Software-Related Patents:
United Kingdom
copyright 1997 Donald M. Cameron , Aird & Berlis
Contents
Statutes
The exclusions from patentability set out in section 1(2) of the Patents Act 1977 are essentially the same as Article 52(2) and (3) of the EPC.
Regulations
There are no regulations that deal specifically with the patentability of software.
Case Law
Claims are patentable if they cover a computer in combination with or controlled by a
computer program or a method of operating a computer according to a computer program. (1) Such a computer is a different apparatus from the same
computer under the operation of another computer program. What is patentable is what the
controlled computer is doing: What process is being carried out? (2)
Software as such
The Court of Appeal in Genentech Inc.'s Patent (3) stated
that a patent for a computer when programmed or for the disk containing a program is no
more than a patent for the program as such. You cannot protect a computer program when it
is merely stored on a magnetic medium or loaded onto a computer. (4)
This reasoning was extended to included programs stored in ROM. In Gale's Application (5) , the Court of Appeal held that claims to a novel
computer program stored on a ROM are not patentable in the U.K. It was not a technical
process which existed outside the computer nor did the program solve a technical problem
lying within the computer or define a new way of operating the computer in a technical
sense.
Computer programming is not "technical" in the legal sense in that advances
in the art of computer programming do not provide the technical advance required for
patentability. If this were not so, a computer program containing such an advance would be
patentable and the Act specifically excludes programs as such from patentability. This is
exemplified in Hitachi Ltd.'s Application (6) , in which
the UK Patent Office refused an application related to a compiler program.
While the Act explicity excludes computer programs, they are only excluded "as
such". The leading case on Patent Office's practical application of the scope of
"as such" is Burroughs Application (7) . In this
case, the Patent Court held that claims for "a method of transmitting data", a
"method of operating or programming a computer", a "method for controlling
a system of computers", or the like should be accepted if the claims are clearly
directed to a method involving the use of apparatus programmed to operate in a novel
manner.
Mental Steps
Inconsistencies have been noted between the British Patent Office and the Examining
Division of the EPO with respect to the patentability of automated decision-making systems (8) , with greater reluctance by the British Patent Office to
allow such claims.
The Patent Court, in Wang Laboratories Inc.'s Application (9) , rejected an application for an expert system which was essentially a conventional computer with a programmed knowledge base. The Court held that although it was not a computer program "as such, it was excluded as a method for performing a mental act. Although the method may be different when a computer is used, it still remains a method for performing a mental act regardless of whether the program adopts steps that would not ordinarily be used by the human mind. (10)
In Raytheon Co.'s Application (11) , the Patent Court
rejected an application for a system to identify objects such as ships. An imaging device
digitally captured images and a computer program compared silhouettes of known objects
with the captured image. The Patent Court held that the invention claimed was a computer
program and a method for performing a mental act.
In Fujitsu Limited's Application (12) , the computer
program displayed and manipulated the visualized chemical structure of a chemical
compound. Because the effective use of the program depended upon the skill of the user in
inputting, manipulating and interpreting the data, the process was not considered
patentable.
Financial Systems
Financial systems and document abstraction inventions are generally disallowed in the United Kingdom. Merrill Lynch's Application (13) was the first case in which United Kingdom courts dealt with section 1(2) of the Patents Act 1977. The application was for a computer system that automated the trading of securities. The Court of Appeal rejected the application stating that the claim must be viewed as a whole. One could not patent an excluded item under the guise of an included subject matter that contained that item. There must be something more than just a computer program or a conventional computer containing a program. According to the Court, a data processing system which produces a novel result is normally patentable, but not if the result itself is prohibited under section 1(2) - there must be a new technical result. In this case, the trading system was simply a "method of doing business" and was therefore excluded.
Endnotes
1. Newton, Jeremy; "Software Patents in the United Kingdom"; Communications law, Vol. 1, No. 5, 1996, p. 202.
2. Fujitsu Limited's Application [1996] R.P.C. 511 (per Laddie J.).
3. [1989] RPC 147.
4. Fujitsu Limited's Application [1996] R.P.C. 511 (per Laddie J.).
5. Gale's Application [1991] R.P.C. 305 (C.A.)
6. [1991] RPC 415.
7. [1974] RPC 147.
8. Beresford, Keith; "Comments on the Patentability of Software Inventions inthe U.K. and E.P.O."; FICPI First Open Forum; Rome; November 10-13, 1993 regarding the Bradford John George application; and Newton, Jeremy; "Software Patents in the United Kingdom"; Communications law, Vol. 1, No. 5, 1996, p. 202 at p. 204.
9. [1991] RPC 463.
10. Ibid. at 479.
11. [1993] RPC 427.
12. [1996] R.P.C. 511 (per Laddie J.).
13. [1988] RPC 1; aff'd in [1989] RPC 561 (C.A.).
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