at when computer implemented inventions will and will not qualify for patent protection, in light of three recent cases.

"In the context of CIIs this four-step approach essentially asks what the technical contribution of the invention is beyond the computer program."