Patenting software and computer related inventions

Many inventions in recent years have been computer related or computer implemented – whether in the form of apps for smart phones or tablets, software to be run on laptops or desktop computers, systems for controlling the operation of machinery, or internet based ideas – and there is a common misconception that all software, and many computer related inventions or ideas, cannot be patented. This is not the case.

The statute that governs the patent system in the UK contains a list of subject matter or types of invention for which patents are not available. That list includes anything which consists of:

• a discovery, scientific theory or mathematical method;
• a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
• a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
• the presentation of information

The reference to a program for a computer in this list would at first sight suggest that computer programs, and hence many computer related inventions cannot be protected using the patent system. However, the situation is actually more complex than this.

The next statement in the relevant part of the statute says that things in the list are excluded from being able to be protected using the patent system “only to the extent that the patent or application for a patent relates to that thing as such.” This statement is key. It means that if the underlying invention is not excluded subject matter, even if it is implemented by computer software, the possibility of being able to protect it using the patent system is still there.

A piece of software is really nothing more than a series of method steps that happen to be written in a form that can be processed by a computer. If the method relates to subject matter that would be patentable, save for the fact that it happens to be written in such a manner as to allow the method to be run by a computer, then that method is not excluded subject matter and so there is scope for being able to use the patent system to provide protection for the software.

When examining patent applications relating to computer implemented inventions, the approach taken by the Patent Office uses a test set out in a Court of Appeal judgement and usually referred to as the Aerotel test. The test involves identifying the actual contribution made by the invention compared to known arrangements, asking whether that contribution falls solely within one or more of the excluded subject matter areas listed above, and checking whether the contribution is actually technical in nature.

There will be situations where a computer related invention is not able to pass this test, either because its contribution falls exclusively within the excluded categories mentioned above or because it is not technical in nature. However, there are also many situations where inventions that happen to be performed by a computer pass the test and can be protected.

This covers the position in the UK, but regulations in other jurisdictions are different, some being more relaxed and others being more restrictive, and in Europe the situation is similar to the UK (although the test used to decide whether or not an invention is excluded is different).