Patents and Computer Programs

Extract 1 : Introduction & Differences
Extract 2 : A shift from non-Patentability? & A state of flux
Extract 3 : Mood for change & EPO Proposal

A Shift From Non-Patentability ?

Alex Hudson identifies one of the early attempts to patent software/ business methods, 1 the Genentech Inc's Patent Case 2. In this case Dillon IJ states "It would be nonsense for the Act to forbid the patenting of a computer program, and yet permit the patenting of a floppy disc containing a computer program, or an ordinary computer when programmed with the program; it can well be said, as it seems to me, that a patent for a computer when programmed or for the disc containing the program is no more than a patent for the program as such." And as such the argument that the software in question was patentable was not allowed. Most patent applications decided by UK courts were turned down .
However, the Patent act 1997 was not worded tightly enough to prevent attempts at patenting software. The EPC , Art 52 S.3, mirrored by the Patents Act 1977 s 2 provid ed that the exclusions stand 'only to the extent that a patent or application for a patent relates to that thing as such'. This choice of wording has provided room for arguments to effect the patenting of computer based methods and software. One of the first indicators of change was the decision in Gale3 which actually succeeded at the court of first instance, but failed at appeal. At appeal it was held that claims to a novel computer program stored on a ROM are not patentable, because it was not a technical process which existed outside the computer nor did it solve a technical or define a new process.

Subsequently, even though patentability is excluded for business methods and software, in practice software patents have been granted by the EPO. Since the EPC came into force in 1978, more than 30,000 software-related patents have been granted.4

Vicom 5

The Vicom case introduced new rules and marked a shift in jurisprudence. The claim was for 'A method of digitally processing images in the form of a two-dimensional data array' by an operator matrix '. And it had been rejected by the patent examiner on the basis that it was for a mathematical method and/or computer program. It was held …

1. The method of was susceptible of industrial application since it could be used (for example) in investigating the properties of a real or simulated object or in designing an industrial article.

2. A mathematical method as such is an abstract concept prescribing how to operate on numbers, without producing any direct technical result. By contrast, where a mathematical method is used in a technical process, the process is carried out on a physical entity (for example an image stored as an electrical signal) by some technical means which produces a change in that entity.

3. Therefore even if the idea underlying an invention resides in a mathematical method, a claim directed to a technical process in which the method is used does not seek protection for the mathematical method as such.

In essence what emerged from this decision is that an invention should not be denied patentability simply because it is expressed in the form of a computer program.

'In arriving at this conclusion, the Board has additionally considered that making a distinction between embodiments of the same invention carried out in hardware or in software is inappropriate as it can fairly be said that the choice between these two possibilities is not of an essential nature but is based on technical and economical considerations which bear no relationship to the inventive concept as such.

Generally speaking, an invention which would be patentable in accordance with conventional patentability criteria should not be excluded from protection by the mere fact that for its implementation modern technical means in the form of a computer program are used.'
Thus the criteria of technical contribution/innovation was set. However the Uk courts were not as quick as the EPO to release the restraints on patenting software and methods, and when the Fujitsu case was decided a mood of caution was apparent.

Fujitsu Ltd's Application (1997)

In the Fujitsu case consideration was given as to whether or not the new technical contribution made by the software outweighed the non-patentability clause in the legislation. It was argued that the invention was patentable because it provided a technical contribution, either by the processing of images of real objects, or by the provision of a labour-saving and error-free tool. Although the application was rejected in this case, the dicta of the court is important in showing a shift in judicial thought within the UK towards the EPO stance.

The criteria of technical contribution was affirmed as the deciding factor in determining patentability. It was held that the 'only question was whether there was a technical contribution so that it could not be said that the invention consisted of a computer program per se'

The UK courts can also be seen giving effect to the dicta of the EPO in the Merrill Lynch case 6. Where It was held that a a computer program was not automatically excluded from patentability under s. 1(2). And that the issue was the extent of the technical contribution the invention made to the prior program or Art.

A State of Flux ?

The discussion in the preceeding section focuses on change in jurisprudence , but if the cases mentioned are examined another issue is revealed. The issue of patentability is a little muddled. EPO whilst maintains that its practices are in accordance with the EPC legislation , however some commentators would argue that this is not the case. Harrop & Co state that 'In light of the 1999 IBM cases, the scope of protection offered by current EU practice goes beyond the scope envisaged by Article 5 of the Directive'7 . Arguably , such a comment is justified . Since the Vicom case the scope of patentability with regards to software and methods appears to have increased. An examination of the case cited by Harrop will throw some more light on this contention .

IBM Corporation's Patent Application (1999)

The IBM case involved an application for a patent with regards to a program that would display information from a first window of a computer in another part of that window when obscured by a second window. There was a mixture of computer program product and element claims. The Examining Division indicated that certain aspects complied with the requirements of the EPC, but refused the application on the basis that the remaining functions were directed to a computer program as such and thus concerned subject-matter excluded from patentability under Article 52 EPC.

It was held that

1. Under Article 52 EPC, computer programs are only excluded from patentability to the extent that a European patent application relates to programs "as such". It is clear that the legislators did not want to exclude all computer programs.

2. The technical character of an invention is generally accepted as an essential requirement for patentability. The exclusion of computer programs "as such" may be construed to mean programs lacking in technical character. When they have technical character, computer programs may be patentable.

