Software that allows programmers to program a mobile phone system remotely from a PC can be patented because it is more than just a software program, the UK Intellectual Property Office has decided. The decision related to whether a software system was excluded from being patented under s 1(2) of the Patents Act 1977 (the Act).
The Law and Regulatory Framework
Under the Act, the IPO will grant a patent for an invention if it is novel, involves an inventive step, is capable of industrial application and is not excluded from patentability under the Act. The exclusions under s 1(2) include computer programs ‘as such’.
Many people think that this provision means that software developers are left to rely on copyright to protect their work in the UK. Computer programs constitute ‘literary works’ within the scope of Copyright, Patent and Designs Act 1988, so substantial copying of a computer program can amount to copyright infringement. Indeed for some time, the exception was thought of as drawing the distinction between copyright protection and patent protection for software. Until recently the IPO’s approach meant just this for UK patents.[1] The inherent downside is that copyright does not protect ‘ideas’ or concepts.
Patents are an absolute right against unauthorised use of the patent holder’s invention, and can protect the underlying ideas or processes. Patent protection gives the owner of the granted patent a monopoly. A patent can therefore be commercial gold dust and form the bedrock of a company. Under patent law, it would not matter if a competitor copied the program or developed an identical program – or indeed a different program which used the same ideas or process steps – on their own. If the other invention falls within the scope of the patent, the patent holder can claim damages and/or an injunction to enforce his rights.
Historically, the IPO has been quite strict in its approach to ‘pure’ software patent applications. Many patent applications are excluded from patentability because they were considered to be simply computer programs. The legal framework regarding the patentability of computer software is, however, shifting.
In the landmark case of Aerotel Limited v Telco Holdings Limited and Others and In re Macrossan’s Application (2006), the Court of Appeal set out a four-step test to assess whether an invention fell outside the scope of patentability. The test consists of:
(i) interpreting the invention claim properly;
(ii) identifying the actual contribution the invention makes;
(iii) considering whether that contribution falls solely within matters that cannot be patented by law (the so-called ‘excluded categories’, inventions which are simply computer programs being one); and
(iv) checking whether that contribution is technical in nature.
Aerotel/Macrossan concerned a telephone call pre-payment system utilising computer software. The Court of Appeal held that the subject matter was patentable because it went beyond simply being a method of doing business. The Aerotel/Macrossan test is related to whether the patent subject matter is purely a computer program or business method rather than the other statutory tests of novelty, inventive step and industrial application. Obviously, a patent must also satisfy all of these criteria before it can be granted.
Aerotel/Macrossan was applied in Symbian Limited v Comptroller General of Patents [2008] EWCA Civ 1066. The Court of Appeal in that case applied the four-step test to medical ordering software developed by mobile phone software company, Symbian. The Court reversed the IPO’s refusal of a patent because the technology was found to have made a technical contribution. The Court decided that the invention was not just a better computer program but that it also turned the machine it ran into ‘a better and faster computer’. It therefore made a technical contribution.
The invention at the heart of the IPO’s recent decision (patent application number GB0424655.9 for ‘A method of rapid software application development for a wireless device’) provides a recent example of how the IPO deals with software patent applications.
The Invention
The invention is a system for the development of software applications for mobile phones by connecting a desktop PC to a mobile phone via a network connection. The mobile phone stores a number of modular software elements (referred to in the application as a ‘pipe processor’). These elements are effectively building blocks from which a developer can develop software applications for the phone using the PC to direct the development process.
Individual elements may be ‘called’ (ie caused to execute on the phone) by inputting commands at the PC which are then transmitted to the phone. The results of the executed commands are relayed back and displayed on the developer’s PC, to allow the developer to check them. Using the invention, the developer is able to compose scripts on the PC which are transmitted to the phone to combine multiple elements on the phone.
The patent application, was first applied for by Intuwave, then transferred to Symbian and finally to Nokia, which appealed an initial IPO decision to refuse it.
The patent application claimed to overcome three current difficulties with mobile phone software development.
1 Some development methods use the handset to modify the phone’s functionality, but the handset’s keyboard and screen are not really suitable for doing this and the handsets lack the required processing power to make this efficient.
2 Alternatively a desktop PC can be used to run a simulator (or emulator) of the phone and its software applications. This avoids the keyboard/screen and processing power problems but requires an additional testing stage because the emulator cannot replicate exactly the functionality of the phone, particularly its network connection functions.
3 The invention claims to make it easier to modify the functionality of the phone because the invention only requires knowledge of the high level script language rather than the low level application languages.
