A Strategy for Obtaining Technology based Patents

What strategies may be taken to argue that software may be patentable in the United Kingdom and the European Union? An analytical approach to determine whether the merits of patentable subject matter in relation to the prior art may include:

1. identify the particular problem that the inventor solving
2. identify the technical context (hardware or software) in which the solution being sought
3. delineate the method by which the invention solves the problem (approaches, features, routines and/or algorithms)
4. ascertain other methods that the inventor knows of that exist or foreshadow a solution to the problem
5. compare this with the method that the inventor used to arrive at the solution, and
6. identify any assistance the inventor had in developing the solution, and the nature of the assistance.

Using this procedure for analysis may serve as a provocation to characterise the technology for the purpose of drafting the monopoly claims.

Pre & Post Computer Activity

The functional capabilities of computer programs fall into two distinct classes. Firstly, those where pre-computer activities interpret received data of an event in the physical world may used as an input by the computer. Software for instance may be used to convert seismic testing data to indicate the nature of the earth’s orbit by converting ultrasound to a three-dimensional image.

Post-computer activity occurs where an industrial process in regulated by software, or a technical application is controlled by computer. An example is the rubber molding process used in the United States case Diamond v Diehr.

Mathematical formulae in their own right are not patentable products or processes. They are patentable because formulae provide a mere real world approximation for a solution to a problem. This however must be set apart from an appropriately implemented algorithm. It becomes a solution to a practical problem when a technical effect is created by the invention and is a reference point is what the invention is used for. Pure implementations of equations or algorithms therefore cannot form the basis of the application - it must be linked to a specific industrial application.

Another approach that may be taken commences with the recognition that science is the knowledge in its pure form, technology is the application of the mechanical arts and applied sciences. This is to distinguish between a computer program implementing an algorithm and the implemented algorithm itself. Only the former is patentable.

Computer Limitations

If a novel or inventive technique is a part of an invention that is only useful when a computer is employed, then the computer is a limitation to the invention. For example a method for weather forecasting demands no less than a super computer and a particular model for weather forecasting is a patentable invention provided the remaining indicia for patentability are satisfied.

In the end there must be claim to a named technical effect rather than a mere invention that is a means for solving a problem. If it is a mere invention, it must to be combined with other integers to give rise to patent protection. The result then is if a subsequent computer is programmed to do the same thing it will infringe even if it is a completely different from the first.