IP Cases & Commentary – Details
1 October 2012
Computer-Implemented Innovation - The Test for Patentable Subject Matter in Europe and the UK
Susan Keston & Alan Boyd
The influence of the Internet in directing the knowledge and opinion of software engineers with regard to the patenting of computer programs is significant. Much of the material on the Internet on this topic relates particularly to the US patent system, which differs from that in Europe with regard to the assessment of subject-matter excluded from patentability. For example, a computer program associated with an innovative business method is much more likely to be viewed as patentable subject-matter in the US than in Europe. The emergence of open source software (OSS) as a successful business model has politicised the debate on the patentability of computer programs, with an influential body of computer programmers arguing that patenting of computer programs could inhibit innovation and that in any case, copyright alone offers sufficient protection for computer programs.
A different point of view is that the patenting of computer programs provides a springboard for innovation, encourages investment in research and development and is essential to provide a business with adequate recourse in law against the theft of hard-won innovation.
The contention that copyright alone generally offers sufficient legal protection for an innovative computer program, and provides an adequate remedy for a competitor copying the idea without permission, is a weak one. Copyright law is jurisdiction dependent and in the UK, for example, copyright protection is limited the expression of an idea. Thus copyright alone is unlikely to offer sufficient breadth of legal protection for an innovative computer program that provides a technical solution to a problem. However, copyright may protect a particular ‘expression’ of computer program code in which the invention is implemented.
By way of contrast, a set of patent claims delineates a justifiable monopoly for a computer-implemented innovation relative to the known state of the art at the priority date. This has the advantage of allowing the patent applicant to capitalise on that innovation, for example, via licensing and, upon grant of the patent, to prevent competitors from exploiting the invention without the consent of the patent proprietor.
In Europe the criteria for assessment of the patentability of computer programs have been the focus of heated debate since the landmark 1998 European Patent Office (EPO) decision T 1172/97 IBM, which extended patentability to computer program products. However, there can be divergence between the assessment of computer programs for patentability in Europe and the UK. In the intervening years since the IBM decision, the UK Intellectual Property Office (UK IPO) assessment of computer programs for patentability has vacillated with respect to the EPO’s position, depending upon the prevailing caselaw from the UK Courts. Decisions of the UK courts are binding on the UK IPO whereas decisions of the EPO are only persuasive.
This situation can leave applicants for computer program patents in a state of confusion regarding what innovations are currently excluded under UK law and practice and whether an application has more likelihood of being treated as non-excluded by the UK IPO or by the EPO. The EPO is currently viewed as being an easier route than the UK via which to prosecute ‘borderline’ computer program applications. Accordingly, a software engineer considering seeking patent protection for an invention may have to overcome the dual barriers of: a) an inherent prejudice in parts of the programming community against obtaining patent protection for computer-implemented innovation; and b) the confusion regarding whether or not a computer-implemented invention will be regarded as excluded subject matter in the UK, Europe and the US.
So what is the situation in the UK? In fact, patent protection continues to be available for computer programs in the UK, provided that they fall outside the excluded subject matter provisions of the UK Patents Act (UKPA). The claimed invention must also satisfy the usual criteria of being novel, non-obvious and capable of industrial application.
It can often be difficult to determine whether an invention falls within the excluded subject matter provisions of the UK Patents Act. The authors of this article recently had the opportunity to speak to UK IPO computing group examiners about computer programs and excluded subject matter, and gained a valuable inside view as to how computer-related inventions are currently being assessed at the UK IPO.
Current test for patentable subject matter
The current interpretation of S1(2) of the UKPA is that if the subject matter of a patent application is more than just excluded subject matter, then the application may be allowed. The patentability exclusions relate to a number of different fields including computer programs ‘as such’.
At present, the UK IPO test for excluded subject matter uses a three step test outlined in Aerotel  RPC 1 in view of Symbian  EWCA 1066:
- Construe the claim.
- Identify the ‘actual contribution’, meaning what has been added by the inventor(s) to the stock of human knowledge.
- Is that contribution entirely in the excluded subject matter, and is it actually technical?
The concept of a ‘technical contribution’ can be traced back to the EPO case VICOM T0208/84, where the UK IPO adopted a common position with the EPO. An explicit definition of ‘technical’ remains elusive, with both the UK IPO and the EPO preferring to use an examples-based definition, which provides flexibility for dynamic changes in meaning as both the law and technology evolve.
If the third step of the Aerotel test identifies that the actual contribution is a computer program, the UK IPO then consider whether the computer program is technical in nature. This involves the use of the ‘signposts’ described in AT&T and CVON  EWHC Civ 1371 which include:
- Does the invention control something external to the computer?
- Does the invention affect the architecture of the computer, rather than the data (eg, the memory, cache, or processor)?
- Does the invention result in a new way of operating the computer?
- Does the invention result in the computer being operated in a faster or more reliable manner?
The UKIPO’s practice was independently corroborated by Mann J in Gemstar v Virgin. The signposts provide guidance rather than being a necessary requirement or binding statement of law.
Beware incorrect application of test
The Aerotel test, particularly step 3, can be difficult to apply in practice. If the examiner assesses the contribution made by component parts of the claim rather than the contribution made by the claim as a whole, this can result in the examiner erroneously concluding that the invention is directed to excluded subject matter.
In the case ‘Protecting Kids The World Over (PKTWO)’,  EWHC 2720 (Pat), the judge stated that it is not correct to exclude from the assessment of the contribution features of the claim that form part of the prior art. Recent experience has taught us that examiners sometimes incorrectly separate claim elements into what is known and what is new and then decide upon the contribution made.
This is best understood in the context of an example. In Vicom, the invention related to digital image filtering and a claim to ‘A method of digitally filtering data’ was considered excluded as a mathematical method. However, a claim to ‘a method of digitally processing images’ was considered non-excluded by the EPO Board of Appeal because the ‘physical entity’ ie, the image, was specified as a claim element. Here the novelty of the invention related to the particular implementation of the digital filtering, but the invention was considered non-excluded because of the actual technical activity being performed on a physical entity (the image). Clearly, image processing per se was a known element of the claim yet it formed part of the contribution of the claim as a whole.
Halliburton  EWHC 2508 (Pat) related to simulating the performance of drill bits. The application was rejected by the UK IPO, on the grounds of being merely a program for a computer, a mathematical method and the performance of a mental act.The High Court rejected the UK IPO decisions that the invention was excluded on the basis of a program for a computer or a mathematical method. The former exclusion was ruled to not apply, because the subject matter clearly extended to more than a computer program as such. The second exclusion was ruled not to apply because, while mathematics were used, they were used to represent a drill bit. Consequently, it was not simply an abstract mathematical method that was being used in the invention.
Importantly and with regards to the mental act exclusion, the High Court ruled that the exclusion was to be interpreted narrowly. The inclusion of any hardware would move the invention out of the excluded subject matter category. Consequently, a mental act cannot be carried out on a computer, and so a computer that implements a simulator can also not be said to be carrying out a mental act. Prior to Halliburton, the UK IPO refused an application directed to simulation of programmable devices such as microprocessors in the decision BL O/066/06 ARM Limited. The UK IPO examiners conceded that in view of Halliburton, such cases relating to simulators are now less likely to be categorised as excluded subject matter.
Patenting of computer programs will continue to provide a valuable mechanism for protecting IP rights in computer-implemented innovations. Drafting and prosecuting patent applications in this area should focus on setting out the technical contribution made to the state of the art, which is crucial in obtaining a granted UK or European patent. The Aerotel test will, at least for the time being, be applied by UK examiners with reference to the AT&T signposts where appropriate.