Andrew Bartlett, deputy director of the IPO, upheld Nokia’s appeal and allowed the patent to be registered, agreeing that the invention made a ‘technical contribution’ when compared with current technology in the field (the so called ‘prior art’).
In his decision, Mr Bartlett applied the Aerotel/Macrossan test and questioned whether the invention contributes to human knowledge. Mr Bartlett decided that it did contribute because it was a software application developed as a networking application which allowed modular elements on the phone to be combined. This was quite apart from the accepted fact that none of the individual components of the hardware were new. The contribution came from what the hardware was actually programmed to do.
In assessing whether the invention made a technical contribution and whether the subject matter of the patent application fell solely within excluded matter, Mr Bartlett concluded that the invention made a technical contribution because it overcame technical problems which were inherent in the prior art and that it was more than just a computer program. He said ‘thus whilst the invention may be implemented in software it provides a technical contribution such that it is more than a program for a computer as such’.
Conclusion
This latest whittling down of the general rule against patenting of software is important for software developers to bear in mind. If they can demonstrate that their software is more than just a clever bit of programming but that it also produces a technical effect which makes a technical contribution to prior art, they can increase its worth beyond that of a simple computer program as such.
One other point must be noted. Section 1 of the Act is essentially the same as Article 52 of the European Patent Convention (EPC). Under the Patents Act, it is to be interpreted in the same way as Article 52. Accordingly European patent case law and the decisions of the EPO are important – persuasive but not binding – for the English courts and the IPO. The English courts have been attempting to reconcile the emerging decisions from the EPO with the binding precedents in the UK, and the IPO has now taken this into account in this decision. However, whether this approach remains may well depend on the outcome of the EPO’s Enlarged Board of Appeal decision referred to in the links below.
Useful links:
· The IPO’s decision on the patentability of the invention applied for by Nokia: http://www.ipo.gov.uk/o10709.pdf
· The IPO’s practice notice on the patentability of computer programs: http://www.ipo.gov.uk/pro-types/pro-patent/p-law/p-pn/p-pn-computer.htm
· The IPO’s submissions (on behalf of the UK) to the EPO’s Enlarged Board of Appeal relating to the patentability of computer programmes under the European Patent Convention can be found on the EPO’s web site: http://www.epo.org/patents/appeals/eba-decisions/referrals/pending/briefs.html. Page 3 and 4 of the submission illustrates the UK’s proposed approach to the issue, and probably still reflects the narrowest set of principles for permitting computer software to be patentable. This perhaps reflects an increasingly widely promoted view that there is no economic evidence to show that patent protection for computer software has any benefit in innovation.
· The Court of Appeal decision in Aerotel Limited v Telco Holdings Limited and Ors (2006) in the matter of patent application GB 0314464.9 (Aerotel/Macrossan): http://www.bailii.org/ew/cases/EWCA/Civ/2006/1371.html
· The Court of Appeal decision in Symbian Limited v Comptroller General of Patents [2008] EWCA Civ 1066 http://www.bailii.org/ew/cases/EWCA/Civ/2008/1066.html
· Astron Clinica Ltd & Ors v The Comptroller General of Patents, Designs and Trade Marks (2008) was a test case which successfully challenged the practices of the IPO which included refusing claims in patents for computer-implemented inventions. Mr Justice Kitchin’s decision is here: http://www.bailii.org/ew/cases/EWHC/Patents/2008/85.html
Simon Elsegood is a member of the Technology and Commerce Team at Mills & Reeve LLP. After obtaining his PhD in Organic Chemistry, Simon worked at British Sugar Technical Centre. Using his previous scientific research experience, Simon has advised clients on all aspects of patents, particularly from the point of view of investors in patented technology.
Tasmina Goraya gained her PhD in Pharmacology in 2003 and is another scientist working in the Technology and Commerce Team at Mills & Reeve. She specialising in intellectual property protection and has previous experience of working in both industry and academia.
Alasdair Poore is a partner in the Technology and Commerce Team at Mills & Reeve. He is also a Chartered Patent Attorney. He regularly advises on issues about protection and enforcement of computer-related inventions.
[1] The European Patent Office has been treating software patents more favourably (as noted below), but there are advantages in being able to apply for a UK patent. It is cheaper. But more relevant in practice is that it is possible to get a decision or granted patent in the IPO substantially quicker (in the case of the expedited procedure this can be close to 12 months). This can add real value in terms of enforcement and raising funds.
