On Thursday the England and Wales Court of Appeal delivered a decision that will significantly strengthen the patentability of software in the UK. As I’ve mentioned before on this blog, the UK Intellectual Property Office(IPO) has been struggling to find a consistent method for examining patent applications that involve software. As an EU member, the UK is supposed to have the same rules on patentability of inventions as the European Patent Office (EPO), and to this end the European Patent Convention of 1973 was ‘imported’ into UK law in the from of the UK Patents Act 1977. Both the Convention and the Act state fairly plainly that software is excluded from patentability. Of course, having the same ruleset is only half the battle – you also have to interpret the rules in the same way and therefore produce decisions that are consistent with one another…
A couple of weeks ago I had the pleasure of hearing Shane Coughlan speak about – among other things – the patentability of software in Europe. Mr Coughlan is Freedom Task Force Coordinator for the European wing of the Free Software Foundation. In response to a question about software patents, Coughlan stated flatly that they do not exist in Europe. When the audience seemed a little confused by this, he elaborated by saying that although the EPO had granted many applications for software, there was no statutory basis for their existence or enforceability – given the exclusion of software from patentability in the European Patent Convention. The audience were clearly a little confused by this – many came from large software firms with holdings of European patents on software inventions. A member of the audience asked about Coughlan’s opinion on the patentability of software in the UK. The questioner turned out to be David Wood of Symbian – a mobile operating system company based in the UK and now wholly owned by Nokia. It was Symbian who had brought the case we are discussing here, after the UK IPO had turned down a software patent application of theirs for a layer of indirection in library function lookups. Recognising a Symbian representative, Coughlan acknowledged that – yes – the UK might be considered separately as Wood’s own company had managed to get the UK courts to invalidate the rejection of their patent. Coughlan also pointed out that – as a Common Law system – UK legislation is effectively ‘updated’ by court decisions on its meaning and application. In the rest of Europe, Coughlan pointed out, a Civil Law system predominates, and prior court decisions are generally not taken to form part of the body of applicable law. Thus while arguably (and Coughlan did argue it) the activities of the EPO and European courts had no effect whatsoever on the fundamental unpatentability of software, actions like Symbian’s in the UK had real effects on the UK’s legislative approach to patentability.
Now that Symbian have conclusively won their case (and leave to appeal to the House of Lords has been denied) the resulting changes must be examined. The judgement examines previous rulings on software patentability, both at the European and UK level, and recognises the essential impossibility of reconciling all views. Once again the issue of what a ‘technical effect’ is becomes central, an issue we have discussed before on this blog. In practice no-one quite knows what a ‘technical effect’ is – all that is certain is that without one a piece of software is just a piece of software and thus cannot be patented due to the statutory exclusion in the European Patent Convention. In this case, the Court of Appeal has decided that the software in question has a
knock-on effect of the computer working better
and that this ‘technical effect’ is all that is required for the software to be more than mere software and therefore patentable. This is essentially the argument advanced by Symbian’s lawyers – that the functioning of a computer in itself can be seen as a technical problem, and that therefore software which makes a computer ‘work… better’ is software which has an additional ‘technical effect’ . You might ask what software would not qualify as patentable under this scheme, and you would have a good point. The judgement points out that software which embodies other kinds of unpatentable inventions could still not be patented:
the program in this case does not embody any of the items specifically excluded by the other categories in art 52; thus, it is not a method of doing business… or a mathematical method… or a method for performing mental acts…
So – to summarise briefly – the new element in this judgement is an extremely broad definition of what a technical effect can be, and thus a radical widening of range of patentable software. Provided that your software does not embody anything that is otherwise disqualified from patentability, you can patent it in the UK (subject to all the other normal requirements that it is novel, involves an inventive step and has an industrial application).
The UK IPO now has a guidance note on how it plans to behave in the light of this decision:
http://www.ipo.gov.uk/pro-types/pro-patent/p-law/p-pn/p-pn-computer.htm
“5. The Intellectual Property Office has previously recognised that an invention which either solves a technical problem external to the computer or solves “a technical problem within the computer” is not excluded. What Symbian has now shown is that improving the operation of a computer by solving a problem arising from the way the computer was programmed – for example, a tendency to crash due to conflicting library program calls – can also 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.”