3. Computer programs cannot be considered as having technical character merely because they operate computers. However, the technical character may be found in the further effects (i.e.further to normal computer operations) deriving from the execution by the hardware of the instructions given by the program. Where the further effects have a technical character or where they cause the software to solve a technical problem, an invention which brings about such an effect may be considered a patentable invention. A patent may thus be granted not only in the case of an invention where a piece of software manages an industrial process, but in every case where a computer program is the only means or one of the necessary means of obtaining a technical effect where, for example, that technical effect is achieved by the internal functioning of a computer under the influence of the program. It is only the said further technical effect which matters and not the specific further use of the computer system as a whole.

4. According to the case law of the Boards of Appeal, a claim directed to the use of a computer program for the solution of a technical problem cannot be regarded as seeking protection for the program as such, even if the basic idea underlying the invention may be considered to reside in the computer program itself.

5. A computer program does not directly disclose a technical effect--it only discloses the effect when being run and thus only possesses the potential to produce the technical effect. However, the Board sees no reason to distinguish between a direct technical effect and the potential to produce a technical effect. Therefore computer program products are not excluded from patentability in all circumstances. A claim to such a computer program product must comprise all the features which assure the patentability of the method it is intended to carry out when being run on a computer. It is illogical to grant a patent for both a method and the apparatus adapted for carrying out the method but not for the computer program product which comprises all the features enabling the implementation of the method and which, when run on a computer, is able to carry out that method….

The program in this case was actually an application that built upon a pre-existing program. With the only difference being that the program gave different instruction, i.e a different programming code. 'The Board held that a technical character could be found in the effect of execution of the program where the software solved a technical problem. A patent could therefore be granted in cases where a computer program was the only means of obtaining a technical effect, including a technical effect that was achieved by the internal functioning of a computer itself.' Previous to this it is arguable that such a program would have been denied a patent.

  1. Alex Hudson , 'How we got here' UK Resource on Software Patents [Online] ^ Return]
  2. RPC 147 [1989]^ Return]
  3. ([1991] RPC 305^ Return]
  4. Patentability Of Computer-Implemented Inventions , FAQs : http://europa.eu.int/^ Return]
  5. VICOM/Computer-Related Invention T208/84^ Return]
  6. [1989] R.P.C. 561^ Return]
  7. Sarah Harrop & Co , 'The Proposed EU Software Patent Directive : Are software patents about to get any clearer?', Pat World 144(15)^ Return]

BIBLIOGRAPHY

- Keith Beresford, 'Patenting software under the European Patent Convention', Sweet & Maxwell, 2000.

- 'To many programmers, America's laws on software patents are a disaster. So why is Europe preparing to go down the same road?' Wendy M. Grossman reports, New Scientist, September 28, 2002,

- 'Intellectual Property Rights Are Patently Important To Business' The Scotsman ', June 24, 2002, Monday

- 'In Good Company' The Lawyer', April 23, 2001,

- 'EU -- Proposals For Software Patents', March 2002 Pat World

- 'Software And Computer-Related Business-Method Inventions: Must Europe Adopt American Patent Culture?' , CD Freedman , September 2000 IJL&IT 2000 8(285)

- 'Commission proposes rules for inventions using software' http://europa.eu.int/comm/internal_market/en/indprop/comp/02-277.htm

- The Proposed EU Software Patent Directive Are software patents about

- Patents: Commission proposes rules for inventions using software: europa.eu.int/comm/internal_market/ en/indprop/comp/02-277.htm

- Directive Of The European Parliament And Of The Council On The Patentability Of Computer-Implemented Inventions, Brussels, 20.02.2002, COM(2002) 92 final , 2002/0047 (COD)

- Official Journal of the European Communities, Opinion of the Economic and Social Committee on 'Promoting innovation through patents:Green Paper on the Community patent and the patent system in Europe' (98/C 129/03)

- Resolution on the Commission Green Paper on the Community patent and the patent system in Europe: Promoting innovation through patents (COM(97)0314 - C4-0342/97), Official Journal of the European Communities, A4-0384/98

Extract 1 : Introduction & Differences
Extract 2 : A shift from non-Patentability? & A state of flux
Extract 3 : Mood for change & EPO Proposal

Legal Notice - None of our work is to be passed off as your own or as anyone else's, nor is it to be reproduced either in whole or in part. This a breach of copyright. It also constitutes plagiarism and will breach University Regulations, consult your guidelines if you are unsure. If we suspect that any law essays or materials are being used for such purposes then we will refuse to carry out that work and all future essay work for the person involved.

Refund Policy : Law Essays UK has a strict no refund policy due to the highly specialised and individual nature of the services we provide. Our services are provided as is, and accordingly the customer orders on their own initiative. However, for your peace of mind, we guarantee that if you are not satisfied with an essay, for whatever reason, then we can amend it accordingly to your specifications. In addition, under our crystal clear guarantee, we will clarify anything contained within an essay or study material free of charge

Note: We offer a wholly independent law and legal research service. We are not affiliated with the Bar Council or any other organisation in any other way. Nor are they affiliated with us. We regret that we are unable to take on work from members of the public and businesses outside of doing model answers as law essays, legal essays, research and tutoring as to do so would contravene Bar Council regulations. All research services and materials offered are subject to availability. 5 day completion for law essays of 5,000 words or less only. All services are subject to availability. All trademarks and copyrights of other bodies and organisations are recognised and respected.

order-now

Visitors have also looked at...

  • 1Law Essay Scams

    Essay writing scams can be hard to spot.
    Click here to find out how to avoid the essay scams

  • 2Essay writing in the press

    Find out what the press say about essay writing in the 21st century.

  • 3 Meet the Law Essays UK Team

    Find out more about the individuals that provide this first class essay writing service.