Briefing Note - Technology and Software Patents and Patentability

Section 1(2) of the Patents Act 1977 (UK) states that 'programs for computer[s] ... are not patentable as such'. Although this may lead to the conclusion that software is not patentable, this is certainly not the case. 'As such' is simply a phrase in the Act that makes it clear that computer software, without more, is not patentable. Software must have a have what is known as a 'technical effect'.

Technical Effect

What strategies may be taken to argue that software has a technical effect in the United Kingdom and the European Union?

An analytical approach to determine whether the subject matter under consideration has the required technical effect may include the following steps:

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

Using this procedure for analysis, it is then also helpful to characterise the software 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 is 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 moulding process used in the United States case Diamond v Diehr.

Mathematical Formulae

In the same way as computer software, under section 1(2) of the Patents Act UK, 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. The algorithms becomes a solution to a practical problem. The reference point is what it is used for. Pure implementations of equations or algorithms cannot form the basis of the application - it must be linked to a specific industrial application and thus have a technical effect.

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. The distinction could be considered as indeterminate and grey as the so called idea/expression dichotomy known to copyright law, which is the distinction between the idea and the expression of the idea in a recorded form.

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; and is a patentable invention provided the remaining indicia are satisfied.

In the end there must be claim to a specific programming technique rather than a mere invention that is a means for solving a problem. If it a mere invention, it needs to be combined with other integers - components of the invention - 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.