Protection of
Computer Software Systems and Applications & Patent Law

Although most computer programs would readily fulfil the requirement of being capable of industrial application, few can be considered novel or non-obvious to skilled programmers. This is because they all use standard techniques and algorithms and these are readily available in professional journals and literature. Thus, only a small percentage of program inventions can be considered novel and get over the first hurdle of patentability. For a brief introduction to patent law, click here.

Patentability Starting Point

Moreover, 'a program for a computer' is specifically excluded from patentability under section 1(2)(c) of the Patents Act 1977. This exclusion was premised upon the assumption that all software consisted of was abstract and intellectual mechanisms as opposed to tangible products or processes. Patentability of software requires a specific technical application, contribution or effect. Indeed the European Patent Office (EPO) has declared that:

'Where the claimed subject matter is concerned only with the program controlled internal working of a know computer, the subject matter could be patentable if it produced a technical effect'.

Software Patents as Patentable Inventions

Even though section 1(2)(c) appears to exclude from patent protection a computer program per se, a proviso to it states that the exclusion only prevents anything from being treated as an invention to the extent that a patent or patent application relates to that thing 'as such'. This means that the exclusion from patentability applies only to software as such. Therefore, if a software patent application is made for something different from a software program as such, the application would be treated as a genuine patent application and not excluded.

Computer Programs "As Such" within the meaning of the Act

This so-called "as such" exception shows that the exclusion of software from patentability, is in respect of the form rather than the substance. So, whereas it is not permissible, without more, to seek protection for a computer program when it is stored on a magnetic medium or when loaded into a computer, it is permissible to seek patent protection in respect of what the computer (into which the program is loaded and which controls it) is doing. Hence, a patent application in respect of the technical effect produced by a programmed computer is an application which can be patented. In other words, an application in respect of the technical effect, for example, produced by operating a computer software should be acceptable.

Technical Effect; Technical Contribution

So the dichotomy is between the computer program as such (which is excluded from patentability), on one hand, and the way it is applied (which is not excluded), on the other. Accordingly, if a claim is expressed in terms of improved and modified apparatus operating in a new way, it may be patented. The task performed by the computer program becomes the part which could be patented but not the contribution made by the computer program itself. Thus, it is clear that if a claim is framed in terms of a computer built to follow the instructions of a novel computer program, that claim can be patented provided, of course, the other ingredients of novelty, inventive step and industrial application are also present. To see a critique of patent protection and IP law protection to software, click here.